The Complainant is Hill’s Pet Nutrition, Inc., Topeka, Kansas, United States of America, represented by Dorsey & Whitney LLP, of New York, New York, United States of America.
The Respondent is Registrant, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <hillspetfood.com> (the “Domain Name”)
is registered with Central Registrar, Inc. dba DomainMonger.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2004. On October 7, 2004, the Center transmitted by email to Central Registrar, Inc. dba DomainMonger.com a request for registrar verification in connection with the Domain Name at issue.
On October 7, 2004, Central Registrar, Inc. dba DomainMonger.com transmitted by email to the Center its verification response confirming that the Respondent was listed as the registrant and provided the contact details for the administrative, billing, and technical contacts. A hard copy of the Complaint was received on October 11, 2004, and on October 12, 2004, a formal Compliance Review Checklist was deemed satisfactory.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 1, 2004. The Respondent did not submit any response. Accordingly, the Center sent a notice of the Respondent’s default to the Respondent on November 2, 2004.
The Center appointed James G. Fogo as the sole panelist in this matter on November 11, 2004. 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 language of the proceedings is English.
4. Factual Background
The Complainant, its predecessors in interest and its related companies have used and registered the trademark HILL’S and variations including this trademark in the United States and many countries throughout the world. This trademark is applied to goods including pet food, dietary substances for animals and veterinary preparations.
The trademark HILL’S was first registered in the United States Patent and Trademark Office (“PTO”) under Registration Number 955,342 on March 13, 1973, in respect of dog and cat food. The date of first use of the trademark in commerce was identified as April 7, 1937.
HILL’S was further registered in the United States PTO under Registration Number 1,417,169 on November 18, 1986, in respect of dietary animal foods. The date of first use of this trademark in commerce was identified as June 1978.
A third registration of HILL’S in the United States was recorded under Registration Number 2,060,554 on May 13, 1997, in respect of foodstuffs for animals. The date of first use in commerce was identified as April 7, 1937.
The Complainant has provided convincing evidence that it is the owner of each of these trademarks and each has become incontestable at this point of time.
Further, the Complainant’s products are sold and promoted worldwide under the trademark HILL’S which has been registered prior to 2000 in more than thirty countries. In addition many other trademarks of the Complainant include HILL’S per se and as the principle element of many a compound mark, for example HILL’S PRESCRIPTION DIET. A list of the Complainants worldwide trademarks is attached as Annex 3, pages 7-10 to the Complaint. These pages include trademarks registered in China and Hong Kong prior to the date of registration of the Respondent.
The Complainant actively uses the domain name <hillspet.com> to host a website that offers information concerning Complainant’s products sold and promoted in the United States and worldwide under the trademark HILL’S. In addition, the Complainant or its related companies own registrations for the domain names <hillsdirect.com>, <hillsretailorder.com>, <hillsinternational.com>, <hills.biz> and <hills.info> which embody the Compainant’s HILL’S trademark. See Annex 5 to Complaint.
The Complainant has spent millions of dollars annually in advertising and promoting products sold under the HILL’S trademark. As a result its trademark has become well known, is recognized worldwide and has a high reputation among consumers , veterinarians and retailers throughout the world.
According to registrar’s WHOIS report, the Respondent registered the Domain Name <hillspetfood.com> on November9, 2003.
The Domain Name resolves to the website at “www.hillspetfood.com”.
These factual findings are taken from the Complaint. In the absence of any
response from the Respondent, the Panel presumes their accuracy.
5. Parties’ Contentions
A. Complainant
Confusingly Similar
The Complaint contends that the registered Domain Name <hillspetfood.com> is confusingly similar to Complainant’s HILL’S trade mark.
The primary element of the Domain Name <hillspetfood.com>(i.e., “hills”) is identical to the Complainant’s HILL’S trademark. The only difference between the Domain Name and the Complainant’s trademark is the addition of the generic term “pet food”. The addition of this generic term to form the Domain Name <hillspetfood.com> actually increases the likelihood of confusion because the generic term “pet food” describes the goods offered by the Complainant. The absence of the apostrophe is not of such character as to distinguish a domain name from a protected mark.
