Radio Systems Corporation v. Media Plus Solutions, Kenneth Yap
Case No. D2010-0801
1. The Parties
The Complainant is Radio Systems Corporation of Tennessee, United States of America, represented by Pitts & Brittian, P.C., United States of America.
The Respondent is Media Plus Solutions, Kenneth Yap of Singapore.
2. The Domain Name and Registrar
The disputed domain name <petsafebarkcontrol.com> is registered with DomainPeople, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2010. On May 21, 2010, the Center transmitted by email to DomainPeople, Inc. a request for registrar verification in connection with the disputed domain name. On May 25, 2010, DomainPeople, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 May 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 22, 2010.
The Center appointed J. Nelson Landry as the sole panelist in this matter on July 12, 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
The Complainant, Radio Systems Corporation, is, since 1998, in the business of making and selling pet control and training products worldwide under the trademark PETSAFE. The Complainant has registered a family of trademarks around the expression “petsafe”, either the expression alone or in association with other terms, such as PETSAFE BARK CONTROL, PETSAFE TRAINING SYSTEMS, PETSAFE WELLNESS BED, PETSAFE WIRELESS PET CONTAINEMENT SYSTEM, PETSAFE VILLAGE, PETSAFE RESCUE SERVICE and different logos associated therewith ( herein the “Trademark”, the “PETSAFE Trademark” or the “PETSAFE Trademarks”).
The PETSAFE products of the Complainant are marketed and available for purchase around the world through its own network of authorized retailers identified by the PETSAFE logo as well as on the Internet at “www.petsafe.net/Where-To-Buy/Authorized-Retailers.aspx”, since as early as 1998.
The Complainant has registered the PETSAFE Trademark in numerous countries and continents, including in the United States, Canada, Mexico, European Community, United Kingdom and Australia. Furthermore the Complainant has registered and operates over 80 domain names incorporating its PETSAFE Trademark since as early as June 5, 1998.
The Complainant has not licensed any of its Trademarks to the Respondent and it has not otherwise authorized the Respondent to register or use the disputed domain name nor to represent itself as a retailer of the Complainant's products. The Complainant has no relationship with the Respondent, contractual or otherwise.
The disputed domain name was registered on October 16, 2008.
5. Parties' Contentions
A. Complainant
The Complainant submits that it has rights in the Trademark PETSAFE which it has been using alone since 1998 or within a family of Trademarks adopted from 1998 until 2010 in association with pet control and training products worldwide. According to the Complainant, the family of Trademarks consists of the expression “petsafe” either alone or in association with other terms, such as PETSAFE BARK CONTROL, PETSAFE TRAINING SYSTEMS, PETSAFE WELLNESS BED, PETSAFE WIRELESS PET CONTAINEMENT SYSTEM, PETSAFE VILLAGE, PETSAFE RESCUE SERVICE and different logos associated therewith.
The Complainant further submits that its PETSAFE products are extensively marketed, promoted and sold around the world through its own network of authorized retailers identified by the PETSAFE logo as well as on the internet at “www.PETSAFE.net/Where-To-Buy/Authorized-Retailers.aspx” and over 80 domain names incorporating its PETSAFE Trademarks and has thus built up substantial goodwill in its family of PETSAFE Trademarks.
The Complainant represents that it has not licensed any of its Trademarks to the Respondent, has not otherwise authorized the Respondent to register or use the domain name <petsafebarkcontrol.com>, has not entered into any contract with Respondent such as making the Respondent an authorized retailer of its products and has no relationship with the Respondent.
According to the Complainant, the disputed domain name, is identical or confusingly similar to its PETSAFE Trademark in that, as already established, when the said domain name reproduces the Trademark in its entirety, it is confusingly similar to the Trademark. See Oki Data Americas Inc. v. ASD Inc.,
WIPO Case No. D2001-0903 and Turkcell IIetisim Hizmetleri A.S. v. Vural Kavak,
WIPO Case No. D2010-0010.
Relying on to an earlier UDRP decision, the Complainant claims that the addition of generic top-level “.com” domain to the end of the domain name does not distinguish the disputed domain name from the Complainant's PETSAFE BARK CONTROL Trademark. See Bang & Olufsen a/s v. Unasi Inc.,
WIPO Case No. D2005-0728. The Complainant concludes that the disputed domain name is identical to the said Trademark.
The Complainant further represents that it is critical to recall that it has not licensed any of its Trademarks to the Respondent, has not otherwise authorized the Respondent to register or use the disputed domain name, has not entered into any contract with the Respondent whereby the Respondent would be an authorized retailer of the Complainant's products or have any other relationship with the Complainant.
