United Pet Group, Inc. v. Texas International Property Associates
Case No. D2007-1039
1. The Parties
The Complainant is United Pet Group, Inc., Islandia, New York, United States of America, represented by Kilpatrick Stockton, LLP, New York, New York, United States of America.
The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by the Law Office of Gary Wayne Tucker, Dallas, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <eightinonepetproducts.com> is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2007. On July 19, 2007, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name at issue. On July 25, 2007, Compana LLC 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”), 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 Respondent of the Complaint, and the proceedings commenced on July 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2007. The Response was filed with the Center on August 15, 2007.
The Center appointed Richard Hill as the sole panelist in this matter on September 13, 2007. 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 Panel will not make any findings of fact, for the reasons explained below.
5. Parties’ Contentions
A. Complainant
Complainant is a leading global manufacturer and marketer of specialty pet supplies for cats, dogs, fish, birds and small animals. Complainant manufacturers and markets a diversified product offering through a family of well known brands and businesses in the pet product industry, including, by way of example, 8 IN 1, DINGO, NATURE’S MIRACLE, AQUARIUM SYSTEMS, JUNGLE TALK, TETRA, MARINELAND, LAZY PET, and FIRSTRAX.
One of Complainant’s most well known brands and businesses of pet products and supplies is its EIGHT IN ONE PET PRODUCTS division, which is also known as simply 8 IN 1 or EIGHT IN ONE. Founded in 1888, EIGHT IN ONE PET PRODUCTS is not only one of the most enduring pet product companies in the world, it is one of the most multi-faceted. The company started with only a bird seed product known as 8 in 1 Song Food, and has grown since that time to offer a comprehensive and diversified product line of items for dogs, cats, birds and small animals. Currently, EIGHT IN ONE PET PRODUCTS manufactures and produces over 1,200 different pet products and supplies.
Prior to merging with and becoming a division of Complainant in 1997, EIGHT IN ONE PET PRODUCTS operated since 1888as an independent company known as EIGHT IN ONE PET PRODUCTS, INC. Since that time and to this day, the company continues to operate under the trade name and mark EIGHT IN ONE PET PRODUCTS, as well as its short form 8 IN 1 or EIGHT IN ONE, and is commonly known by these names and marks in the trade and to consumers of pet products and supplies. Complainant owns a registration for the mark EIGHT IN ONE in Japan. Complainant owns and uses the domain name <eightinonepet.com> to deliver information concerning Complainant’s EIGHT IN ONE PET PRODUCTS division.
Respondent is a known cybersquatter with a pattern of registering as domain names the trade names and marks, or variations thereof, of third-parties. Indeed, Respondent has been found to have registered and used domain names in bad faith by numerous panels. Many of the UDRP decisions involving Respondent have specifically discussed Respondent’s bad faith registration of domain names containing the trademarks and trade names of third parties, or variations thereof, and Respondent’s use of those domain names to direct web traffic to websites from which Respondent derives a financial benefit.
Respondent’s Domain Name is identical to and confusingly similar to Complainant’s EIGHT IN ONE PET PRODUCTS, and EIGHT IN ONE names and marks.
Respondent cannot demonstrate or establish any legitimate interest in the Domain Name. Where, as here, Complainant’s marks are so well known and recognized, there can be no legitimate use by the Respondent.
Respondent has registered and is using the Domain Name solely for commercial gain. When an Internet user types into a browser the address of the Domain Name, the user is connected to a search engine and linking portal. The user also receives a variety of “popup” and “popunder” advertising. The search engine and linking portal located at the Domain Name displays a number of links that offer pet products, supplies and services unrelated to Complainant such as “pet insurance”, “petmeds”, “pet supply”, “dog kennel”, “dog breeders”, and other various pet related items. There is also a link and reference featuring Complainant’s EIGHT IN ONE PET PRODUCTS name and mark. However, rather than linking to a legitimate website of Complainant, the web pages accessed from the link offer and/or advertise goods and services unrelated to Complainant or Complainant’s products or services. Respondent derives a financial benefit from the web traffic that is diverted through the Domain Name and from the “popup” or “popunder” advertising that is displayed in connection with the Domain Name. The “popup” or “popunder” advertising delivery appears to be operated by Casale Media, an online advertising network company that pays the domain name holder, as “publisher”, revenue for traffic generated through the domain name, while Respondent derives its click-through revenue from Hitfarm.com, another online advertising network company.
Since the EIGHT IN ONE PET PRODUCTS and EIGHT IN ONE names and marks are well known and Respondent has no rights in them, the only reason why Respondent could have wanted to register and use the Domain Name was not for any legitimate noncommercial or fair use purpose, but rather because it wanted to use Complainant’s well known names and marks in order to profit from the web traffic they would generate from the association and good will between the Domain Name and Complainant’s well-known names and marks.
As set forth above, Respondent’s bad faith is established by Respondent’s well established pattern of registering and using domain names incorporating the trade names and/or marks, or variations thereof, of third parties to redirect Internet users to linking portals for profit. As a three person panel aptly observed in finding bad faith on the part of a respondent with multiple prior UDRP decisions against him, “the fact that Respondent [has a] long history of abusive cybersquatting can leave no doubt as to whether his behavior in this instance was the product of inadvertence”. See Amazon.com, Inc. v. Michele Dinoia c/o SZK.com, FA0508000536549 (Nat. Arb. Forum September 26, 2005).
B. Respondent
The pertinent part of the Response is reproduced verbatim below:
Had Complainant contacted Respondent prior to the filing of this instant action, Respondent would have transferred the domain to Complainant. As such, Respondent agrees to the relief requested by the Complainant and will, upon order of the Panel, do so. This is not an admission to the three elements of 4(a) of the policy but rather an offer of “unilateral consent to transfer” as prior Panels have deemed it.
6. Discussion and Findings
The Panel notes that the Response appears to have been sent to the Center on August 15, 2007, being the specified due date for submission of Response, but that it was received by the Center on August 16, 2007. In such circumstances, the Panel is satisfied that the Response was, on balance, timely filed. Had it been necessary, in accordance with Rules 10(b) and 10(c), the Panel would nevertheless have extended the deadline for the Response by a day in order to admit a late Response. However this may be, the Panel will in any case consider, and has so considered, the Response. See e.g. Univ. of Alberta v. Katz,
WIPO Case No. D2000-0378.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
In this case, the parties have both asked for the domain name to be transferred to Complainant. This Panel holds that in this UDRP proceeding, in accordance with a general legal principle governing arbitrations as well as national court proceedings, that it would not be appropriate for it to act nec ultra petita nec infra petita, that is, that it should not here issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel recognizes the common request, and finds it unnecessary in the circumstances to make findings of fact or of compliance (or not) with the three requisite elements of the Policy.
A similar conclusion was reached by the Panel in Boehringer Ingelheim International GmbH v. Modern Limited - Cayman Web Development, FA0211000133625(Nat. Arb. Forum, January 9, 2003) and in Alstyle Apparel/Active Wear v. John Schwab d/b/a Alstyle de Mexico, FA0307000170616(Nat. Arb. Forum, September 5, 2003).
A. Identical or Confusingly Similar
For the reasons indicated above, the Panel need not consider this element of the Policy.
B. Rights or Legitimate Interests
For the reasons indicated above, the Panel need not consider this element of the Policy.
C. Registered and Used in Bad Faith
For the reasons indicated above, the Panel need not consider this element of the Policy.
7. Decision
For all the foregoing reasons, and given the common request of the parties, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <eightinoneproducts.com> be transferred to Complainant.
Richard Hill
Sole Panelist
Dated September 25, 2007
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