The Complainant is PETSENSE, Inc., of Scottsdale, Arizona, United States of America, represented by the Law Office of Michael P. Eddy, United States of America.
The Respondent is Wendy Garrett of Kansas, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <petsense.com>, is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on April 2, 2010. On April 6, 2010, the Center transmitted by email to GoDaddy.com, Inc., a request for registrar verification in connection with the disputed domain name. On April 8, 2010, GoDaddy transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant, providing contact details, and other information pertaining to the registration. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 April 8, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 28, 2010. The Response was received by the Center on April 28, 2010.
The Center appointed Debra J. Stanek as the sole panelist in this matter on May 4, 2010. 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 owns United States (U.S.) federal trademark registrations for the marks PET ¢ENTS, PETSEN$E, and PETSENSE for rawhide chews for dogs and retail store services.
The domain name <petsense.com> was registered in July 2002. It currently directs visitors to a blog site entitled “PetSense ... where the World Revolves around Pets.” As well as the blog itself, the site includes links to third party sites, including those that offer products for pets.
5. Parties' Contentions
A. Complainant
(1) The domain name is identical or confusingly similar to Complainant's marks.
Complainant owns U.S. federal trademark registrations for its “petsense” marks. It owns registrations for PET ¢ENTS for “rawhide chews for dogs” (issued in 1997) and for PETSEN$E and PETSENSE (issued in 2006 and 2007) for “retail pet supply store services.” Complainant operates an Internet web site at “www.petsenseoutlet.com,” where it promotes PETSENSE products and services. Consumers associate the term “petsense” in a domain name with Complainant's services.
The <petsense.com> domain name is identical to the PETSENSE mark and is confusingly similar to the PET ¢ENTS mark.
(2) Respondent has no rights to or legitimate interests in respect of the domain name.
Respondent is not named or commonly known as “PetSense” nor is she licensed or authorized to use the PETSENSE marks.
After notice of Complainant's rights to the mark, Respondent redirected and continues to redirect visitors to the domain name to “www.petsense.blogspot.com.”
Before this dispute, the domain name was offered for sale. The domain name was transferred to Respondent in 2009, after which it was used in order to divert consumers of pet products to competing sites with the use of multiple pet product advertisements positioned on the website.
Complainant sent two cease and desist letters to the prior owner of the domain name; the prior owner employed Respondent to maintain the prior owner's website.
(3) Respondent has registered and is using the domain name in bad faith.
The <petsense.com> domain name was registered and then subsequently transferred to Respondent many years after the PET ¢ENTS and PETSENSE marks were registered and after the PET ¢ENTS and PETSENSE marks had become well-known to consumers of pet products.
Prior to Respondent's rights, the domain name was owned by a veterinarian operating a small veterinary clinic. A PetSense representative contacted the veterinarian, but received no response. At that time the domain name resolved to a “parking” page. Subsequently, it resolved to a web developer's site. When the representative contacted the web developer, it responded that the veterinarian had gone out of business and owed the developer USD1,300.
Complainant alleges that “[t]he group which included the Respondent agreed to negotiate the sale of the domain name and Complainant attempted to work to complete the transaction and transfer of the domain name to Complainant. The negotiations broke down and Complainant's representative lost contact with the web developer group.” Complainant next attempted, unsuccessfully, to secure the domain name using the registrar as an intermediary. Complainant's offers for the domain name, in the amounts of USD400 and USD2,500 were refused by Respondent.
In 2008, Complainant sent a cease and desist letter to the prior owner of the domain name. According to the Complaint, “[t]he prior owner of the domain name responded and agreed to remove all infringing links appearing on the PetSense.com website. A follow up letter from Complainant's counsel to the prior owner confirmed that no infringing material would be placed on the website.”
In the first half of 2009, the domain name was transferred to Respondent. Respondent had actual notice of Complainant's marks because she had been the web developer for the prior owner and made changes to the site in response to Complainant's cease and desist letters.
Respondent now uses the domain name to direct visitors to a web page that includes commentary along with commercial advertising links to third party advertisers and companies, including offers from Complainant's competitors. Respondent receives direct and / or indirect monetary benefit from the advertisements on this site.
Additionally, Respondent agreed to sell the rights to the domain name but negotiations fell apart when the amount required by Respondent was far in excess of Respondent's out of pocket expenses. This, along with the subsequent transfer of the domain name from the prior owner to Respondent in 2009, well after the registration of Complainant's marks and over a year after actual notice of this dispute constitutes bad faith.
B. Respondent
The <petsense.com> domain name was registered in July 2002. It is not affiliated with the PetSense company, which was founded in 2005.
The mission of the “www.petsense.com” web site is to serve as a portal, offering a mix of traditional and alternative sources of information, resources, insight, viewpoints, connections and support to help animal lovers - whether those animals are pets or found living in the wild.
Respondent met veterinarian Dr. Randy McCallum after she acquired a dog. Dr. McCallum offered alternative treatments on pets (e.g., acupuncture and chiropractic). Respondent was pleased with the results of these treatments.
