The Complainant is Royal Canin, of Aimargues, France, represented by Cabinet Dreyfus & Associés, France.
The Respondent is Bob Singh of Norfolk, Nebraska, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <royalcanintreats.com> which is registered with Schlund + Partner.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) via email on June 27, 2008 and on July 4, 2008 as a hardcopy. On June 30, 2008, the Center transmitted by email to Schlund + Partner a request for registrar verification in connection with the disputed domain name. The same day, Schlund + Partner 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 the Respondent of the Complaint, and the proceedings commenced on July 8, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 28, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on July 29, 2008
The Center appointed Christian Schalk as the sole panelist in this matter on August 13, 2008. 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 Panel agrees with the Center's assessment concerning the Complainant's compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the Rules.
The Panel has not received any requests from the Complainant or the 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 language of the proceedings is English.
4. Factual Background
The Complainant, founded in 1967, is a manufacturer and supplier of dog and cat food. Its products are sold through breeders, veterinary practices and specialized distribution outlets in 90 countries including the United States of America (U.S.). In 2006, the Complainant's worldwide revenues were over one billion Euros (80 % outside France).
In the U.S., the Complainant sells a variety of premium pet foods among others under brands such as “Royal Canin Size Nutrition for dogs” and “Royal Canin Feline Nutrition”. The Complainant owns at least 35 trademark registrations incorporating the mark ROYAL CANIN, for instance,
- IR trademark registration No. 343136 ROYAL CANIN, registered on January 29, 1968, covering goods in Intl. Class 31;
- IR trademark registration No. 471300 ROYAL CANIN, registered on December 8, 1982, covering goods in Intl. Class 31;
- IR trademark registration No. 535930 ROYAL CANIN SPORT, registered on September 3, 1989, covering goods in Intl. Class 31;
- IR trademark registration No. 659251 ROYAL CANIN FELINOTECHNIQUE INTERNATIONAL, registered on July 16, 1996, covering goods in Intl. Class 31;
- IR trademark registration No. 844779 ROYAL CANIN FELINE HEALTH NUTRITION, registered on February 22, 2005, covering goods in Intl. Class 31;
- U.S. trademark registration No. 1398736 ROYAL CANIN, registered on June 24, 1986, covering goods in Intl. Class 31;
- U.S. trademark registration No. 2785758 ROYAL CANIN, registered on November 25, 2003, covering goods in Intl. Class 31;
- U.S. trademark registration No. 3169323 ROYAL CANIN FELINE HEALTH NUTRITION, registered on November 7, 2004, covering goods in Intl. Class 31;
- U.S. trademark registration No. 3298747 ROYAL CANIN VETERINARY, registered on September 25, 2007, covering goods in Intl. Class 31.
The disputed domain name was registered on September 27, 2007 using initially a privacy service. The registrant appeared as “1&1 Internet Inc.”. The disputed domain name was directed to a website providing information on the Complainant's products and showing the trademark ROYAL CANIN and the Complainant's logo. Some of the Complainant's products were offered for sale.
In order to obtain the identity of the registrant of the disputed domain name, the Complainant sent on October 24, 2007 a cease and desist letter to 1&1 Internet Inc. who made available the Respondent's contact information to the Complainant.
The Complainant sent then a cease and desist letter to the Respondent on December 19, 2007 and asked for an amicable transfer of the disputed domain name. The Respondent then directed the disputed domain name to a blank web page. However, he never answered the Complainant's cease and desist letter despite several reminders.
5. Parties' Contentions
A. Complainant
The Complainant alleges that the disputed domain name is identical or at least confusingly similar to his ROYAL CANIN trademarks. It argues that the addition of the term “treats”, a common word in the English language, does not serve to distinguish this domain name from the Complainant's trademarks. In this context, the Complainant cites America Online, Inc. v. East Coast Exotics,
WIPO Case No. D2001-0661, and Groupe Auchan v. Jakub Kamma,
WIPO Case No. D2007-0565, where the panel had found that adding a generic word is insufficient to give any distinctiveness to the disputed domain name.
The Complainant alleges further that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant argues that the Respondent is not affiliated with the Complainant in any way and that he has not been authorized to use and register the Complainant's trademarks or domain names which incorporate such trademarks. Furthermore, the Respondent has no prior rights in the domain name and is also not known by the term “Royal Canin” or similar terms. It is also the Complainant's opinion that the mere reproduction of the well-known trademark ROYAL CANIN constitutes an obvious intent to misleadingly divert Internet users to the Respondent's website. For all these reasons the Complainant believes that the Respondent could not “reasonably pretend that it was intending to develop a legitimate activity.”
Moreover, the Complainant alleges that the disputed domain name was registered and is being used in bad faith by the Respondent. The Complainant argues that the Respondent must have been aware of the Complainant when he registered the disputed domain name given the fact that the Complainant is well-known in the U.S., where the Respondent lives. In this context, the Complainant cites ACCOR v. Eliah Zusstone,
WIPO Case No. D2006-0362, and Expedia Inc. v. European Travel Network,
WIPO Case No. D2000-0137, where the panels found that the respondent's knowledge of the complainant's trademark when he registered the disputed domain name constituted evidence of bad faith domain name registration. The Complainant believes also, that a mere search on Google or other search engines for the terms “Royal Canin” or “Royal Canin treats” would have revealed the existence of the Complainant to the Respondent.
In the Complainant's view the disputed domain name is also being used in bad faith because it has been directed to a website providing information of the Complainant's products and displaying the ROYAL CANIN trademark in order to attempt to attract, for commercial gain, Internet users by creating likelihood of confusion with the Complainant's trademarks. In this context, the Complainant believes, that the fact that the disputed domain name has been obviously connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith use. In this context, the Complainant cites Sanofi-Aventis v. Nevis Domains LLC,
WIPO Case No. D2006-0303, to support his arguments. The Complainant points out further, that only when the Complainant sent a cease and desist letter to the Respondent, the website changed to a blank page. The lack of any response to this letter by the Respondent constitutes in his view an additional evidence of bad faith.
