WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TDBBS, Inc. v. Mark Dimitrijevic
Case No. D2016-2111
1. The Parties
Complainant is TDBBS, Inc. of Henrico, Virginia, United States of America ("United States"), represented by Threshold Counsel, PC, United States.
Respondent is Mark Dimitrijevic of Cypress, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <pawluxury.com> 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 October 17, 2016. On October 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 20, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 10, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 11, 2016.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 18, 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.
4. Factual Background
Complainant is the owner of registration for the word service mark PAWLUXURY on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 3,698,575, registration dated October 20, 2009, in international class 35, covering "online retail store services in the field of pet supplies". In its application for registration, Complainant asserted a date of first use and first use in commerce of April 8, 2008.
Complainant operates a commercial website at "www.pawlux.com", where it hosts an online retail store in the field of pet supplies.
According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the date of creation of the record of registration is December 7, 2003, and Respondent has been the registrant since that date.
As of on or about the filing date of the Complaint, the disputed domain name was parked at a "free" parking page furnished by the Registrar, GoDaddy.com. That parking page included various sponsored links. Although a number of those links are unrelated to the services business of Complainant (e.g., rental apartments, loans and templates), several referred to businesses involving pets (e.g., puppies for sale, crate training), and a few referred to pet supplies. In addition, the standard GoDaddy parking template includes a query whether the viewer "would like to buy this domain?"
According to Complainant, "the website has been inactive since at least as early as 2005".
The Registration Agreement between Respondent and the Registrar subjects Respondent to dispute resolution under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant contends that it owns rights in the trademark PAWLUXURY based on registration at the USPTO, as well as under common law.
Complainant argues that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has not authorized Respondent to use its trademark; (2) Respondent has not used or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; (3) no evidence suggests that Respondent has been known by the disputed domain name, and; (4) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because Respondent's website contains links to providers of goods which compete with Complainant, and Respondent's use of the disputed domain name is deliberate and designed to exploit the prestige and goodwill of Complainant through click-through advertisement.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent renewed the disputed domain name on December 8, 2015, after Complainant first used its trademark in 2008 and registered Complainant's domain name in 2009. Complainant refers to certain decisions under the Policy indicating that renewal of a domain name registration in bad faith constitutes abusive registration just as creation registration; (2) Respondent registered and used the disputed domain name to earn click through revenue by intentionally trading on Complainant's trademark to attract and divert Internet users, creating a likelihood of confusion; (3) Respondent's failure to use the disputed domain name other than for a parked site for click-through advertisements constitutes speculative registration, and; (4) "[t]here is no evidence why Respondent registered Respondent's Domain Name except for the bad faith reasons cited herein".
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
The Center transmitted the Complaint to Respondent at the email and physical address provided in its records of registration. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights of ownership in the service mark PAWLUXURY through registration at the USPTO, and through use in commerce on the Internet. Respondent has not challenged Complainant's assertion of service mark rights. The Panel determines that Complainant holds rights in the service mark PAWLUXURY.
The disputed domain name directly incorporates Complainant's service mark, adding only the generic Top‑Level Domain ("gTLD") ".com". Under circumstances such as those present here, the disputed domain name and Complainant's service mark are identical from the standpoint of the Policy.
The Panel determines that Complainant has rights in the service mark PAWLUXURY and that the disputed domain name is identical to that service mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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". (Policy, paragraph 4(c)).
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint, and has not attempted to rebut Complainant's prima facie showing of lack of rights or legitimate interests.
Respondent's use of the disputed domain name in connection with a standard GoDaddy.com parking page incorporating sponsored listings does not establish rights or legitimate interests in favor of Respondent in the disputed domain name. Respondent's use of the disputed domain name does not otherwise manifest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of the registration and use of a domain name in bad faith. These are "(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent's] documented out-of-pocket costs directly related to the domain name; (ii) [the respondent has] 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; (iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] web site or location or of a product or service on [the respondent's] web site or location."
It is a well-settled matter under the Policy that, absent exceptional circumstances, the registration of a disputed domain name that precedes acquisition by a complaining party of rights in a trademark does not constitute bad faith registration. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 3.1, Consensus view. A domain name registrant does not abuse rights that do not exist.
Respondent registered the disputed domain name approximately five years prior to Complainant's asserted first use of its service mark. Respondent has maintained its registration of the disputed domain name since then.
Complainant appears to be aware that it does not have a valid basis for arguing that Respondent's initial or creation registration was undertaken in bad faith because such registration substantially precedes Complainant's acquisition of service mark rights.
Complainant instead argues that Respondent's renewal of registration after Complainant's development of service mark rights constitutes bad faith. It is the predominant view of UDRP panels under the Policy that mere renewal by the same party of a domain name registration does not constitute registration for the purposes of providing the basis for a finding of bad faith. See WIPO Overview 2.0, paragraph 3.7 ("While the transfer of a domain name to a third party does amount to a new registration, a mere renewal of a domain name has not generally been treated as a new registration for the purpose of assessing bad faith. Registration in bad faith must normally occur at the time the current registrant took possession of the domain name.")
There are no exceptional circumstances to consider in this proceeding, and the Panel need not engage in speculation regarding other circumstances that might raise difficult and/or interesting issues. In this proceeding, there is nothing to suggest that Respondent has done anything other than initially register the disputed domain name in good faith and pursue the ordinary process of renewal thereafter.
The Panel determines that Complainant has failed to demonstrate that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy.
Complainant does not succeed in demonstrating abusive domain name registration and use.
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Date: December 2, 2016