WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Can Pro Pet Products LTD. v. Matthew Dweck
Case No. D2020-0615
1. The Parties
The Complainant is Can Pro Pet Products LTD., Canada, represented by Aaron Guile, Esq., United States of America (“United States”).
The Respondent is Matthew Dweck, United States.
2. The Domain Name and Registrar
The disputed domain name <gopetfood.com> (the “Disputed 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 March 12, 2020. On March 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 13, 2020, 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.
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 the Respondent of the Complaint, and the proceedings commenced on March 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2020.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 22, 2020. 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 relevant facts are largely straightforward and can be summarized as follows.
The Complainant is a manufacturer of pet foods. One of its brands is named “Go!” that has been marketed since 2002. It is marketed via websites linked to a number of domain names including <gopetfoods.com>, <gopetfoods.co>, <gonaturalpetfood.com>, <gonaturaldogfood.com>, <gonatural.ca>, <gonaturalcatfood.com>, <gosolutionspetfood.com>, and <gosolutionspetfoods.com>. The Complainant owns a number of registered trademarks for the term “GO!” for example Canadian trademark no. TMA759516 registered on February 15 2010. These trademarks are referred to in this decision as the “GO! Trademark”.
The Respondent registered the Disputed Domain Name on March 17, 2015. It has not been used apart from being listed for sale via an aftermarket auction site which invited bids as follows - “offer $50,000 or more”. Filed evidence establishes that the Respondent runs a business in New York, which sells pet related products online.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is similar to its GO! trademark.
The Respondent has no rights or legitimate interests in the term “Go!” or “gopetfood”. The Complainant says the term “gopetfood” has no other meaning other than in relation to itself and its products.
In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. The Complainant says the Respondent is squatting on a typographical variation of its well-known “Gopetfoods” brand and is demanding an extortionate price for the sale of the Disputed Domain Name. It also says the Respondent is a competitor of the Complainant and obtained the Disputed Domain Name with a view to disrupting the Complainant’s business.
No Response has been filed.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark 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 Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s GO! trademark. It is established that the addition of a dictionary or descriptive term to the disputed domain name (such as here “petfood” which is an obvious reference to the nature of the Complainant’s product) has little, if any, effect on a determination of identity or confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a dictionary or descriptive term does not exclude a finding of confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
The omission of the “!” which cannot in any event form part of a domain name for technical reasons is not in the opinion of the Panel a material difference.
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar to a complainant’s trademark - see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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 the respondent has acquired no trade mark 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the GO! trademark or the term “gopetfood”. The Complainant has prior rights in the GO! trademark which precede the Respondent’s registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the near identical nature of the Disputed Domain Name to the Complainant’s “Gopetfoods” branding, the fact that the Respondent runs a business selling pet related products, and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.
Under the Policy, paragraph 4(b)(i) evidence of registration and use in bad faith is established by “(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name”.
In the present case, the Respondent has offered the Disputed Domain Name for sale inviting offers in excess of USD 50,000. The Panel infers the Respondent selected the Disputed Domain Name because of its near identity to the Complainant’s own domain name and brand and hoped to elicit a payment from the Complainant. In the circumstances the Panel concludes that paragraph 4(b)(i) applies.
Further, the Panel notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 <gopetfood.com> be transferred to the Complainant.
Nick J. Gardner
Date: May 6, 2020