WIPO Arbitration
and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pet Warehouse v. Pets.Com, Inc.
Case No. D2000-0105
1. The Parties
The Complainant is Pet Warehouse, a corporation organized in the State
of Ohio, United States of America (USA), with its principal place of business
in Dayton, Ohio, USA.
The Respondent is Pets.Com, Inc., with its principal place of
business in San Francisco, California, USA.
2. The Domain Name(s) and Registrar(s)
The disputed domain name is "petwarehouse.com".
The registrar of the disputed domain name is Network Solutions, Inc., with
its business address in Herndon, Virginia, USA.
3. Procedural History
The essential procedural history of the administrative proceeding is as follows:
a. The Complainant initiated the proceeding by the filing of a complaint via
e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO")
on February, 28, 2000, and by courier mail received by WIPO on March 2,
2000. Payment by Complainant of the requisite filing fees accompanied the courier
mail. Complainant requested the appointment of a three-member Administrative
Panel. On March 2, 2000, WIPO completed its formal filing compliance requirements
checklist.
b. On March 2, 2000, WIPO transmitted notification of the complaint and commencement
of the proceeding to the Respondent via e-mail, telefax, and courier mail. On
March 2, 2000, WIPO transmitted notification of the complaint to ICANN, Network
Solutions and Complainant’s authorized representative.
c. On March 22, 2000, Respondent transmitted its Response by telefax to WIPO
(received by WIPO on March 23). On March 22, 2000, Respondent transmitted copies
of the Response to Complainant by courier mail and telefax.
d. On April 3, 2000, WIPO notified Complainant and Respondent of the appointment
of the three-member Administrative Panel (the "Panel") in this case.
Each member of the Panel furnished WIPO an executed Statement of Acceptance
and Declaration of Impartiality and Independence ("Statement and Declaration").
Each panelist other than the Presiding Panelist was selected by WIPO from a
list of candidates furnished by the Complainant and Respondent, respectively.
The Presiding Panelist was selected by WIPO from a list of five prospective
panelists provided to the parties.
e. On April 3, 2000,WIPO notified the Panel that, absent exceptional circumstances,
it would be required to forward its decision to WIPO by April 16, 2000. On April 4
and 5, 2000, members of the Panel received a hard copy of the file in this matter
via courier mail from WIPO.
f. On April 7, 2000, the three members of the Panel deliberated via telephone
conference and reached a unanimous decision in this matter.
The Panel has received through WIPO one supplemental transmission from Respondent
of a recent decision by another Administrative Panel. This document was also
transmitted via WIPO to Complainant. Because this submission was filed on April
4, 2000, prior to the Panel’s substantive review of this matter, and because
Respondent merely provided a copy of the decision without any argument, the
Panel has concluded that it is appropriate to accept this supplemental submission[1].
The Panel has not received any requests from Complainant or Respondent regarding
further submissions, waivers or extensions of deadlines, and the Panel has not
found it necessary to request any further information from the parties. The
proceedings have been conducted in English.
4. Factual Background
Respondent, Pets.Com, Inc., is the beneficial holder of the domain name "petwarehouse.com",
registered with Network Solutions on June 4, 1998. "PetWarehouse.com"
is designated as the registrant of such domain name according to a Network Solutions’
WHOIS database query printout of February 15, 2000, furnished by Complainant
(Complaint, Annex A). Said printout designates "[email protected]" as
the Administrative Contact for the Registrant, and includes the physical address
of Respondent (with a single letter typographical error). Respondent has provided
evidence that the founder of Pets.Com registered "petwarehouse.com"
prior to deciding on the name of his Pets.Com, Inc. business venture (Response,
Exhibit A.1, Declaration of Greg McLemore). Prior to transfer of registration
of the disputed domain name to Pets.Com, Inc., the name was beneficially held
by another business entity ("Web Magic"), also owned by Respondent’s
founder, Greg McLemore (Id.). There is no evidence of difficulty on the
part of any party in contacting Respondent as beneficial holder of the "petwarehouse.com"
domain name, nor of Respondent attempting to disclaim registration or control
over said domain name.
The beneficial owner of Complainant, Pet Warehouse, is Greico Entrerprises,
Inc. ("Greico") (Complaint, Annex C). On January 10, 1995, Greico
submitted an application to the U.S. Patent and Trademark Office (U.S. PTO)
for registration of the service mark, "Pet Warehouse" (Response, Exhibit
F). That application was accorded a filing date of January 12, 1995, and Serial
No. 74/620,416. The application was declared abandoned on June 5, 1997, by the
U.S. PTO after Greico failed to respond to the U.S. PTO’s final refusal to register
decision (Id., U.S. PTO current status printout).
