WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Central Garden & Pet Company v. NexoGen unknown, NexoGen
Case No. D2017-1524
1. The Parties
The Complainant is Central Garden & Pet Company of Walnut Creek, California, United States of America ("United States" or "U.S."), represented by CSC Digital Brand Services AB, Sweden.
The Respondent is NexoGen unknown, NexoGen of Los Angeles, California, United States.
2. The Domain Names and Registrar
The disputed domain names <aqueon.com>, <aqueon.net>, and <aqueon.org> are registered with Domain.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 4, 2017. On August 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details. The Complainant filed an amendment to the Complaint on August 16, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 6, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on September 11, 2017. 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 Panel, on September 14, 2017, issued a procedural order inviting the Complainant to submit by September 19, 2017, documentation regarding the dates on which the disputed domain names were acquired or transferred to the Respondent, and concerning the accuracy of the WhoIs data and reported suspension of the disputed domain names. The Respondent was invited to submit any relevant comments by September 22, 2017. The Complainant submitted documentation to the Center on September 20, 2017. The Respondent did not submit any comments.
The due date for submission of the Panel's decision to the Center was extended accordingly to September 29, 2017.
4. Factual Background
The Complainant, founded in 1980 and headquartered in Walnut Creek, California, markets products for consumer and professional use in the lawn and garden and pet supplies market. The Complainant is a leading provider of aquariums and aquarium products, parts and supplies sold under the AQUEON mark, first used in commerce in January 2007. The Complainant has registered the AQUEON trademark in a number of jurisdictions, including the United States, Canada, Mexico, the European Union, and Hong Kong, China. The Complainant's U.S. trademark application for AQUEON was filed on January 20, 2006, with a registration date of June 10, 2008.
The disputed domain names <aqueon.net>, and <aqueon.org> were registered on February 23, 2001, and the disputed domain name <aqueon.com> was registered on October 23, 2003, according to the concerned Registrar's WhoIs records. The Complainant has provided historical WhoIs records evidencing that the disputed domain names were transferred to the Respondent on or about July 18, 2007 (<aqueon.net>), September 6, 2007 (<aqueon.com>), and November 5, 2007 (<aqueon.org>). The disputed domain names do not resolve to any active website.
Prior to initiating this administrative proceeding, the Complainant sent a cease-and-desist letter to the Respondent dated April 10, 2017, to which the Respondent did not reply. The Complainant also submitted a WhoIs Inaccuracy Complaint to the Internet Corporation for Assigned Names and Numbers ("ICANN"), and was advised that the disputed domain name <aqueon.com> had been suspended since February 2015 pending verification of the correct WhoIs data. The Registrar's relevant WhoIs records reflect that the domain status "ClientHold" has been assessed to each of the disputed domain names since at least February 4, 2015 (for the disputed domain name <aqueon.org>), November 11, 2014 (for the disputed domain name <aqueon.com>), and November 12, 2014 (for the disputed domain name <aqueon.net>).
5. Parties' Contentions
A. Complainant
The Complainant submits that the disputed domain names are identical or confusingly similar to the Complainant's AQUEON mark, in which the Complainant asserts rights based on registration and use. The Complainant observes that the disputed domain names incorporate the AQUEON mark in its entirety, and thus are confusingly similar to the Complainant's mark. According to the Complainant, the disputed domain names also are identical to the Complainant's mark, as generic Top-Level Domains ("gTLD") such as ".com", ".org", and ".net" are irrelevant when assessing identity or confusingly similarity.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant avers that the Respondent has not been authorized to use the Complainant's trademarks, that the Respondent has not been commonly known by the disputed domain names, and that the Respondent has used the disputed domain name only to redirect Internet users to websites that resolve to blank pages and lack content. The Complainant submits that the Respondent has neither used nor made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services, nor made any legitimate noncommercial or fair use of the disputed domain names. The Complainant further observes that the disputed domain names were not transitioned to the Respondent until well after the Complainant applied to register its AQUEON mark with the United States Patent and Trademark Office ("USPTO") and other jurisdictions, and subsequent to the Complainant's use of the AQUEON mark, commencing on January 29, 2007.
