WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PET360, Inc. v. Pet Dynamix, LLC
Case No. D2013-0964
1. The Parties
The Complainant is PET360, Inc. of Plymouth Meeting, Pennsylvania, United States of America (“US”), represented by Reger Rizzo & Darnall LLP, US.
The Respondent is Pet Dynamix, LLC of Landenberg, Pennsylvania, US.
2. The Domain Name and Registrar
The disputed domain name <rawpetfooddirect.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2013. On May 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 1, 2013, 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.
On June 7, 2013, the Center sent an email communication to the Complainant inviting it to amend the Complaint, namely paragraph 9, relating to the identification of the Registrar of the Domain Name. The Complainant filed an amendment to the Complaint on June 7, 2013.
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” 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 the Respondent of the Complaint, and the proceedings commenced on June 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2013. The Center received an informal email communication from the Respondent on July 2, 2013. On July 3, 2013, the Center acknowledged receipt of the Respondent’s email communication of July 2, 2013, and noted that the Response due date was July 1, 2013, and that it would forward said email communication to the Panel’s attention upon appointment.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 9, 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
The Complainant is a Delaware business corporation headquartered in the state of Pennsylvania, US. Since 1999, the Complainant has sold pet products online, offering nationwide home delivery of most listed products. The Complainant currently operates commercial websites at “www.pet360.com” and “www.petfooddirect.com”.
The Complainant uses the following relevant marks, registered in the United States, in connection with its online retail sales:
US REGISTRATION NO.
Apr. 17, 2001
May 29, 2007
(words and design)
Jan. 25, 2011
Mar. 27, 2012
The Respondent is listed in the Registrar’s WhoIs database as a limited liability company with a Pennsylvania postal address. The WhoIs database shows that the Domain Name was created on January 15, 2008.
The Complaint attaches screenshots of the website (the “Respondent’s website”) associated with the Domain Name in April 2013. The Respondent’s website was headed “Raw Pet Food Direct” and included this notice: “Copyright 2009-2010 Raw Pet Food Direct LLC”. The Respondent’s website advertised raw dog food products for home delivery. It appears that these products directly compete with certain pet food products sold by the Complainant, particularly raw and frozen pet foods. The Respondent’s website also included information on the benefits of feeding pets raw foods.
The Complainant’s representatives sent the Respondent cease-and-desist letters on February 28 and March 8, 2013, asserting trademark claims and requesting transfer of the Domain Name to the Complainant. The Respondent’s Administrative Contact, Ms. Tretowicz, replied by email on March 11, 2013. Ms. Tretowicz stated that “we had actively been doing home delivery of raw foods for years” but had only recently established an online presence: “Although we have owned this name for 5 years the website has only been up for a few weeks and does not accept orders yet.” Ms. Tretowicz argued that the Complainant was not selling raw pet foods when the Respondent purchased the Domain Name and that the Respondent’s activities actually benefitted the Complainant, as the Respondent’s website was not yet “active for purchasing” but encouraged “raw feeders” seeking supplies online. Ms. Tretowicz said the Respondent would consider changing the name of the website, since it was new, but wanted to be compensated for “the monies we have put in”. On March 15, 2013, Ms. Tretowicz sent another email saying that the website would be taken down “in the next few days” and that the Respondent would market its products under a different name. By May 2013, the Respondent’s website was changed so that it required password access, and it appears that the Domain Name at this time no longer resolves to an active website. The Respondent did not reply, however, to subsequent communications from the Complainant in March and April 2013 demanding the transfer of the Domain Name and threatening a lawsuit for trademark infringement. Instead, the Complainant initiated the current UDRP proceeding.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is confusingly similar to the Complainant’s registered PETFOODDIRECT marks and that the Respondent has no rights or legitimate interests in the Domain Name.
