The Complainants are Eli Lilly and Company of Indianapolis, Indiana, United States of America ("United States"), and Novartis Tiergesundheit AG of Basel, Switzerland, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, United States.
The Respondents are Manny Ghumman of Hayward, California, United States / Mr NYOB of San Jose, California, United States / Jesse Padilla of Union City, California, United States.
The disputed domain names <buycomfortis.com>, <capstarcats.com>, <capstardog.com>, <capstarfleas.com>, <capstarpuppies.com>, <capstarsale.com>, and <trifexisdogs.com> are registered with Wild West Domains, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 19, 2016. On August 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 23, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint1. The Center sent an email communication to the Complainant on August 29, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on September 1, 2016.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 25, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 26, 2016.
The Center appointed William R. Towns as the sole panelist in this matter on October 6, 2016. 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.
The Complainants are Eli Lily and Company ("Lily") and Novartis Tiergesundheit AG ("Novartis"), hereinafter collectively referred to as "Complainants". Novartis is a wholly owned subsidiary of Lily. The Complainants are the owners of the following trademarks used with flea control products for pets: CAPSTAR, in use since December 2000 and registered by the United States Patent and Trademark Office ("USPTO") on November 20, 2001 with the Registration Number 2510863; COMFORTIS, in use since October 2007 and registered by the USPTO on January 15, 2008 with the Registration Number 3370168; and TRIFEXIS, in use since January 2011 registered by the USPTO on April 12, 2011 with the Registration Number 3944743. The Complainants have registrations for these marks (hereinafter collectively referred to as "Complainants' marks") in numerous countries around the world.
According to the relevant WhoIs records maintained by the Registrar, the disputed domain name <buycomfortis.com> is registered to Respondent Manny Ghumman ("Ghumman"). The disputed domain name <trifexisdogs.com> is registered to Respondent Mr. NYOB ("NYOB"), and the disputed domain names <capstarcats.com>, <capstardog.com>, <capstarfleas.com>, <capstarpuppies.com>, and <capstarsale.com> are registered to Respondent Jesse Padilla ("Padilla"). The Respondent Ghumman is the CEO, president and owner of HealthyPets, Inc. The Respondent Padilla is a buyer for HealthyPets, Inc. Respondent NYOB's real identity is unknown, but the same registrant, administrative and technical e-mail address was provided and recorded in the WhoIs record for each of the seven (7) disputed domain names.
The disputed domain names resolve to websites from which, depending on which of the Complainant's products is sought, consumers who click to "buy" are redirected to one of two other websites operated by HealthyPets, Inc., "www.entirelypets.com" and "www.entirelypetspharmacy.com"2. Internet visitors arriving at these websites, in addition to having the opportunity to purchase the Complainants' product they are interested in, will encounter advertisements and links for other products, some of which are related to or competitive with the Complainants' products.
The Respondent Ghumman was one of two respondents3 in a recent UDRP case filed by the Complainants, Eli Lilly and Company and Novartis Tiergesundheit AG v. Registration private, Domains by Proxy, LLC / Bob Singh, and Registration private, Domains by Proxy, LLC/ Manny Ghumman et al, WIPO Case No. D2016-0053. The disputed domain names were <buycapstar.com> and <discountcapstar.com>, and were used by the Respondents in a manner similar to the use of the disputed domain names in this case. The Panel in WIPO Case No. D2016-0053 determined that the Respondents registered and were using the domain names in bad faith.
The Complainants assert that while the Registrar has disclosed three domain name registrants, the disputed domain names are controlled by the same entity, HealthyPets, Inc. and the Complainants request they be allowed to proceed under a single consolidated complaint. The Complainants provide evidence that the Respondent Ghumman is the CEO, president and owner of HealthyPets, Inc., and that Jesse Padilla is a buyer with HealthyPets, Inc. The Complainants note the same registrant, administrative and technical e-mail address for each of the disputed domain names, and suggest "jespad" (term included in such email address) is short for "Jesse Padilla". According to the Complainants, "NYOB" is an acronym for "None Of Your Business"4, and is an alias for either Respondent Ghumman or Respondent Padilla.
The Complainants submit that the disputed domain names are confusingly similar to the Complainants' marks, as each of the disputed domains names incorporates one of the Complainants' marks in its entirety. The Complainants argue that the addition descriptive words such as "buy", "sale", "cats", "dog", "dogs", "puppies", and "fleas" does not dispel the confusing similarity. According to the Complainants, millions of dollars of flea control products have been sold under the Complainants' marks, significant amounts of money have been expended to promote the products sold under the marks, and the marks have become well known among pet-owning consumers in the United States and elsewhere.
