WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PetSmart, Inc. v. WhoisGuard, Inc. / Phu Nguyen
Case No. D2019-0328
1. The Parties
The Complainant is PetSmart, Inc. of Phoenix, Arizona, United States of America (“United States”), represented by Winterfeldt IP Group PLLC, United States.
The Respondent is WhoisGuard, Inc. of Panama, Panama / Phu Nguyen of My Hoa, Binh Dinh, Viet Nam.
2. The Domain Name and Registrar
The disputed domain name <petmart.site> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2019. On February 12, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 12, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 13, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 13, 2019.
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 February 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2019.
The Center appointed Antony Gold as the sole panelist in this matter on March 19, 2019. 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 United States corporation, founded in 1986, with its headquarters in Phoenix, Arizona, United States. It has approximately 56,000 employees and operates over 1,650 pet stores in the United States and Canada, in addition to more than 200 in-store dog and cat boarding facilities. In May 2017, the Complainant acquired Chewy, Inc. (“Chewy”), an online retailer of pet food and products based in the United States, which operates as an independent subsidiary.
The Complainant has traded since at least 1988 as PETSMART and it has registered many trade marks to protect its trading style. These include, by way of example only, United States trade mark, registration No. 1,751,656 for PETSMART in Class 42, registered on February 9, 1993. The Complainant also owns many domain names which include its brand name, including <petsmart.com>, registered on July 19, 1995, which resolves to the Complainant’s primary website.
The disputed domain name was registered on June 28, 2018. It resolves to a website branded “petmart”, which offers for sale a variety of pet food and other pet-related products. For reasons explained below, the Complainant says that the Respondent’s website is being used for fraudulent purposes.
5. Parties’ Contentions
The Complainant says that the disputed domain name is identical or confusingly similar to a trade mark in which it has rights. The only differences between its registered trade marks for PETSMART and the disputed domain name are the omission of the letter “s” in the disputed domain name and the addition of the “.site” generic Top Level Domain (“gTLD”) extension. These differences are insufficient to prevent the disputed domain name from being confusingly similar to the Complainant’s PETSMART trade marks.
The Complainant says that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has never been authorized by the Complainant to use its PETSMART marks in any manner, much less as part of the disputed domain name.
The disputed domain name does not reflect the personal Respondent’s name, namely Phu Nguyen. The disputed domain name is used by the Respondent in connection with a credit card fraud scheme involving a business, “Petmart”, which directly competes with the Complainant under a confusingly similar name. Specifically, the Respondent’s website accepts orders for products, which are offered for sale on its website at significant discounts, and then purports to satisfy those orders by purchasing products from Chewy at the retail price offered by it, using stolen credit card numbers or misappropriated Chewy customer account details. The Respondent then supplies those products to its customer. Once details of fraudulent transactions have been detected, Chewy is required to refund the value of the stolen credit card transactions. The Respondent retains the payments which it has received from its customers. On many occasions, consumers who have attempted to purchase goods from the Respondent do not receive the correct items or any items at all.
The Respondent’s use of the disputed domain name in connection with a credit card fraud scheme does not constitute a bona fide sale of goods or services nor a legitimate noncommercial or fair use. Moreover, UDRP panels have categorically held that use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent. Furthermore, it is well established that, where a complainant contends that a respondent has no legitimate interests in a domain name, the burden of proof shifts to a respondent to come forward with proof to the contrary. If the respondent fails to do so, the complainant will have established that the respondent has no legitimate interests in the domain name.
Lastly, the Complainant says that the disputed domain name has been registered and used in bad faith. The Respondent has used the disputed domain name in bad faith according to the circumstance outlined at paragraph 4(b)(iii) of the Policy, namely for the purpose of disrupting the business of a competitor. The website to which the disputed domain name resolves purports to provide pet-related products, which would compete directly with the Complainant’s products. This is disruptive to the Complainant’s business as it redirects Internet users, who are seeking legitimate content provided by the Complainant, to the Respondent’s illegitimate website, providing opportunities to the Respondent to monetize additional web traffic for fraudulent purposes.
The Respondent’s activities also fall within the circumstance of bad faith registration and use set out at paragraph 4(b)(iv) of the Policy, namely that the Respondent is using a misspelling of the Complainant’s well-known trade mark in order to attract Internet users to its website in order to collect orders and related personal information and financial information and then to place fraudulent orders through the Complainant and its affiliates.
