WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pennington Enterprises, Inc. a.k.a. Pennington Seed, Inc. of Madison v. Direct Privacy ID 2EDC4

Case No. D2013-0409

1. The Parties

Complainant is Pennington Enterprises, Inc. a.k.a. Pennington Seed, Inc. of Madison, Georgia, United States of America, represented by Melbourne IT DBS Inc., United States of America.

Respondent is Direct Privacy ID 2EDC4 of Metairie, Louisiana, United States of America.

2. The Domain Name and Registrar

The disputed domain name <penningtongrassseed.com> (the "Domain Name") is registered with DNC Holdings, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2013. On February 28, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 28, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent was listed as the registrant and providing the contact details for the Domain Name.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 4, 2013.

The Center appointed Bruce E. O'Connor as the sole panelist in this matter on April 12, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the owner of the principal trademark and the current published owner of the brand, PENNINGTON SEED, at the United States Patent and Trademark Office, (“USPTO”), with the registration number of 1,252,388, registered in September 1983, with its claim of first use in commerce on July 1977, ("the Trademark").

The Domain Name in dispute is <penningtongrassseed.com> registered on July 13, 2005.

5. Parties’ Contentions

A. Complainant

Complainant's story began in a small seed store on Main Street in Madison, Georgia in 1945 supplying the local farmers and ranchers with quality cotton, soybean and agricultural grass seeds.

Complainant moved out of the retail seed business and started supplying agricultural seed to retailers across the southeastern United States. Complainant began to concentrate on the grass seed business, first for pastures and forage products and later for lawns and turf. As Complainant’s grass seed business grew Complainant extended its growing facilities into Missouri, Arizona and eventually to the Willamette Valley in Oregon.

Today, Complainant is a Central Garden and Pet Company (traded on the NASDAQ stock exchange as CENT), with over 1,000 employees and over 16,000 dealers worldwide, that has partnered with various universities and acquired the largest private grass seed research facility in the United States

The Domain Name is identical to the Trademark with just the addition of a generic term which is related to the Trademark.

There is no evidence that Respondent owns registrations for any trademarks containing the terms “Pennington”, “Pennington Seed” or “Pennington Grass Seed”. “Pennington Grass Seed” does not serve as Respondent’s trade name or business identity; and Respondent does not provide goods or services that are identified or described by these or similar terms. A trademark search was conducted on the trademark databases in the United States and globally and the sole owner of the PENNINGTON SEED trademarks is Complainant.

Respondent is neither a licensee nor an authorized representative or partner of Complainant, and is not authorized to register or sell any domain names (or other goods or services of any kind) incorporating Complainant’s marks.

Complainant sent a “Cease and Desist” letter to Respondent informing of the infringement in June 2012, allowing Respondent the opportunity to transfer the Domain Name in good faith. Respondent never replied. Complainant tried again in February of this year and no response was received either.

Respondent has no rights or legitimate interest in the Domain Name. Respondent is not using a website employing the Domain Name in connection with any bona fide offering of goods or services; instead the Respondent has intentionally chosen the Domain Name based on a registered trademark in order to confuse the users of Complainant’s website ‘’www.penningtonseed.com’’. When Internet users land in the website at the Domain Name, they see Pay Per Click (“PPC”) links for different types of seeds. Every time an Internet user does click on one of those links the owner of the Domain Name receives certain amount of money.

Respondent registered the Domain Name in 2005, years after the Trademark was registered. Also years after the main domain name of Complainant, <penningtonseed.com>, was registered in 1995.

The website associated with the Domain Name is just a PPC website that is actively used creating great confusion among the users of the Complainant’s products since some of the links offered on the website point to Complainant’s competition.

Respondent demonstrates bad faith in becoming the owner of the Domain Name while aware of Complainant’s business and registered trademarks.

The fact that even once informed about the infringement of Complainant’s rights and its concern about the confusion caused by the Domain Name Respondent kept the content on the website associated with the Domain Name, unwilling to transfer the Domain Name and showing the bad faith of Respondent.

