WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
GoPets Ltd. v. Edward Hise
Case No. D2006-0636
1. The Parties
The Complainant is GoPets Ltd, Seoul, Republic of Korea, represented by an internal representative.
The Respondent is Edward Hise, Simi Valley, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <gopets.com> (the “Disputed Domain”) is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2006. On May 24, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain at issue. On May 26, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On June 7, 2006, the Center asked the Complainant via e-mail to confirm the identity of the Complainant. On June 8, 2006, the Complainant confirmed the identity of the Complainant to the Center accordingly.
3.2 The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).
3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 8, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 28, 2006. On June 28, 2006 (US time) the Respondent filed the Response by e-mail which was received by the Center on June 29, 2006.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on July 12, 2006. 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.
3.5 Subsequent to the filing of this decision on July 26, 2006 the Center brought to the Panel’s attention a supplemental submission of the Complainant dated July 7, 2006. The decision was prepared without knowledge of the contents of this submission. However, there is nothing in the material submitted that goes to the issue of knowledge that was determinative of the Panel’s decision in this case. It is, therefore, unnecessary for the Panel to consider whether this additional submission should be admitted in evidence.
4. Factual Background
4.1 The Complainant is a company based in the Republic of Korea.
4.2 The Complainant is the registrant and owner of the domain name <gopets.net>. Since August 2005, the Complainant offered from this domain name a website consisting of an on-line game in which virtual pets interact with other virtual pets over the internet. Over 350,000 users have registered with the Complainant on the website.
4.3 The Complainant contends that it is the proprietor of US trademark registration number 78492214 (filing date September 30, 2004) for the word mark GOPETS.
4.4 The Respondent is an individual based in the United States of America. He registered the Disputed Domain on March 22, 1999.
4.5 As at the date of this decision, the Disputed Domain is being used for a website which purports to “provide valuable information to assist with loving and caring for animals and pets” and then provides links to six sites connected with pets and their welfare.
5. Parties’ Contentions
Identical or Confusingly Similar
5.1 The Complainant contends that the Disputed Domain is “the exact match” of its registered US trademark for the word GOPETS.
Rights or Legitimate Interests
5.2 The Complainant contends that “the Respondent has made no effort to create a website for the domain” and is holding it for the reason of selling it. It further maintains:
(i) that the Respondent has no service mark for the name ‘gopets’ and has “demonstrated no use or preparation to use the domain name in connection with a bona fide offering of goods or services”; and
(ii) that the Respondent is not commonly known by the Disputed Domain and is not making a legitimate noncommercial or fair use of the Disputed Domain.
Registered and Used in Bad Faith
5.3 Under this heading, the Complainant repeats its allegation that the Respondent is “cybersquatting” and has made no attempt to create a website at the Disputed Domain. It maintains that the Respondent is “…not planning to do anything with the domain name in the future and…is waiting to sell it either to the Complainant, a competitor or another party.”
5.4 The Complainant provides a copy of an e-mail from the Respondent to the Complainant dated September 2, 2004. The email states as follows:
“I have received your letter and I appreciate your interest in the gopets.com domain name. Originally I purchased the name with a business plan in mind and put together a supportive team to assist me with the day to day operations. We were dedicated to building a business complete with site content, sponsor sections and a user mailing list. Fortunately our core business on the web really started to take off and our team had to focus all of its time and efforts on our thriving business. The gopets.com website was placed on hold and still is today. We have now come to the realization that we will not have time to pursue this endeavour because of the time required to keep our core business a success. We have received numerous requests to purchase this domain name throughout the years. During our last meeting we voted to offer this to serious buyers only. Again we are a business and we are only going to offer this one time only. If you are serious please submit one offer (in US dollars) via email by September 15th, 2004. The highest offer submitted to my email ([emailaddress]@digitaloverture.com) will be provided the opportunity to pick up this domain name. Anyone who makes a serious offer will be notified if they were the leading bid or not soon after the deadline date.”
Identical or Confusingly Similar
5.5 The Respondent puts forward various contentions under this heading to the effect that the Complainant knew that the Respondent owned the Disputed Domain “long before [the Complainant] started his project”.
However, it does not otherwise address the Complainant’s contentions under paragraph 4(2)(i) of the Policy.
Rights or Legitimate Interests
5.6 The Respondent contends that “we have placed several phases of our site to help out pets”. Who exactly “we” is and what these “phases” are, are not explained. The Respondent states that “we have big plans for this site”. He further refers to a “full report” that was written in 1999 in connection with these plans, but a copy of this report is not provided.