The Complainant argues that the Respondent “has direct knowledge of Complainant’s products and Trademarks” and intentionally registered and used the Domain Name in bad faith, in an effort to mislead Internet users for commercial gain.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Complainant’s 2001 registration of the PETFOODDIRECT.COM mark on the Supplemental Register of the United States Patent and Trademark Office (“USPTO”) does not in itself establish the Complainant’s rights in the mark. See, e.g., Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com, WIPO Case No. D2008-1475; Oil Changer, Inc. v. Name Administration, Inc., WIPO Case No. D2005-0530; Rodale, Inc. v. Cambridge, WIPO Case No. DBIZ2002-0153; 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §19.43, at 19-83 (4th ed. 1998). The Policy does not require a registered mark, and a complainant in a UDRP proceeding may adduce evidence demonstrating that an unregistered mark, or a mark registered on the USPTO’s Supplemental Register, has in fact acquired distinctiveness sufficient for common law protection in a relevant jurisdiction. The Complainant has furnished little evidence to support such a finding in this proceeding, however. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7.
Similarly, the Complainant’s registered word-and-design mark is a thin reed on which to rely for this element of the Complaint, since such marks may depend on their device elements to distinguish products in commerce. See, e.g., Fine Tubes Limited v. Tobias Kirch, J. & J. Ethen, Ethen Rohre GmbH, WIPO Case No. D2012-2211.
However, the Complainant indisputably holds standard-character trademarks registered in 2007 and 2012 for PETFOODDIRECT and PETFOODDIRECT.COM. The Domain Name incorporates these marks in their entirety, adding the generic term “raw”. That addition does not avoid confusion with the marks, especially in view of the fact that the Complainant itself offers “raw” pet food products.
The Panel concludes, therefore, that the first element of the Complaint has been established.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the 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) that the respondent has been commonly known by the domain name, even if it 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.”
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, 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 to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Names, once the Complainant has made a prima facie showing. See WIPO Overview 2.0, paragraph 2.1. The Complainant has done so in this proceeding, by observing that the Domain Name incorporates in their entirety the Complainant’s registered PETFOODDIRECT and PETFOODDIRECT.COM marks, and by contending that it has never authorized the Respondent to use any of its marks.
It is undisputed that the Complainant has not consented to the Respondent’s use of these marks in any context. The Respondent’s website was clearly commercial in nature, even if it also included informational pages on “raw feeding”. The website was headed “Raw Pet Food Direct”, and the copyright notice on the Respondent’s website referred to “Raw Pet Food Direct LLC”, but there is otherwise no evidence in the record that a company with that name exists. The Respondent’s Domain Name registration was in a different name, Pet Dynamix, LLC. The Panel concludes that the Respondent has not met its burden of rebutting the Complainant’s prima facie case, on this record, that the Respondent has no rights or legitimate interests in the Domain Name within the meaning of the Policy. Thus, the second element of the Complaint is established.
C. Registered and Used in Bad Faith
The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following, on which the Complainant relies:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
In the absence of a Response, the Panel can draw inferences about the Respondent’s knowledge and intentions only from its activities online and its responses to the Complainant’s cease-and-desist letters. It appears from the Respondent’s March 11, 2013 email (and from the historical screenshots available through the Internet Archive’s Wayback Machine) that the Respondent acquired the Domain Name in 2008 but did not use it for a website until 2013. The website advertised home delivery of pet foods, competing with some of the Complainant’s offerings. It is not disputed (in prior correspondence or in this proceeding) that when the Respondent acquired the Domain Name in 2008 the Complainant was already a leading online retailer of pet foods, using the registered PETFOODDIRECT mark. From the Respondent’s March 11 email, it appears that the Respondent, operating in the same state where the Complainant is based, also had been in the business of selling pet food for home delivery for several years and was aware of the Complainant’s business and products.
The Respondent’s emails do not offer an explanation for selecting a Domain Name that merely added the relevant word “raw” to the Complainant’s successful brand name. Ms. Tretowicz said in her March 11, 2013 email that she considered the parties’ respective businesses to be “very different” and opined that “[s]ome trademarks are weaker than others in the legal system.” But she offered no alternative reason for choosing the Domain Name in response to the accusation in the Complainant’s first cease-and-desist letter that the Domain Name was selected intentionally to confuse Internet users and “garner customer leads” that would otherwise be directed to the Complainant.
The Panel finds on this record that the Respondent more probably than not registered and used the Domain Name in an effort to attract pet owners familiar with the Complainant’s established brand. This constitutes “bad faith” for purposes of the Policy, paragraph 4(b)(iv). Accordingly, the Panel concludes that the third element of the Complaint has been established.
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 <rawpetfooddirect.com> be transferred to the Complainant.
W. Scott Blackmer
Date: July 26, 2013