Respondent has a background in radio as a news broadcaster and reporter and teamed up with Dr. McCallum in spring of 2002 to create a radio program that provided a traditional and alternative view on pet care. The program was called “Dr. Randy's Pet Sense” and was broadcast on KMBZ Newsradio 980 AM. Respondent created the title for the program and, at the same time, the <petsense.com> domain name.
Respondent wanted a name that would also have meaning if it were used in a sentence and brainstormed with a friend to combine two highly recognizable words that worked together and described what they we were trying to communicate: the program was about pets and one of its basic concepts was that each person has an innate ability to connect information about animals through a sixth “sense.”
The use of “petsense” was intended to communicate an ability to gain useful information or insight about animals in an unconventional or alternative manner; the ability to intuit a communication from the animal.
The Response states that the name was available, noting that it was being used by a Canadian magazine and being used as two separate words in the name of an equine products company in Arizona, and also that the domain name was available.
Respondent asserts that after initial dealings with a web developer that was paid but did not deliver a web site, she contacted another web developer who designed a site that included content and services devoted to helping people and pets. In 2003, a “shopping cart” for e-commerce was added.
Respondent administers the web site and provides its content. Dr. McCallum registered the domain name in 2002, incorporating it into the name of his veterinary practice.
The Response asserts that Dr. McCallum's practice was thriving by 2005 when Complainant's retail business opened in Colorado. Sometime in 2005, Respondent became aware that another company was using the name PetSen$e, when she received a telephone call inquiring about job opportunities with that company.
Dr. McCallum's veterinary practice closed in 2006 and the website was put on “hiatus” to avoid confusion from former clients. Respondent continued to want to use the “www.petsense.com” web site as a portal to provide the content described above. Currently, it directs to a blog on a stand-alone site; however, she would like to expand the web site when she has the funds to support it.
Respondent has never used the dollar and cents symbols that are featured in Complainant's marks in her domain name. The web site does not focus exclusively on product and merchandise sales and is instead content-driven.
Complainant recently registered “PetSense”, using Respondent's unique spelling, on Twitter and Facebook.
Complainant also points to information available on the Internet concerning Complainant's history, including:
The PetSense chain of retail stores was founded in 2005. At that time, a simple web search would have shown that the “www.petsense.com” website included an event calendar, adoptable pets, and animal health and welfare content, and a shopping cart feature. Complainant expanded to the Internet in 2006 when it launched its retail site.
Complainant has been advised that the <petsense.com> domain name is not for sale.
6. Discussion and Findings
In order to prevail, Complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b).
A. Identical or Confusingly Similar
Complainant must establish that the disputed domain name is either identical or confusingly similar to its mark. Complainant has established rights in the mark PETSENSE by virtue of its U.S. federal trademark registration.
Complainant has also established that the disputed domain name is identical to the PETSENSE mark. The disputed domain name consists of Complainant's mark in its entirety, with the addition of the top level domain “.com,” and use of lower case. Such differences are not relevant in determining identity or confusing.
The Panel concludes that Complainant has established that the disputed domain name is identical or confusingly similar to Complainant's mark.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the domain name by making a primafacie showing that respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Question 2.1 (once complainant makes prima facie case, respondent has burden of showing rights or legitimate interests in the domain name).
Paragraph 4(c) of the Policy sets out the following examples:
(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.
The Panel need not decide whether Complainant has met its burden on this element, as Respondent has shown some rights or legitimate interests in the <petsense.com> domain name. Complainant's argument on this element and the element of bad faith are somewhat confused, glossing over the precise chronology of events1 and containing assertions that are not supported by evidence2.
Complainant's first cease and desist letter was sent to the prior registrant of the site in November 2008. By that time, the domain name was already being used – as is acknowledged in the cease and desist letter itself – to redirect visitors to Respondent's blog site. The blog site appears to be a legitimate site that contains significant content along the lines outlined in the Response. The archive on the site shows such use dating back to August 2007 and confirms Respondent's assertion that, even when the <petsense.com> domain name was held by the prior registrant, she administered the site and provided the content for the blog.
Moreover, Respondent's submission asserts that long prior to that time, she (along with the prior owner of the web site) had used a name corresponding to the domain name; she co-hosted the “Dr. Randy's Pet Sense” radio program on pets.
The Panel is cognizant of other decisions (including those of this Panel) finding that including advertising to third party sites, including those that compete with a complainant, did not constitute to a bona fide offering of goods and services. However, under the circumstances presented here, the Panel finds that Respondent's use of the domain name prior to this dispute, when considered in combination with the current, actual and principal use of the web site to display content, do constitute bona fide use.
Accordingly, the Panel finds that Respondent has established rights and legitimate interests in the domain name within the meaning of Paragraph 4(c)(i).
C. Registered and Used in Bad Faith
In light of the conclusion that Complainant has not established the second element, it is not necessary to address the issue of bad faith. However, the Panel notes that many of the assertions in the Complaint, particularly regarding Complainant's attempts to purchase the domain name, are not supported by the evidence submitted.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Debra J. Stanek Sole Panelist
Dated: May 17, 2010
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