Registered and Used in Bad Faith
5.7 The Respondent contends that he purchased the name in good faith “long before the Complainant ever developed his idea”.
5.8 He goes on to maintain that the correspondence and contact between him and the Complainant was more extensive than the Complainant suggests. In particular, the Respondent claims that the Complainant first telephoned him in 2004 to enquire as to whether he could purchase the Disputed Domain. He also refers to email correspondence in 2005 both from the Complainant direct and a third party representative of the Complainant. Text from two emails said to have been sent in May 2005 are reproduced in the Response (although in such a way that at times it is unclear what comes from the original email, and what is additional comment or annotation on the part of the Respondent).
5.9 The Respondent acknowledges that he invited the Complainant to make an offer to purchase the Disputed Domain but claims he had no wish to sell but was “voted…out” by his “partners” who “looked into the possibility of selling the name”. He states that:
“since the Complainant had contacted me several times to purchase the name I thought it only fair to let him know of a possible chance that the name would be sold to a responsible party so that we could use the funds to help other animals”.
5.10 The Respondent also reproduces in the body of the Response the text of alleged emails from third parties in which he claims to have been offered more substantial amounts for the Disputed Domain than that offered by the Complainant.
6. Discussion and Findings
6.1 The Panel has reviewed the Complaint and the documents annexed to the Complaint. The Panel has also reviewed the Response and the documents annexed to the Response. In the light of this material, the Panel finds as set out below.
Identical or Confusingly Similar
6.2 In accordance with paragraph 4(a)(i) of the Policy, the Complainant must establish two separate elements in order to satisfy paragraph 4(a)(i) of the Policy:
(i) the Complainant must provide evidence that it has rights in a trademark or service mark;
(ii) the Complainant must show that the Disputed Domain is identical or confusingly similar to the trademark or service mark in which it has rights.
6.3 The Complainant relies on its US trademark registration number 78492214 (filing date September 30, 2004) for the word mark GOPETS. The Respondent does not appear to dispute that the trademark is actually identical to the Disputed Domain. Insofar as it puts forward any argument at all in relation to this aspect of the Policy, it is that the trademark in question post dates the registration of the Disputed Domain. However, as paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions records, the consensus view on this issue is as follows:
“Registration of a domain name before a complainant acquires trademark rights in a name does not prevent a finding of identity or confusing similarity. The UDRP makes no specific reference to the date of which the owner of the trade or service mark acquired rights. However, it can be difficult to prove that the domain name was registered in bad faith as it is difficult to show that the domain name was registered with a future trade mark in mind”.
6.4 Therefore, the Panel holds that the Complainant has established its case with regard to paragraph 4(a)(i) of the Policy.
Legitimate Interests and Bad Faith
6.5 It is convenient to consider the questions of bad faith and legitimate interests together in this case.
6.6 The Panel wishes first to make it clear that it is unconvinced by the reasons put forward by the Respondent as to why he registered the Disputed Domain. The Panel does not believe that the Respondent has ever had any serious plans to develop the “gopets.com” website. The failure by the Respondent to develop a website using the Disputed Domain for over seven years and the fact that the Respondent does not provide copies of the supposed event in which the alleged plans were said to be recorded speaks volumes. Further, the Respondent’s attempt to explain away his e-mail of September 4, 2004 is risible. Lastly, the Respondent does himself no favours when after seven years of inactivity he creates a simple one page “website” at the Disputed Domain only after the Complaint has been brought.
6.7 Nevertheless, none of this assists the Complainant in this particular case. For the Complaint to succeed, the Panel must be satisfied that the Disputed Domain was both registered and is being used in bad faith by the Respondent (paragraph 4(a)(iii) of the Policy).
6.8 The Respondent registered the Disputed Domain on March 22, 1999. There is no evidence before the Panel that the Respondent was aware of the Complainant at the time the registration took place. The Complainant’s business does not appear to have commenced until August 2005, and although there was correspondence between the Complainant and the Respondent in 2004, there is no evidence before the Panel that the Respondent was aware of the Complainant or its business plans any earlier than this date.
6.9 Since there is no evidence that the Respondent was aware of the Complainant or its business in 1999 the allegation of bad faith registration inevitably fails. In the circumstances, the Complainant has failed to prove paragraph 4(a)(iii) of the Policy.
6.10 Given this finding, there is no need for the Panel to reach a decision on the question of legitimate rights and interests.
The Complainant has therefore not made out all of the elements of paragraph 4(a) of the Policy and, for that reason, the Complaint is denied.
Matthew S. Harris
Dated: July 26, 2006