The Complainants maintain that the Respondents lack rights or legitimate interests in the disputed domain names. According to the Complainants, the Respondent has not been commonly known by the disputed domain names. The Complainants state that the Respondents are not authorized resellers of the Complainants' products and have not been authorized to use the Complainants' marks. To the contrary, the Complainants submit that the Respondents have incorporated the Complainants' marks in the disputed domain names to attract consumers, for commercial gain, to unauthorized websites that sell products competing directly with the Complainants' products.
The Complainants explain that each of the disputed domain names resolves to a webpage featuring the Complainant's corresponding trademarked products. According to the Complainants, when a consumer seeks to purchase CAPSTAR, COMFORTIS or TRIFEXIS products by clicking on "buy", the consumer is redirected to the Respondents' "www.entirelypets.com" or "www.entirelypetspharmacy.com" websites, where the Respondents offers competing products. The Complainants submit this is not use of the disputed domain names in connection with a bona fide offering of goods or services, citing Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Sanofi-Aventis v. SoftApproach Corp., WIPO Case No. D2007-1502; and Eli Lilly and Company v. Marcel Carvalho, WIPO Case No. D2013-1475.
The Complainants contend that the Respondents registered and are using the disputed domain names in bad faith. The Complainants reiterate that their marks have a strong reputation, maintain that the Respondents had actual and constructive knowledge of the Complainant's marks when registering the disputed domain names, and assert that the Respondent registered the disputed domain names solely for purposes of exploiting and profiting from the Complainants' marks.
The Respondents did not reply to the Complainants' contentions.
Neither the Policy nor the Rules expressly provide for the consolidation of multiple complainants, and generally speak in singular terms of a "complainant" when referring to proceedings under the Policy. See MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., WIPO Case No. D2009-0985. A number of previous UDRP panels nonetheless have concluded that consolidation of multiple complainants in a single complaint is permissible if the complainants have a truly common grievance against one or more respondents, and it would be equitable and procedurally efficient to do so. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.16 and decisions cited therein.
The Complainants are affiliated companies, and the Complaint clearly sets forth a common grievance against the Respondents affecting the Complainants' rights and interests in a similar fashion. In such circumstances the Panel finds it would be both equitable and procedurally efficient to allow the Complainants to proceed with a single consolidated complaint.
Complaints involving multiple domain names with more than one nominal respondent are subject to consolidation in circumstances where the domain names or the websites to which the resolve are subject to common control and consolidation would be equitable and procedurally efficient. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; WIPO Overview 2.0, paragraph 4.16. Based on the uncontroverted facts and circumstances in the record as discussed above, it is evident to the Panel that the disputed domain names and the websites to which they resolve are subject to common control. In such circumstances the Panel finds it would be both equitable and procedurally efficient to allow the Complainants to proceed against the Respondents in a single consolidated complaint.
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term "cybersquatting" is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Panel finds that the disputed domain names are confusingly similar to the Complainants' marks, in which the Complainants have established rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement5. The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, each of the disputed domain names incorporates one of the Complainants' marks in its entirety. The addition in the disputed domain names of the descriptive words "buy", "sale", "cats", "dog", "dogs", "puppies", and "fleas" does not dispel the confusing similarity. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(i) of the Policy.
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondents have not been authorized to use the Complainants' marks. The disputed domain names, however, incorporate the Complainants' marks in their entirety, and resolve to websites on which consumers seeking to purchase the Complainant's products are redirected to other websites operated by the Respondents, where products related to or competitive with the Complainants' products are available.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it 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 or services; or
(ii) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; 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 Respondents have not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondents' registration and use of the disputed domain names within any of the "safe harbors" of paragraph 4(c) of the Policy.
The record reflects that HealthyPets, Inc. (i.e., the Respondents) is an unauthorized reseller of the Complainants' trademarked products. The most often cited UDRP decision in evaluating domain names of resellers and distributors is Oki Data Americas, Inc. v. ASD, Inc., supra (hereinafter "Oki Data"). In Oki Data, the Respondent was a reseller of the Complainant's OKIDATA-branded products, and registered the domain name <okidataparts.com>. The Panel in Oki Data concluded that the use of a manufacturer's trademark as a domain name by a reseller could be deemed a "bona fide offering of goods or services" within the meaning of the Policy only if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the Respondents is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent's relationship with the trademark owner; and
- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The record in the instant case does not reflect the Respondents' observance of the Oki Data criteria. The Respondents do not accurately disclose their relationship with the Complainant on the websites to which the disputed domain names resolve. Further, the Respondents do not use these sites to sell only the Complainant's trademarked goods. Rather, customers seeking to purchase the Complainant's products who click on "buy" are redirected to the Respondents' "www.entirelypets.com" and "www.entirelypetspharmacy.com" websites, where products related to or competitive with those of the Complainants are offered for sale. See BlackRock Institutional Trust Company, N.A. v. Investors FastTrack, WIPO Case No. D2010-1038 (respondent's use of a domain name incorporating the complainant's mark to attract Internet visitors to site also providing information about competing products has "bait and switch" feel to it); See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., supra (respondent's business must genuinely revolve around trademark owner's goods or services).