No Rights or Legitimate Interests
The Complainant has prior rights in the trademark HILL’S which precedes the Respondent’s Domain Name by as least as much of 60 years. and is well known worldwide.
The Respondent cannot demonstrate that it has any rights or legitimate interests in the Domain Name. The Complainant has not authorized the Respondent to use the HILL’S trademark.
The Respondent has no rights or legitimate interests in the Domain Name because (a) the Respondent is not commonly known by the disputed domain name, (b) the Complainant has never licensed the trademark to the Respondent or otherwise granted the Respondent permission to use the mark in any respect, (c) the Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, nor made preparation to do so.
Registered and Used in Bad Faith
The Complainant states that the name HILL’S is recognized as an internationally known company in the field of pet foods, dietary substances for animals and veterinary preparations. The Complainant holds that there is no way that the Respondent may not have been aware of the trademark and the products of the Complainant in November of 2003 when the Respondent registered the Domain Name.
Moreover the Complainant alleges that the Respondent has made use of the Domain Name in bad faith when the Respondent used the Domain Name to operate a pay-per-click website to derive substantial revenue from Internet advertising. By creating an online directory at the website at “www.hillspetfood.com”, the Respondent has used this website to attract Internet traffic and include links to sellers of pet food and supplies identical or similar to the Complaint’s goods. The result is likely to be confusion of consumers who would be likely to believe that the Respondent was affiliated or endorsed by the Complainant. (See the pages from the Respondent’s website attached as Exhibit 8 to Complaint.
B. Respondent
The Respondent did not reply to the Complainant’s
contentions.
6. Discussion and Findings
Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based of the Complaint. No exceptional circumstances have been brought to the Panel’s attention, and it will proceed to make the findings below based upon the material contained in the Complaint.
In order for the Panel to decide to grant the remedy requested by the Complainant under the Policy, it is necessary that the Complainant prove, as required by paragraph 4(a) of the Policy, that:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant’s right in respect of the trademarks HILL’S has been established. The three HILL’S trademarks are both distinctive and famous. The earliest HILL’S trademark was first used in 1937, and registered in the United States in 1973. Initially pet foods were introduced with veterinary preparations, dietary substances for animals and agricultural products. Complainant has registered its trademarks in many countries.
In the present case, the similarity of the Domain Name with the mark is obvious. The primary element of the Domain Name, <hillspetfood.com> (i.e. "hills”) is identical. The addition of the generic term “pet food” would not avoid confusion. Indeed, the addition of the words “pet food” describes the goods offered by the Complainant. The addition increases the likelihood of confusion. Prior decisions have held that absence of an apostrophe in the Domain Name does not prevent confusion from being established.
The panel concludes that the Complainant has proven that the Domain Name in dispute is identical or confusingly similar to the Complainant’s three trademarks and common law rights.
B. Rights or Legitimate Interests
The Respondent has failed to file a Response and thereby has not asserted any rights or legitimate interests. However, the Complainant must establish that the Registrant has no rights or legitimate interests in the Domain Name.
The Panel accepts that in the field of pet food, dietary animal foods and foodstuffs, the Complainant’s name HILL’S is widely known after more than 60 years of use. The Panel concludes that in placing the words “hills” and “petfood” side by side in a domain name, the Respondent knew well that it was using a valued trademark. By adding the word “petfood”, generic term, the Respondent increased the likely confusion in the Domain Name.
The Complainant has never licensed or otherwise permitted the Respondent to use the domain name in issue. It seems clear that the Respondent has used its Domain Name to attract and misleadingly divert persons to a website and so to make money which also would tarnish the Complainant’s trademarks.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
Based on evidence submitted by the Complainant that has not been challenged,
the Panel accepts that the Respondent intentionally adopted a domain name that
would attract, for commercial purposes, creating confusion with the Complainant’s
trademarks. Users who use the Domain Name are forwarded to a website for commercial
gain. There is no basis for suggestion of adoption of the Domain Name as a matter
of accidental choice. The Panel concludes that the Respondent acted in bad faith
in registering and using the Domain Name.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,<hillspetfood.com> be transferred to the Complainant.
James G. Fogo
Sole Panelist
Date: November 26, 2004
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