Respondent has used the "petwarehouse.com" domain name to direct
Internet users that enter said name to its "pets.com" website. Subsequent
to demand from Complainant that it cease and desist from such use, on or about
November 1999, Respondent deactivated the disputed domain name and discontinued
the link to "pets.com" (Complaint, Annex B, Response, Exhibit A.2,
Declaration of Bayard Carlin).
Complainant distributes by mail a substantial quantity of catalogues that prominently
display the name "Pet Warehouse". Complainant has used the name "Pet
Warehouse" in connection with its mail order catalog business since 1986
(Complaint, para. 12, and Annex F, Declaration of Donald Laden). Circulation
of Complainant’s catalogs presently exceeds 5 million units annually (Id.).
Complainant currently uses the domain name "petwhse.com" in connection
with its Internet pet supply business website (Id., Annex I).
Respondent conducts a high volume retail pet supply business through its Internet
web site that uses the domain name "pets.com". Respondent advertises
heavily in various communications media under the name "pets.com".
Other than establishing and using the link between "petwarehouse.com"
and "pets.com" as a means to direct Internet users to its "pets.com"
website, Respondent has not used the name "petwarehouse.com" or "Pet
Warehouse" on goods or services in commerce. (Response, Exhibit A.3, Declaration
of Christopher Deyo).
The Service Agreement in effect between Respondent and Network Solutions subjects
Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain
Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and
with implementing documents approved by ICANN on October 24, 1999. The Uniform
Domain Name Dispute Resolution Policy (the "Policy") requires that
domain name registrants submit to a mandatory administrative proceeding conducted
by an approved dispute resolution service provider, of which WIPO is one, regarding
allegations of abusive domain name registration (Policy, para. 4(a)). Respondent
has not contested that it is properly before this Administrative Panel.
5. Parties’ Contentions
A. Complainant
Complainant states that it has used the service mark "Pet Warehouse"
in commerce since at least as early as 1986 (Complaint, para. 12). See
Factual Backgound, supra. It indicates that its catalogue customers
are primarily retail end-users. It maintains an Internet retail services website
under the domain name "petwhse.com". Respondent states: "Unfortunately,
due to Respondent’s registration and use of the domain name petwarehouse.com,
consumers are forced to search for the site rather than go to what would be
the obvious location, www.petwarehouse.com." (Id.).
Complainant states:
"The domain name at issue, petwarehouse.com, is identical or confusingly
similar to Pet Warehouse’s PET WAREHOUSE service mark.
"Respondent has no rights or legitimate interests in the petwarehouse.com
domain name. Respondent does not own a trademark registration covering the mark,
and has no common law use of the mark prior to Pet Warehouse’s adoption and
use of the PET WAREHOUSE service mark in 1986. Consequently, Respondent has
registered and used the petwarehouse.com domain name in bad faith." (Id.)
Complainant indicates that Respondent listed "PetWarehouse.com" as
the Registrant for the disputed domain name, and that PetWarehouse.com is a
fictitious business entity. Complainant states:
"PetWarehouse.com is merely an alter ego set up to conceal the identity
of the true owner of the petwarehouse.com domain name, namely, Pets.com. …
"Respondent’s provision of false contact information constitutes ‘bad
faith’ as defined by the Anticybersquatting Consumer Protection Act, 15 U.S.C.
§ 1125(d)(1)(B)(i)(VII) (describing ‘the person’s provision of material and
misleading false contact information when applying for registration of the domain
name’ as bad faith under the statute. … Pet Warehouse respectfully submits that
‘bad faith’ under the Anticybersquatting Consumer Protection Act should constitute
bad faith under the non-exclusive list of bad faith factors enumerated in the
ICANN Policy. See Policy at Para. 4. b." (Id., para. 12.A).
Complainant indicates that Respondent’s founder, Gregory McLemore, was given
notice in January 1999 by telephone call from Complainant’s President, Donald
Laden, and "[i]n approximately August 1999, despite having actual knowledge
of Pet Warehouse and its service mark rights in the PET WAREHOUSE mark, Respondent
caused its petwarehouse.com domain name to link to its competing www.pets.com
website. … The www.pets.com website offered, and continues to offer, services
in direct competition with Pet Warehouse." (Id., para. 12.B.1).