In summary, speculation in the registration of domain names, infringement of Complainant’s trademark rights, the fact that Respondent registered or purchased the Domain Name after Complainant started using their brand, including after the registration of Complainant’s Trademark in 1983 and main domain name <penningtonseed.com> in 1995, ignoring the Cease and Desist letter and associating the Domain Name to a website displaying confusing content and making a commercial gain out of it with PPC links clearly establishes Respondent’s bad faith both in the registration and the use of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Respondent has made no response to the Complaint. Given the default of the Respondent, the Panel is entitled to, and does, draw the inference that all reasonable and supported facts alleged in the Complaint are true. See paragraph 14(b) of the Rules.

In order for Complainant to obtain a transfer of the Domain Name, paragraph 4(a) of the Policy requires that Complainant must demonstrate to the Panel that:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has established rights in the Trademark, by reason of its United States Trademark Registration No. 1,252,388.

The Domain Name differs from the Trademark only by the addition of the term “grass” and the generic top-level domain (“gTLD”) “.com”. These differences do not distinguish the Domain Name. The term “grass” is generic for the type of “seed” sold by Complainant under the Trademark. And it is well established that the addition of a gTLD does not typically distinguish a domain name from a trademark.

The Panel finds that the Domain Name is confusingly similar to the Trademark.

The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists three circumstances in particular, but without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:

“(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that Complainant has made a prima facie showing that Respondent does not come under those circumstances.

Notice of this dispute occurred on or about June 2012, when Complainant sent its letter to Respondent.

Prior to that time, there is no evidence of any good faith use of the Domain Name by Respondent. Rather, Respondent’s sole use has been in conjunction with a web site that includes pay-per-click advertising links directing Internet users to the products of Complainant’s competitors and to other products and services. Respondent’s true name is unknown, being protected by a privacy service. Respondent's use of the Domain Name is commercial. Under the circumstances, the Panel finds that none of the circumstances enumerated in Paragraph 4(c) of the Policy apply.

Respondent has not responded to the contentions of Complainant.

The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The circumstances of paragraph 4(b) of the Policy are illustrative but not exhaustive of the circumstances under which bad faith registration and use under Policy paragraph 4(a)(iii) can be established.

Paragraph 4(b) of the Policy reads:

“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

In each of the circumstances listed in Policy paragraph 4(b), or otherwise, Complainant must establish that Respondent intentionally and actively registered and used the Domain Name in bad faith as provided under the Policy. And, Respondent must have known or should have known of Complainant’s mark.

Lack of rights or legitimate interests under Policy paragraph 4(a)(ii) does not automatically translate into a finding of bad faith under Policy paragraph 4(a)(iii). A sufficient showing under Policy, paragraph 4(a)(iii) generally requires more than assertions of bad faith.

In this case, Complainant has demonstrated that Respondent’s use of the Domain Name diverts business from Complainant. And, the Panel notes that the Trademark includes a surname that has become protectable by reason of its long use and its registration. It is inconceivable to the Panel for the Respondent to have chosen the very specific Domain Name including that surname and the generic terms “grass” and “seed” (the latter term in fact forming part of Complainant’s Trademark) without knowledge of Complainant and its Trademark. In the absence of a defense by Respondent, the Panel infers that Respondent registered the Domain Name with knowledge of the Trademark and for the purpose of disrupting the business of Complainant in bad faith. Complainant has also demonstrated that Respondent continued to use the Domain Name in its diversion following notice to Respondent of Complainant’s rights in the Trademark. In the absence of a defense by Respondent, the Panel also infers that Respondent intentionally attracted, for commercial gain, users to its website using the Domain Name by creating a likelihood of confusion with the Trademark.

The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <penningtongrassseed.com> be transferred to the Complainant.

Bruce E. O'Connor
Sole Panelist
Date: April 20, 2013