According to the Complainant, when the Respondent registered the disputed domain name, it was aware of the Complainant's activities, its Trademarks and its domain name <petsafe.net> and these facts establish a prima face case that the Respondent has no right or legitimate interest in the disputed domain name and that pursuant to the Policy the burden shifts to the Respondent to show it does have a right or legitimate interests. See Croatia Airlines d.d. v. Modern Empire Internet Ltd.,
WIPO Case No. D2003-0455 and Clerical Medical Investment Group Limited v. Clericalmedical.com (Clerical & Medical Services Agency),WIPO Case No. D2000-1228.
The Complainant claims in its evidence that the Respondent cannot show any use of or preparation to use the disputed domain name or a name corresponding to the said domain name in connection with a bona fide offering of goods or services, that it is commonly known by disputed the domain name, or is making a legitimate non-commercial or fair use of the domain name.
According to the Complainant, in order to show its use of the disputed domain name is in connection with a bona fide offering of goods or services, the Respondent must meet several requirements including: the Respondent must actually be offering the goods or services at issue; see World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,
WIPO Case No. D2000-1306; must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods; see also Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,
WIPO Case No. D2000-1774; the site may not falsely suggest that the Respondent is the Trademark owner, or that the website is the official site; see Houghton Mifflin Co. v. Weatherman, Inc.,
WIPO Case No. D2001-0211;R.T. Quaife Engineering, Ltd. and Autotech Sport Tuning Corporation d/b/a Quaife America v. Bill Luton,
WIPO Case No. D2000-1201 and Easy Heat, Inc. v. Shelter Products.,
WIPO Case No. D2001-0344.
The Complainant further claims that the Respondent must not try to cover the market in all domain names, thus depriving the trademark owner of reflecting its own trademark in a domain name. See Magnum Piering, Inc. v. Mudjackersand Garwood S. Wilson,Sr.,WIPO Case No. D2000-1525; Oki Data Americas, Inc., supra; ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc.,
WIPO Case No. D2008-0936, wherein the panel recognized Oki Data as the “prevailing view” on whether an offering of goods or services by a reseller may be regarded as bona fide for the purposes of paragraph 4(c)(i) of the Policy.
Considering that the Respondent is not an authorized retailer of the Complainant's PETSAFE pet products, is not licensed to use any of the Complainant's Trademarks, and was not otherwise authorized to register or use the disputed domain name, although, as is shown in the Respondent's webpages, the Respondent claims on each page that it is an authorized retailer of the Complainant's PETSAFE products by displaying on the top of each page the PETSAFE logo and the terms “Authorized Retailer” when in fact it is not, the Complainant suggests that the Respondent falsely suggests it is associated with it, is sponsored by or affiliated with the Complainant which in fact it is not, these facts being a misrepresentation by the Respondent which would cause a visitor to the Respondent's website to believe that the Respondent is an authorized retailer of the Complainant's products when in fact it is not. See Houghton Mifflin Co. v. The Weathermen, Inc.,
WIPO Case No. D2001-0211; The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,
WIPO Case No. D2000-0113 and Lockheed Martin Corporation v. NBPro Hosting,
WIPO Case No. D2003-0859.
The Complainant alleges that the Respondent cannot show that it is commonly known by the disputed domain name since the Respondent's WHOIS information identifies the Respondent as “Media Plus Solutions” and fails to indicate that the Respondent is commonly known by the domain name <petsafebarkcontrol.com>. See America West Airlines, Inc. v. Ilyoup Paik a/k/a David Sanders, NAF Claim No. 206396.
According to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name where the Respondent registered and is using the said domain name with intent for commercial gain to misleadingly divert consumers or to tarnish the Trademark of the Complainant.
According to the Complainant, the disputed domain name involves a business of advertising and selling of pet related products in exchange for monetary value which lead to the only conclusion that the disputed domain name was registered and is being used by the Respondent with the intent for commercial gain. See Charles Jourdan Holding AG v. AAIM,
WIPO Case No. D2000-0403.
The Complainant submits that the registration and use of the disputed domain name by the Respondent is clearly in bad faith in that the Respondent cannot show rights or legitimate interests in the said domain name. See Imerys v. Unknown (gfg fdgdf, dfgdfg),
WIPO Case No. D2007-0045. The Complainant further submits that the Respondent incorporated its Trademark PETSAFE BARK CONTROL in its entirety with the knowledge that the Trademark is owned by the Complainant with the result that such use of the Trademark in the disputed domain name was done for the purpose of disrupting the business of the Complainant and is using the said Trademark to attract internet users and consumers for commercial gain.
The Complainant contends that the Respondent is using the disputed domain name to resell Complainant's products while falsely claiming that it is an authorized retailer for said party when in fact it is not. The Complainant further contends the absence of any plausible explanation by the Respondent for its registration and use of the disputed domain name supports its representation that Respondent registered and is using the disputed domain name in bad faith. See RRI Financial, Inc. v. Ray Chen,
WIPO Case No. D2001-1242.