Complainant indicates "the www.pets.com website did not display a disclaimer
or other information informing consumers that it was not affiliated with Pet
Warehouse." (Id.)
Complainant states that:
"These activities created a likelihood of confusion with respect to the
source, sponsorship, affiliation, or endorsement of the www.petwarehouse.com
website. The confusion was caused by the website’s location at petwarehouse.com,
a domain name identical to Pet Warehouse’s PET WAREHOUSE service mark. Consumers
seeking information about the services provided by Pet Warehouse were likely
to assume that the Internet location would be www.petwarehouse.com. Instead,
consumers were linked to www.pets.com, a direct competitor." (Id.)
Complainant indicates that, although Respondent has deactivated its website
link, it has refused to transfer the disputed domain name to Complainant. It
says: "The fact that Respondent eventually deactivated the site should
not absolve it from a finding of bad faith." (Id.)
Complainant indicates that, even if Respondent’s domain name link would not
lead to actual consumer confusion, initial interest confusion would still be
likely and would support a finding of consumer confusion. On this basis, it
argues, "Respondent’s activities constitute bad faith registration and
use of a domain name as defined by Paragraph 4. b. iv. of the Policy."
(Id.)
Complainant states that, because users of the Internet will often use a trademark
or service mark to guess at a domain name, Respondent’s refusal to transfer
the "petwarehouse.com" is disrupting Complainant’s Internet business
because potential customers may have difficulty locating it, and may wrongly
assume that Complainant is not doing business. It says:
"In fact, this has lead to several complaints from customers who have
commented that the Pet Warehouse website is difficult to locate and remember
because it is placed at www.petwhse.com. These consumers have suggested that
the Pet Warehouse website should be placed at www.petwarehouse.com." (Id.)
Complainant also states that Respondent could reactivate the disputed domain
name and further disrupt its business. (Id.)
According to Complainant: "Other consumers finding no content appearing
at the site may look to websites such as Network’s Solution’s ‘Whois’ lookup
to find that a company named ‘PetWarehouse.com’ owns the petwarehouse.com domain
name. This may lead to the mistaken conclusion that Pet Warehouse is related
to this entity. … This constitutes bad faith registration and use of a domain
name as defined by Paragraph 4.b.iii. of the Policy."
Referring to the circumstance that Respondent’s founder transferred registration
of the disputed domain name to "PetWarehouse.com" subsequent to notice
by Complainant of an adverse interest, Complainant states: "This clearly
indicates ‘a misappropriation of [Pet Warehouse’s] goodwill’ and, therefore,
Respondent’s bad faith. … Respondent’s bad faith in this regard is further exemplified
by its selection of a confusingly similar alter ego, ‘PetWarehouse.com,’ to
use as the Registrant name." (Id.).
Complainant states that Respondent has not made legitimate good faith use of
the disputed domain name. It says: "Respondent has not used the domain
name in connection with a bona fide offering of goods or services. Its only
use of petwarehouse.com was in connection with a domain likely to cause confusion
among consumers. Consequently, Respondent has not acted in good faith as defined
by Paragraph 4. c. i. of the Policy. As discussed above, Respondent has not
been ‘commonly known’ as petwarehouse.com and has, therefore, not acted in good
faith as defined by Paragraph 4. c. ii. Finally, Respondent is not making a
legitimate noncommercial or fair use of the domain name as defined by Paragraph
4. c. iii. Respondent’s activities establish that its true intentions were to
divert consumers away from the Pet Warehouse website and to block Pet Warehouse
from establishing a website at a domain name identical to its service mark."
(Id.)
Regarding Respondent’s claims that Complainant’s service mark is not protectable,
Complainant argues:
"Respondent’s arguments that the PET WAREHOUSE service mark is unprotectable
because it is ‘generic’ or ‘descriptive’ are unavailing and should not be perceived
as providing a ‘good faith’ defense. … There is absolutely no evidence that
the mark is generic. A generic term is not capable of functioning as a mark
because it refers to a ‘genus of which the particular product is a species.’
See Committee For Idaho’s High Dessert v. Yost, 92 F.3d 814, 821 (9th
Cir. 1996) (holding COMMITTEE FOR IDAHO’S HIGH DESERT to be protectable, not
generic). … PET WAREHOUSE is clearly not a ‘genus.’ The PET WAREHOUSE service
mark is used in connection with catalog retail services, not a ‘warehouse.’