The Oki Data approach acknowledges certain scenarios relating to the potential legitimacy of using another's trademark in a domain name, often referred to as "nominative fair use". An overarching principle of the Oki Data approach is that a use of a domain name cannot be "fair" if it suggests affiliation with the trademark owner; nor can a use be "fair" if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, WIPO Case No. D2014-1359 (Oki Data approach considers and applies nominative fair use principles with reference to the limited scope of the Policy, and specifically with respect to the respondent's use of the complainant's mark in a domain name); Project Management Institute v. CMN.com, WIPO Case No. D2013-2035 ("[It] is critical to the establishment of rights or legitimate interests under Oki Data, and to a claim of nominative fair use,that the [r]espondent take steps to avoid using of the [c]omplainant's mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement").
Generally speaking, UDRP panels have found that domain names identical to a third-party trademark carry a high risk of such affiliation. Where the domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP jurisprudence broadly holds that this cannot constitute nominative fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner.6 It is difficult to state with precision what qualitative aspects of such additional term would automatically suggest such impersonation, sponsorship, or endorsement. Certain geographical terms (e.g., trademark-nyc.com, or trademark.nyc), or terms with an "inherent Internet connotation" (e.g., e-trademark.com, buy-trademark.com, or trademark-online.com) would seem, by their nature, to fall within this category. At the other extreme, certain critical terms (e.g., trademarksucks.com) would in most contexts at least prima facie communicate that there is no affiliation. In the gray zone, certain terms within the trademark owner's field of commerce, or indicating services related to the brand while referring to the relevant mark (e.g., <okidataparts.com>, or <trademark.feedback>), may not necessarily trigger an inference of affiliation by themselves, but would normally require a further examination by the panel of the broader facts and circumstances of the case including the associated website content to assess the propriety of the use made of the domain name (e.g., under the Oki Data approach). See, e.g., 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, supra.
In this regard, it is the Panel's opinion that the disputed domain names selected by the Respondents misrepresent the nature of the "relationship" or (lack of) affiliation between the Complainants and the Respondents. The Respondents' selection of such domain names (using the terms "sale", "cats", etc.) could suggest to Internet users that they are affiliated with, sponsored, or endorsed by the Complainant, active in the pet food industry. Such inference is reinforced by the Respondents' use of the websites, notably demonstrated by the Respondents' failure to satisfy the Oki Data requirements. Because the Respondents' domain names invoke a suggestion of affiliation with the trademark owner, such use is not fair, is not legitimate, and does not give rise to rights or legitimate interests; rather, it constitutes the kind of behavior prohibited by the Policy.
Having regard to all of the relevant circumstances in this case, and absent any explanation from the Respondents, the Panel finds that the Respondents' use of the disputed domain names does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Nor logically are the Respondents making a legitimate noncommercial or fair use of the disputed domain names within the meaning of paragraph 4(c)(iii) of the Policy. The Respondents obviously have not been authorized to use the Complainants' marks, have not been commonly known by the disputed domain names, and have not otherwise demonstrated rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondents' conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is evident that the Respondents were aware of the Complainants and the Complainants' marks when registering the domain names. It is a reasonable inference in the circumstances of this case that the Respondents registered the disputed domain names based on the attractiveness of the Complainants' marks, in order to drive traffic to the Respondents' websites, where the Respondents offer products related to or competitive with those of the Complainants. In the attendant circumstances of this case, the Panel considers it more likely than not that the Respondents' primary motive in relation to the registration and use of the disputed domain names was to capitalize on, or otherwise take advantage of, the Complainants' trademark rights, for commercial gain.
Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <buycomfortis.com>, <capstarcats.com>, <capstardog.com>, <capstarfleas.com>, <capstarpuppies.com>, <capstarsale.com> and <trifexisdogs.com> be transferred to the Complainant Eli Lilly and Company.7
William R. Towns
Date: October 23, 2016
1 At the time the Complaint was filed, the registrant of the disputed domain names according to the concerned Registrar's WhoIs records was Domains By Proxy LLC, a privacy protection service. After receiving the Center's request for registrar verification, the Registrar disclosed the underlying registrants identified as Respondent's in the Amended Complaint. When amending the Complaint, the Complainants elected not to include the privacy protection service as a named respondent.
2 HealthyPets, Inc. is the owner of a United States trademark registration for ENTIRELYPETS.
3 The second respondent in that case was Bob Singh, the vice president of HealthyPets, Inc.
4 The Panel notes that NYOB is Internet slang for "Not Your Own Business."
5 See WIPO Overview 2.0, paragraph 1.2.
6 See Grundfos Holding A/S v. Ahmed Alshahri, WIPO Case No. D2015-1112;Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031.
7 The Complaint requests that the disputed domain names be transferred to Complainant Eli Lilly and Company.