The Complainant contends that the disputed domain names were registered and are being used in bad faith by the Respondent. The Complainant submits that the Respondent has registered numerous domain names that each infringe upon the Complainant's AQUEON mark, and that the sheer number of infringing domain names registered by the Respondent establishes a pattern of cybersquatting. According to the Complainant, there is no plausible good faith explanation for the Respondent to have registered multiple domain names identical to the Complainant's mark, and any use of the disputed domain names could only be in bad faith.
In the circumstances at hand, the Complainant maintains that the Respondent's passive holding of the disputed domain names constitutes bad faith registration and use within the contemplation of the Policy. Additionally, the Complainant asserts that the Respondent's submission of false or fictitious contact information and failure to respond to the Complainant's cease-and-desist letter also are evidence of the Respondent's bad faith registration and use of the disputed domain names.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Scope of the Policy
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 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy 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, 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 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.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain names are identical and confusingly similar to the AQUEON mark, in which the Complainant has demonstrated rights through registration and use. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant's trademark and the disputed domain name.
The Complainant's AQUEON mark is clearly recognizable in each of the disputed domain names.2 The gTLDs ".com", ".org", and ".net" do not serve to dispel the confusing similarity of the disputed domain names with the Complainant's mark: Top-Level Domains generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.3 In this case each of the disputed domain names is identical to the Complainant's mark when disregarding the gTLD. See, e.g., De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465 (<debeers.feedback> is identical to complainant's DE BEERS mark).
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
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 Respondent has not been authorized to use the AQUEON mark. Regardless, the Respondent registered the disputed domain names, each of which is identical to the Complainant's AQUEON mark, well after the Complainant had filed its application to register the AQUEON mark and begun using the mark in commerce. The Respondent since has passively held the disputed domain names.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed 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 disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has 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 Respondent's registration and use of the disputed domain names within any of the "safe harbors" of paragraph 4(c) of the Policy.
The Panel concludes that the Respondent more likely than not was aware of the Complainant and the Complainant's AQUEON mark when registering the disputed domain names. The record reflects that the Respondent acquired the disputed domain names, which are identical to the Complainant's AQUEON mark, over a period of approximately five months in 2007. The disputed domain names were registered by the Respondent well after the Complainant had filed its U.S. trademark application for the AQUEON mark and subsequent to the Complainant's use of the mark in commerce. The Respondent provided false contact information when registering the disputed domain names. In the overall circumstances in this case, the Respondent's lack of use of the disputed domain names is a strong indication of its lack of rights or legitimate interests in the disputed domain names. See "Dr. Martens" International Trading GmbH and "Dr. Maertens" Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246.
Having regard to the foregoing, the Panel finds the Respondent has not used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Further, the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain names, has not been commonly known by the disputed domain names, and as noted above has not been authorized to use the Complainant's mark. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
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,supra. 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 Respondent's conduct in this case constitutes bad faith within the meaning of paragraph 4(a)(iii) of the Policy. The record reflects that the Respondent acquired the disputed domain names between July 18, 2007 and November 5, 2007. The transfer of the domain name registrations from a third party to the Respondent does not constitute a renewal, and the dates on which the Respondent acquired the disputed domain names are the relevant dates to be considered in assessing bad faith.4
The Respondent's passive holding of the disputed domain names does not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, "the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. […] [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." See also Red Bull GmbH v. Kevin Franke, WIPO Case No. D2012-1531.
The Panel considers the following circumstances to be indicative of the Respondent's bad faith under Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Complainant's AQUEON mark is distinctive, and as discussed earlier the Panel finds that the Respondent was aware of the Complainant and the Complainant's AQUEON mark when registering the disputed domain names. The Respondent provided false contact information when registering the disputed domain names, and neither replied to the Complainant's cease-and-desist letter nor submitted a response in this proceeding. In the attendant circumstances of this case, the Panel cannot conceive of any plausible good faith use of the disputed domain names that could be made by the Respondent.
The Panel further considers that the Respondent's registration of three domain names identical to the Complainant's trademark constitutes a bad faith pattern of conduct preventing the Complainant from reflecting its AQUEON mark in a corresponding domain name within the contemplation of paragraph 4(b)(ii) of the Policy. See Salvatore Ferragamo S.p.A v. Ying Chou, WIPO Case No. D2013-2034.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 disputed domain names <aqueon.com>, <aqueon.net>, and <aqueon.org> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: September 25, 2017
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
p>2 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
3See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
4 See WIPO Overview 3.0, section 3.3 and cases cited therein.