There is no central ‘pet warehouse’ where consumers can go to avail themselves
of Pet Warehouse’s retail services. Its services are offered through catalogs
and online. Consequently, the PET WAREHOUSE service mark is not ‘generic.’
"The PET WAREHOUSE service mark is properly categorized as ‘suggestive’
of the services. A suggestive mark requires imagination and perception to determine
the nature of the goods or services. See The Money Store v. Harriscorp Finance,
Inc., 689 F.2d 666, 674 (7th Cir. 1982) (holding THE MONEY STORE to be protectable,
it is suggestive of money-lending services). … As discussed above, the PET WAREHOUSE
mark is used in connection with catalog retail services and related Internet
retail services. It does not simply signify a ‘warehouse’ where pets are kept,
which would be the generic use of the phrase. Some degree of imagination is
required to ascertain the nature of Pet Warehouse’s use of the mark. See
also Citibank, N.A. v. Citibanc Group, Inc., 724 F.2d 1540, 1545 (11th Cir.
1984) (holding CITIBANC to be protectable, it is suggestive of a ‘modern or
urban bank’). …
"Even if the PET WAREHOUSE mark was held to be descriptive rather than
suggestive, Pet Warehouse has used the mark in commerce for more than fourteen
years. … This use constitutes prima facie evidence that the mark has become
distinctive as used in connection with Pet Warehouse’s services. See 15
U.S.C. § 1052(f). … Moreover, the PET WAREHOUSE catalog circulation currently
exceeds five million units annually. … In addition, Respondent’s registration
of petwarehouse.com under the pseudonym ‘PetWarehouse.com,’ after being informed
of Pet Warehouse’s service mark rights in PET WAREHOUSE, should entitle Pet
Warehouse to a presumption of secondary meaning. See The New York State Society
of Certified Public Accountants v. Eric Louis Assocs., Inc., No. 99 CIV.
3030(LBS), 1999 WL 1084220 at * 7 (S.D.N.Y. Dec. 2, 1999) (defendant’s use of
the ‘nysscpa.com’ domain name and meta-tag is clear evidence of an attempt to
plagiarize the mark). …" (Id.)
Complainant requests that the domain name "petwarehouse.com" be transferred
to it (id, para. 13).
B. Respondent
Respondent states that "Pet Warehouse" is a term "descriptive
of complainant’s services." Its response cites passages from eleven news
reports using the term to describe a kind of retail establishment. (Response,
para. I.A.1.)
Respondent states that Complainant’s name is "descriptive, at best",
and indicates that Complainant’s abandonment of its service mark application
denies it a presumption of distinctiveness in U.S. law. Respondent indicates
that Complainant has the burden of proving distinctiveness. (Id.)
Respondent states that Complainant has not provided survey evidence of secondary
meaning (id., para. I.A.1.a.), and has failed to submit circumstantial
evidence. It states:
"Factors relevant to proving secondary meaning include: 1) the length,
manner, and extent of use and advertising of the mark; 2) the number of others
claiming use of the same or similar marks; 3) the amount of sales and number
of customers; and, 4) proof of the defendant's intent to copy. e.g., Echo
Travel, Inc. v. Travel Associates, Inc., 870 F.2d 1264 (7th Cir. 1989)."
(Id., para. I.A.1.b.)
Respondent indicates that while Complainant has provided evidence of its catalog
distribution, "Complainant has provided no evidence whatsoever that recipients
of its catalogues identify the words ‘PET WAREHOUSE’ as complainant, e.g., a
company calling itself Pet Warehouse, as opposed to what complainant is (and
many others are), namely, a type of retail business known as a pet warehouse."
(Id., para. I.A.1.b.1))
Respondent notes that Complainant’s suggestion that five years of use of a
mark constitute a prima facie showing of distinctive relates only to registration
decisions made in ex parte proceedings at the U.S. PTO, and that Complainant’s
eleven years of use did not suffice to establish distinctiveness regarding its
application at the U.S. PTO (id.).