In addition, use of a domain name for illegal activity such as fraud or phishing can never confer rights or legitimate interests on a respondent. Such behavior is manifestly considered evidence of bad faith. Moreover, the Complainant’s rights in its PETSMART marks are very well established and its PETSMART brand has achieved a level of recognition and fame such that the Respondent has no argument that it is unaware of it. The Respondent’s use of the disputed domain name to create a webstore directly competitive with the Complainant and its affiliates, and its use of customer data and stolen credit card data to effectuate credit card fraud through the disputed domain name, evidences bad faith registration and use.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant shall prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant has produced evidence of its trade and service mark registrations for PETSMART, including the mark in respect of which full details are set out above.
In considering whether a domain name is identical or confusingly similar to a complainant’s trade marks, it is established that the applicable gTLD suffix, that is “.site” in the case of the disputed domain name, is disregarded under this element of the Policy as it is a technical requirement of registration.
The disputed domain name differs from the Complainant’s registered trade mark for PETSMART only by the omission of the letter “s”, being the fourth letter of the Complainant’s trade mark. The omission of a single letter does not prevent the disputed domain name from being confusingly similar to the Complainant’s mark for the purpose of this element of the Policy. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); “[w]hile each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The Panel therefore finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides, without limitation, examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used, or made preparations to use, the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue.
How these provisions are usually applied in practice is explained at section 2.1 of the WIPO Overview 3.0. This explains that the consensus view of panelists is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”.
The second and third circumstances outlined above are inapplicable; there is no evidence that the Respondent is commonly known by the disputed domain name and the use to which the disputed domain name is put is commercial in character. So far as the question of good faith use is concerned, section 2.13.1 of the WIPO Overview 3.0 explains that “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”.
This guidance is relevant because the Complainant has asserted that the Respondent is using the website to which the disputed domain name resolves as part of a relatively elaborate fraud, the details of which have been described above. Section 2.13.2 of the WIPO Overview 3.0 explains that panels “are generally not prepared however to accept merely conclusory or wholly unsupported allegations of illegal activity, including counterfeiting, even when the respondent is in default”. However, the Complainant has provided detailed documentary evidence to support its assertions. This evidence includes, by way of example only, redacted copies of the orders placed, purportedly by the Respondent’s customers, with Chewy’s website at “www.chewy.com”, using the details taken by the Respondent from stolen credit cards. It also includes an email to the Complainant from one of its suppliers describing the fraud, expressing its concern and seeking the Complainant’s assistance in tackling it as well as a note from one of Chewy’s account managers of a call with a customer, which records the customer’s confusion between the Complainant’s and the Respondent’s businesses.
In the light of the submissions made in the Complaint coupled with the supporting documentary evidence provided by the Complainant, the Panel is satisfied that the use to which the Respondent is putting the disputed domain name is dishonest. Overall, the Complainant has made a strong prima facie case in respect of this element of the Policy.
The Respondent has failed to respond to the Complaint. The Panel accordingly finds that it has no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name differs from the Complainant’s PETSMART trade mark only by the omission of the fourth letter, that is the “s”. This, coupled with the use to which the Respondent has put the disputed domain name, as outlined above, points to an awareness by the Respondent of the Complainant and its PETSMART business as at the date of registration of the disputed domain name. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trade mark registration amounts to bad faith”.
Section 3.1.4 of the WIPO Overview 3.0 explains that: “As noted in section 2.13.1, given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. Given that the only known use of the disputed domain name has been to resolve to a website which has been used for illegitimate activity, it is evident that both the registration and the use of the disputed domain name is in bad faith.
Paragraph 4(b) of the Policy sets out a number of circumstances which, if found by a panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Given that these circumstances are expressed to be without limitation, and having regard to the position taken by panels under this element of the Policy when illegitimate activity on the part of a respondent has been established, it is not strictly necessary for the Complainant to show that the Respondent’s conduct falls within the any of the specific circumstances in which bad faith will be found, as outlined at paragraphs 4(b)(i) to 4(b)(iv) of the Policy. In fact, however, the Respondent’s conduct falls within that described in paragraph 4(b)(iv) of the Policy, namely that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
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 name <petmart.site> be transferred to the Complainant.
Date: April 2, 2019