WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cat Roberts, LLC v. Barkerwear LLC

Case No. D2017-1662

1. The Parties

Complainant is Cat Roberts, LLC of Stratford, Connecticut, United States of America ("United States"), represented by Ware, Fressola, Maguire & Barber LLP, United States.

Respondent is Barkerwear LLC of Huntington Beach, California, United States.

2. The Domain Names and Registrar

The disputed domain names <barkitware.com> and <peesuit.com> are registered with eNom, Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 25, 2017. On August 28, 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 Respondent is listed as the registrant and providing Respondent's 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 August 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 21, 2017.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on October 2, 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.

4. Factual Background

Complainant is the owner of registration for the word trademark BARKITWEAR on the Principal Register of the United States Patent and Trademark Office ("USPTO"), registration number 4,783,347, registration dated July 28, 2015, in international class ("IC") 18, covering, inter alia, clothing for animals. Complainant is the owner of registration for the word trademark P-SUIT on the Principal Register of the USPTO, registration number 4,932,326, registration dated April 5, 2016, in ICs 5 and 18, covering diapers for dogs, and diapers for pets. Complainant submitted its application for registration for P-SUIT to the USPTO on August 28, 2015, and its application was published for opposition on January 19, 2016.

Complainant markets and sells apparel for pets, including diapers for dogs, at its commercial website hosted at "www.barkitwear.com". According to Complainant, it initiated Internet sales of its P-SUIT branded product on June 6, 2015.

According to the Registrar's verification, Respondent is registrant of the disputed domain names. According to that verification, the record of registration for <barkitware.com> was created on April 30, 2016. According to that verification, the record of registration for <peesuit.com> was created on April 21, 2016. There is no indication on the record of this proceeding that any party other than Respondent has been the registrant of the disputed domain names.

Respondent filed an application to register the trademark "Barkerwear" with the USPTO on December 4, 2015. Complainant contacted Respondent by letter of February 25, 2016, objecting to its application. Respondent by letter of March 11, 2016, denied that its proposed trademark would create a likelihood of confusion with Complainant's trademark. The USPTO by an office action letter dated March 23, 2016, refused to register Respondent's proposed "Barkerwear" trademark based on likelihood of confusion with Complainant's BARKITWEAR trademark. Respondent thereafter abandoned its application.

Complainant has provided evidence that Respondent followed Complainant on Twitter since at least as early as January 30, 2015.

Complainant has provided evidence that from approximately October 25, 2016, until approximately January 9, 2017, the disputed domain names directed Internet users to an explicit pornographic website. As of the date of this proceeding, the disputed domain names are parked.

The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement 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

A. Complainant

Complainant alleges rights in the trademarks BARKITWEAR and P-SUIT based on use in commerce in the United States and as evidenced by registration at the USPTO.

Complainant contends that the disputed domain name <barkitware.com> is confusingly similar to its BARKITWEAR trademark from a visual and phonetic standpoint, and represents a deliberate misspelling of Complainant's trademark intended to mislead Internet users.

Complainant argues that the disputed domain name <peesuit.com> is visually and/or phonetically similar to its P-SUIT trademark, including because the second part of the disputed domain name "suit" is identical, and the letter "P" and the term "pee" are phonetically identical and have the same connotation.

Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names because: (1) Respondent has not been commonly known by the terms in the disputed domain names; (2) prior to notice of the dispute, Respondent did not use the disputed domain names in connection with a bona fide offering of goods or services; (3) Respondent was manifestly aware of Complainant's trademarks when it registered the disputed domain names, and; (4) Respondent has not been authorized by Complainant to make use of its trademarks.

Complainant argues that Respondent registered and is using the disputed domain names in bad faith because: (1) typosquatting constitutes bad faith registration per se; (2) Respondent registered the disputed domain names with knowledge of Complainant's trademarks; (3) use of the disputed domain names to redirect Internet users to a pornographic website is evidence that the disputed domain names were registered primarily to disrupt the business of Complainant.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain names to Complainant.

B. Respondent

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 a 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., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its records of registration. The express courier delivery service record shows successful delivery. 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.

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 in the trademarks BARKITWEAR and P-SUIT, including through registration at the USPTO, and of use in commerce in the United States (see Factual Background, supra). Respondent has not contested Complainant's trademark rights. The Panel determines that Complainant has rights in the trademarks BARKITWEAR and P-SUIT.

The disputed domain name <barkitware.com> is nearly identical from a visual standpoint to Complainant's BARKITWEAR trademark. While the terms "ware" and "wear" are spelled differently, they have the same pronunciation, and similar meaning.¹ The Panel finds that the disputed domain name <barkitware.com> is confusingly similar to Complainant's BARKITWEAR trademark.

The disputed domain name <peesuit.com> is visually similar to Complainant's P-SUIT trademark insofar as the term "suit" is identical, and the term "pee" uses the same first letter as Complainant's trademark. The pronunciation and aural impression of the term "pee" and the letter "P" are identical. In addition, to the extent that Complainant's trademark is associated with products for capturing the urine of dogs or other pets, and the term "pee" is a common English language reference for urine, Internet users would be likely to confuse the term "peesuit" as used in the disputed domain name with Complainant's P-SUIT trademark when used in connection with similar goods. Complainant has provided evidence that Respondent was aware of its P‑SUIT trademark when it registered the disputed domain name, suggesting that Respondent did so with the intent of taking advantage of Complainant's trademark. The Panel determines that the disputed domain name <peesuit.com> is confusingly similar to Complainant's P-SUIT trademark.

The Panel determines that Complainant has rights in the trademarks BARKITWEAR and P-SUIT and that the disputed domain names <barkitware.com> and <peesuit.com> are confusingly similar to those trademarks, respectively.

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 names 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 names.

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 names in connection with directing Internet users to a pornographic website does not establish rights or legitimate interests in the disputed domain names.

Respondent's use of the disputed domain names in connection with parking pages does not establish rights or legitimate interests in favor of Respondent.

Respondent's use of the disputed domain names 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 names.

C. Registered and Used in Bad Faith

In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name "has been registered and is being used in bad faith" (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that "for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith." These include that: "(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor."

Respondent did not respond to the Complaint and Respondent's specific motivation for registering the disputed domain names is not entirely clear. Respondent's attempt to register a "Barkerwear" trademark substantially similar to Complainant's BARKITWEAR trademark may suggest that Respondent planned to enter into business in competition with Complainant. Respondent was put on notice by the USPTO via an office action refusal to register "Barkerwear" dated March 23, 2016, that Respondent's proposed trademark was likely to cause confusion with Complainant's registered BARKITWEAR trademark. Respondent thereafter in April 2016 registered the disputed domain names (in both instances following the date of registration of Complainant's relevant trademark), and subsequently directed those domain names to an explicit pornographic website.

The Panel considers it reasonable to infer from the above-described chain of events that Respondent was seeking to retaliate against Complainant for its opposition to Respondent's attempt to register a competitive trademark. Respondent sought to disrupt Complainant's business. Whatever its specific motivation, it appears from the record that Respondent attempted to tarnish the image or reputation of Complainant's business and brands directed toward animal care, a distinctly different line of business than hosting pornographic materials.

The Panel determines that Respondent registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(b)(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 <barkitware.com> and <peesuit.com> be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Date: October 16, 2017

¹ The term "ware", inter alia, is used as a noun to refer to "manufactured articles, products of art or craft", see https://www.merriam-webster.com/dictionary/ware. The term "wear", inter alia, is used as a noun to refer to "clothing or an article of clothing usually of a particular kind", see https://www.merriam-webster.com/dictionary/wear.