Respondent states:
"Complainant's use has not been ‘substantially exclusive’ and third-party
trademark use is rampant, including use of PETS WAREHOUSE by a New York-based
business as a mark for retail sales of pet products that appears to pre-date
complainant’s by more than a decade; and use of PET WAREHOUSE by a Missouri-based
pet chain since 1985, i.e., at least a year before complainant. The facts are
that there are many others concurrently using PET WAREHOUSE and variations such
as PETS WAREHOUSE for services highly related to complainant’s." (Id.,
para. I.A.1.b. 2) [References are provided in Response] [Underlining in original]
Respondent states:
"Because Pet Warehouse has submitted no evidence showing the existence
or volume of sales or advertising expenditures in connection with PET WAREHOUSE,
particularly sales in the same channel of trade as Pets.Com, i.e., on the Internet,
an appropriate and necessary inference is that it has none or so little that
the information would not support a showing of secondary meaning." (Id.,
para. I.A.1.b.3)
Respondent indicates:
"As to intentional copying, another indicia of secondary meaning, there
is no evidence that Pets.Com intentionally copied complainant's PET WAREHOUSE
mark or would have any reason to so do. … There is no evidence did Pets.Com’s
founder waseven aware of complainant before registering the domain name
when NSI made it available. … Pets.Com is merely making legitimate and good
faith use of a domain name that relates to its pet-related services." (Id.,
para. I.A.1.b.4)
Respondent suggests that, even if "Pet Warehouse" was a valid service
mark, consumers are not likely to confuse "Pet Warehouse" and "petwarehouse.com".
Respondent indicates that Complainant has failed to show actual consumer confusion
resulting from use of the marks, even though Respondent used the dispute domain
name to direct consumers to "Pets.Com". It adds that "Complainant
is at a complete loss to provide any reasonable explanation why Pets.Com, a
successful mainstream provider of pet-related goods and information, would want
to engender confusion." (Id., para. I.A.2)
Respondent asserts that its use of "petwarehouse.com" to direct consumers
to Pets.com is a legitimate use of the domain name, and that many reputable
on-line businesses "do precisely the same thing". (Id., para.
I.B)
Respondent challenges Complainant’s assertion that Respondent intended to deceive
and hide its ownership of the disputed domain name, indicating that: Complainant
had no difficulty on the basis of the information provided in its registration
record in locating the owner, that the link between "petwarehouse.com"
and "Pets.Com" would automatically take an Internet user to the website
of Respondent, and that Respondent’s founder had entered the disputed domain
name in the registrant field as a "placeholder" while he decided on
the name of his business. (Id., para. I.C)
Respondent states that it has used the disputed domain name in good faith.
It says:
"First, Pets.Com registered and commenced plans to use PETWAREHOUSE.COM
in connection with a bona fide offering of its goods and services prior to having
any notice of this dispute. See, UDRP, ś4, c. (i). Complainant has submitted
no evidence or made any claim to the contrary."
…
"Second, Pets.Com’s use of the PETWAREHOUSE.COM domain address in connection
with offering goods and services for pets and their owners is a legitimate fair
use of the domain name for a good faith business purpose. See, UDRP, ś4, c.
(iii). Until removing the link to its site pending resolution of this dispute,
Pets.Com used PETWAREHOUSE.COM descriptively to identify the pet products and
services it offers from its website…. Pets.Com, by merely linking the domain
name to its clearly marked PETS.COM website and not otherwise using it as asource identifier or claiming rights in PET WAREHOUSE as a mark, was making
descriptive, and thus fair, use of the PETWAREHOUSE.COM domain name." (Id.,
para. II)
Respondent indicates that its showing of a legitimate interest in the "petwarehouse.com"
name requires the dismissal of Complainant’s complaint, regardless of the adequacy
of Complainant’s case (Id.).
Respondent states:
"Additionally, because Pet Warehouse’s complaint in the matter is so patently
lacking in merit - e.g., complainant is the junior user of a descriptive (if
not generic) term and respondent's use has been beyond doubt a fair, good faith
one - the Arbitrators must find that the complaint was brought for the bad-faith
purpose of attemptingto interfere with Pets.Com’s business and amounts
to reverse domain name hijacking." (Id., Conclusion)
6. Discussion and Findings
The Uniform Domain Name Dispute Resolution Policy (the "Policy"),
adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on
August 26, 1999, (with implementing documents approved on October 24, 1999),
is addressed to resolving disputes concerning allegations of abusive domain
name registration. The Panel will confine itself to making determinations necessary
to resolve this administrative proceeding.
It is essential to dispute resolution proceedings that fundamental due process
requirements be met. Such requirements include that a respondent have notice
of proceedings that may substantially affect its rights. The Policy, and the
Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),
establish procedures intended to assure that respondents are given adequate
notice of proceedings commenced against them, and a reasonable opportunity to
respond (see, e.g., para. 2(a), Rules).