B. Respondent
The Respondent did not file a Response or otherwise reply to the Complainant's contentions.
6. Discussion and Findings
The Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law it deems applicable (paragraph 15(a) of the Rules). Pursuant to paragraph 4(a) of the Policy, a domain name can be transferred only where the Complainant has proven that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
It is essential to UDRP proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings initiated against him, and a reasonable opportunity to respond (paragraph 2(a) of the Rules).
In this case, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a Response is not due to any omission by the Center.
Since the Respondent has not contested the allegations of the Complainant, the Panel shall decide on the basis of the Complainant's submissions, and all inferences that can reasonably be drawn therefrom (see Bayerische Motorenwerke AG. v. Dariusz Herman, Herman DOMCREATE et co., WIPO Case No. DNAME2004-00001).
A. Identical or Confusingly Similar
The Complainant has established trademark rights in ROYAL CANIN. Therefore, it is clear that the disputed domain name is not identical to any of the Complainant's trademarks.
However, the Panel finds the disputed domain name to be confusingly similar with the Complainant's trademarks. As indicated by the Complainant and in accordance with many decisions rendered under the Policy, the addition of descriptive terms to a trademark is generally not a distinguishing feature (see Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis,
WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan,
WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims,
WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith,
WIPO Case No. D2004-0565 and
WIPO Case No. D2004-0624 and Toyota France and Toyota Motor Corporation v. Computer-Brain,
WIPO Case No. D2002-0002.
Furthermore, the term “treats” stands for a product, which is developed by the Complainant (treats for dogs). Therefore, it is likely that the disputed domain name could be understood by Internet users finding <royalcanintreats.com> on search engines or elsewhere as providing a link to a website belonging to the Complainant or being sponsored by the Complainant and therewith increases the likelihood of confusion (see also Koninklijke Philips Electronics N.V. v. Anpol,
WIPO Case No. D2001-1151, and Koninklijke Philips Electronics N.V. v. Jaaska (or Jääskä) Kaketti,
WIPO Case No. D2001-0231).
B. Rights or Legitimate Interests
According to the material brought before the Panel which established the Complainants prima facie case under paragraph 4(a)(ii) of the Policy, and in the absence of a Response to the Complaint, the Panel finds that the Respondent cannot demonstrate rights or legitimate interests in the disputed domain name for the following reasons:
The Respondent has not provided any evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Especially, there is no evidence that the Respondent is known by the disputed domain name. The Respondent is also neither affiliated with the Complainant nor has the Complainant never granted the Respondent a license to use its trademark.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith in violation of the Policy, paragraph 4(a)(iii). The Policy paragraph 4(b) sets forth four non-exclusive criteria for the Complainant to show bad faith registration and use of domain names:
(1) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(2) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(3) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location of a product.
According to the material brought before the Panel and in the absence of a Response to the Complaint, the Panel finds that the disputed domain name has been registered and used by the Respondent in bad faith in accordance with paragraph 4(b)(iv) of the Policy for the following reasons:
It is a well established principle under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia,
WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak,
WIPO Case No. D2003-0022) and under the Policy (see Section 2), that the domain name registrant represents and warrants to the registrar that, to its knowledge the registration of the domain name will not infringe the rights of any third party. Given the fact that the ROYAL CANIN trademarks are specifically used at the website linked to the disputed domain name at issue, the Panel finds that it is very unlikely that the Respondent would register, acquire and use such a domain name which fully contains the Complainant's mark and a term descriptive of goods and services offered by the Complainant without being aware of the Complainant's trademark (see Liseberg AB v. Administration Local Manage Technical,
WIPO Case No. D2003-0864; ADT Services A.G. v. Alarm Services, Cencom Inc., Safeguard America, Saveonmyalarm.com, WIPO Case No. D2007-0459). Therefore, the Panel believes that the Respondent registered the disputed domain name in bad faith.
The Panel finds further, that the Respondent is also using the disputed domain name in bad faith. Internet users, searching for products of a specific company, for instance, treats manufactured by the Complainant, do often type freestyle addresses that combine trademarks and descriptive words (for instance, “Royal Canin” and “treats”) hoping to narrow down their search results. The website to which the disputed domain name resolved not only offered for sale the Complainant's products but uses also the distinctive graphical elements of the Complainant's company logo. Links on this website, like “About Royal Canin” and “Canin Products”, let Internet users also believe that this was a website maintained by the Complainant or by a third person who is somehow linked with the Complainant. Therefore, given the nature of the website deployed by the Respondent, the only purpose of having registered and subsequently used the disputed domain name was, to attract – for commercial gain – Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's trademark and services and thus to take advantage also of the Complainant's trademark and its reputation.
The website closed after the Complainant sent the cease and desist letter to the Respondent but the Respondent has indeed already shown its purposes of using the disputed domain name to harm the business of the Complainant by diverting and causing confusion to both potential and current customers (see also Habib Bank AG Zurich v. Dave West,
WIPO Case No. D2004-0041).
For all these reasons and given the fact that the Respondent remained silent to the Respondent's cease and desist letters and its various reminders, the Panel finds that the disputed domain name has been registered in bad faith and is being used in bad faith.
In this context, the Panel agrees also with the findings of the panel in Sanofi-Aventis v. Nevis Domains LLC,
WIPO Case No. D2006-0303 that the registration and use of a domain name which is so obviously connected with such a widely-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.
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 <royalcanintreats.com> be transferred to the Complainant.
Christian Schalk Sole Panelist
Dated: August 27, 2008
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