In this proceeding, Respondent has furnished a detailed Response to the Complaint
in a timely manner. There is no issue as to whether Respondent received adequate
notice of these proceedings.
Paragraph 4(a) of the Policy establishes three elements that must be established
by a Complainant to merit a finding that a Respondent has engaged in abusive
domain name registration, and to obtain relief. These elements are that:
- Respondent’s domain name is identical or confusingly similar to a trademark
or service mark in which the complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the domain
name; and
- Respondent’s 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.
In this proceeding, Complainant has failed to establish the first element necessary
to prove that Respondent has engaged in abusive domain name registration. The
Panel determines that Complainant has not established rights in the trademark
or service mark "Pet Warehouse". In light of this determination, the
Panel need not consider whether the domain name "petwarehouse.com"
is identical or confusingly similar to Complainant’s alleged service mark. Nor
need the Panel consider whether Respondent has rights or legitimate interests
in "petwarehouse.com", nor whether Respondent’s registration and use
of the disputed domain name was in bad faith.
There are three factors that argue convincingly against Complainant’s claim
to the service mark "Pet Warehouse". First, two decisions by federal
courts in the United States have found arguably similar "warehouse"-formative
marks to be generic. Second, the U.S. PTO’s rejection of Complainant’s application
for service mark registration denies a presumption of validity to its claim
of exclusive rights in that mark. Third, Respondent has provided substantial
evidence to undermine Complainant’s claim of service mark distinctiveness. Knowing
this was a factor, Complainant anticipated and tried to neutralize Respondent’s
argument, but the evidence it submitted was not sufficient to overcome Respondent's
showing.
First, each of "pet" and "warehouse" is a generic term.
"Pet" is a noun used to refer to "a domesticated animal kept
for pleasure rather than utility" (Webster’s Third New International Dictionary,
at 1689 (1993 ed.)). The definitions of the noun "warehouse" include
""1: … a: a wholesale establishment of the service type
in which large inventories are carried b: a wholesale establishment operated
by a chain store organization" (id., at 2576) [bold in original].
The U.S. Court of Appeals for the Seventh Circuit, in Mil-Mar Shoe v. Shonac,
75 F. 3d 1153 (7th Cir. 1996), has carefully considered the term
"warehouse" as used in the sense of a retail store, and has held that
this usage is common or generic in American English. It refused trademark protection
for the term "Warehouse Shoes", while also indicating that "Shoe
Warehouse" provides an even clearer example of two generic terms that could
not be subject to trademark protection (75 F. 3d. at 1160). The Seventh Circuit,
75 F. 3d at 1161, cited with favor an earlier district court decision, Warehouse
Foods, Inc. v. Great Atlantic and Pacific Tea Co., 223. U.S.P.Q. 892 (N.D.
Fla. 1984), denying trademark protection to "Warehouse Foods" on grounds
that the two generic words in combination were in themselves a generic designation[2].
As the Seventh Circuit observed in Mil-Mar, 75 F. 3d at 1161 and n.
15, it is possible for two generic terms taken together to achieve trademark
or service mark status by achieving a sufficient level of secondary meaning
in the relevant community. However, the burden on the party making a claim to
distinctiveness or secondary meaning in such a case is high because of the disinclination
of the courts to take words of ordinary meaning out of common usage (Cf.
75 F. 3d at 1161).
The Panel does not accept Complainant’s suggestion that "Pet Warehouse"
is a suggestive mark, such that Complainant should not be required to prove
secondary meaning. No imagination is required to associate the term with a retail
establishment selling pet supplies. That the business is conducted principally
by catalog and mail order makes it no less of a retail sales establishment than
a store located in a shopping mall. The claimed mark is descriptive, at best.
In light of the Seventh Circuit’s decision in Mil-Mar regarding the word
"warehouse", the Panel considers the Complainant to shoulder a heavy
burden to demonstrate that this generic word, combined with the generic word
"pet", together forms a distinctive service mark.
As the second major factor influencing the Panel’s decision, Respondent has
informed the Panel that Complainant’s attempt to register the service mark "Pet
Warehouse" was rejected by the U.S. PTO. As a consequence, Complainant
does not enjoy any presumption of secondary meaning for its claimed service
mark, and shoulders the burden of establishing distinctiveness, assuming that
the name is not generic (75 F. 3d at 1156). The successful registration of a
trademark or service mark is not a condition to ownership of rights in that
mark either as a matter of invoking protection against infringement, or as a
matter of pursuing a claim against abusive domain name registration. However,
under U.S. trademark law, only registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning.
Complainant’s primary evidence of secondary meaning and distinctiveness is
a high volume of catalogue distribution over a substantial period of time using
the name "Pet Warehouse". It must be noted that when Complainant filed
its service mark application with the U.S. PTO, it transmitted a copy of its
catalog cover showing use of the name "Pet Warehouse" (Response, Exhibit
F). Apparently, the U.S. PTO did not find the evidence of the catalog or its
distribution convincing. Nor does the Panel. Distinctiveness and secondary meaning
are demonstrated by showing that the relevant public associates a service with
a particular source. Evidence of the source’s publication of its name does not,
standing alone, prove that connection.
Complainant has also indicated that several of its customers have complained
about having difficulty locating its website because Complainant cannot use
"petwarehouse.com" as its domain name (see Parties’ Contentions,
supra). This may indicate that several individuals connect Complainant’s
name with its business as a source of services. It may also indicate that some
consumers view "petwarehouse.com" as a good, descriptive URL for Complainant’s
business. In any event, evidence of a few consumers experiencing difficulty
locating what is argued to be a major nationwide source of supply does not convince
the Panel that the relevant public strongly associates "Pet Warehouse"
with a specific source of services.
As the third factor influencing the Panel’s decision, the Respondent has furnished
substantial evidence that the name "Pet Warehouse" is in use in the
United States by a number of businesses that presumably compete with Complainant
(Response, Exhibit E). At least two of these businesses (one named "Pets
Warehouse") allegedly commenced operation prior to Complainant (Response,
Exhibits C and D). Respondent has presented evidence of well over a dozen U.S.
businesses that use the words "pet warehouse" as at least part of
their name (Response, Exhibit E). In addition, Respondent has presented substantial
evidence in the form of reprints of news reports that the term "pet warehouse"
is commonly used in American English as a generic term to refer to large pet
supply stores (Response, Exhibit B). Complainant has not presented the Panel
with evidence of prior attempts to enjoin others from using what it claims to
be its exclusive service mark, or the results of those efforts. It has not presented
evidence that would indicate that consumers of pet supplies connect the words
"pet warehouse" with itself, as opposed to the numerous other "pet
warehouse" stores in the United States, or with the concept of the "pet
warehouse" as a type of business entity.
The Complainant has, in sum, failed to establish that the words "Pet Warehouse"
have acquired a secondary meaning (assuming that the term is not generic) such
that the relevant public exclusively associates the words with it as a source
of services. SeeTwo Pesos, Inc. v. Taco Cabana, Inc. 505 U.S.
763, 766 and note 4.
Complainant has failed to establish rights in the service mark "Pet Warehouse"
for the purposes of satisfying Paragraph 4(a)(i) of the Policy. The Panel therefore
rejects its claim of abusive domain name registration against Respondent, and
denies its request that the Panel ask the registrar to transfer the domain name
"petwarehouse.com" from Respondent to it.
It is important to note that this Panel has not made a determination that the
name "Pet Warehouse" is generic or descriptive without secondary meaning.
Rather, based on the record before us, serious questions as to whether Complainant
has any proprietary rights require us to reject Complainant’s claim. The ultimate
decision as to whether Complainant does or does not have proprietary rights
is better left to a court or trademark office tribunal.
The Panel denies Respondent’s request for a determination that Complainant
has engaged in reverse domain name hijacking within the meaning of Paragraph
15(e) of the Policy. Complainant has presented substantial evidence of its use
of the name "Pet Warehouse" in commerce, and it has an understandable
interest in seeking to control the use of that name by others. Although Complainant
has not demonstrated its exclusive right to that name, neither has it evidenced
bad faith by initiating these proceedings.
7. Decision
Complainant has failed to establish rights in the service mark "Pet Warehouse"
for the purposes of satisfying Paragraph 4(a)(i) of the Policy. The Panel therefore
rejects its claim of abusive domain name registration against Respondent, and
denies its request that the Panel ask the registrar to transfer the domain name
"petwarehouse.com" from Respondent to it.
Frederick M. Abbott
Presiding Panelist
David H. Bernstein David Kelly
Panelists