According to the Complainant this bad faith behaviour is further corroborated by the use of the Trademark PETSAFE BARK CONTROL in the disputed domain name by the Respondent and the inclusion by the latter of a false claim on the website for the disputed domain name that the Respondent is an authorized retailer of the PETSAFE products which inclusion is improper because the customers are being attracted to the said website and being mislead into believing that the Respondent is associated with, sponsored by or connected with the Complainant when in fact the Respondent is not and that this is clearly done by the Respondent for commercial gain.
Finally the Complainant claims as additional evidence of bad faith in the part of the Respondent the fact that it has contacted the Respondent on numerous occasions to request that it ceases any such improper use of its Trademark in the disputed domain name and that the Respondent never responded but continued its infringing and unauthorized activities.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent 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.
A. Identical or Confusingly Similar
The Trademark PETSAFE was adopted by the Complainant in 1998 and thereafter, the Complainant adopted and commenced using the Trademark PETSAFE as well as several other trademarks incorporating the expression PETSAFE therein to constitute a family of Trademarks used in association with electronic animal confinement and training systems, training devices and in particular commenced using in July 2004 the Trademark PETSAFE BARK CONTROL in association with animal training collars. These various Trademarks were registered by the Complainant in the United States and also in several other countries such as Canada, United Kingdom, Australia, Japan and as an European Community Trademark.
The Complainant has continuously used the Trademark PETSAFE in association with said animal training systems and products which were sold through a worldwide network of authorized retailers who were operating under the PETSAFE logo of the Complainant pursuant to a contractual arrangement with the Complainant and the latter has spent considerable sums of money to promote its products under the said Trademarks. As a result of this continuous and progressive worldwide use and promotion of the Trademarks, substantial goodwill was built up and associated therewith. The Panel finds that the Complainant has rights in the Trademarks PETSAFE and PETSAFE BARK CONTROL and also in the family of PETSAFE Trademarks.
The disputed domain name incorporates the PETSAFE Trademark as well as the PETSAFE BARK CONTROL Trademark. As previously established in several UDRP decisions including the Oki Data Americas Inc., and Turkcell Iletisim Hizmetleri A.S., supra, cited by the Complainant which the Panel adopts, when a domain name reproduces the Trademark in its entirety, it is confusingly similar to the Trademark as it is the case in the present circumstances. The addition of generic top level “.com” domain to the Trademark PETSAFE BARK CONTROL does not diminish in any respect the similarity or confusion between the disputed domain name and the PETSAFE BARK CONTROL Trademark of the Complainant. The Panel finds that the disputed domain name is confusingly similar to the PETSAFE Trademarks and identical to the PETSAFE BARK CONTROL Trademark.
The first criterion has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name, is not making a legitimate non-commercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the former's Trademark. There is no evidence that the Respondent has ever engaged is any legitimate business under the complainant's Trademark.
When the Respondent registered the disputed domain name, the Complainant was already for a decade in the exploitation and business of selling its products under the family of PETSAFE Trademarks including, in particular, the Trademark PETSAFE BARK CONTROL. The Complainant has not licensed or authorized the Respondent to use any of its Trademarks or to register and use the disputed domain name and furthermore, there was no contractual relationship or authorization by the Complainant so that the Respondent can reproduce the authorized retailers logo of the Complainant and thereby cause Internet visitors to believe that the Respondent was one of the numerous authorized retailers.
Not only has the Complainant met its initial burden of proof by showing that the Respondent's activities were totally focused and associated with those of the Complainant under its Trademarks, the Respondent did not even attempt to show that it has rights or legitimate interests in the disputed domain name.
In the absence of any evidence by the Respondent, on the one hand and the close association of the disputed domain name with the activities of the Complainant, already significantly present for a decade, on the other hand, it is clear to this Panel that the Respondent is not using the disputed domain name in connection with a bone fide offering of goods and services and has never been commonly known by the said domain name. Furthermore, upon considering the reiterated written objections from the Complainant to the use by the Respondent of the Complainant's logo and falsely representing itself as an authorized retailer of the Complainant, the Panel also finds that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name and does not have a right or interests in said domain name. In so determining the Panel has taken into account the UDRP decisions cited by the Complainant in support of its contention and the Panel concurs with said earlier panel decisions.
The second criterion has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
As previously stated herein, the identity of the disputed domain name with the Trademark PETSAFE BARK CONTROL, the unauthorized association of the Respondent with the retailers of the Complainant under the later logo does not allow any doubt about the awareness by the Respondent of the Trademarks and activities of the Complainant and eagerness to capitalize on these and to use the disputed domain name and the Trademark to attract Internet users and consumers for commercial gain. Considering the identity of the disputed domain name and the said Trademark and the decade of earlier substantial activities and promotion of the Complainant, this Panel finds that the Respondent has registered the said domain name in bad faith.
As held by the panel in RRI Financial, Inc. supra, “there is no plausible explanation as to why the Respondent selected the name at issue, which incorporates the Complainant's entire mark as part of the domain name other than to trade on the goodwill of the Complainant”.
The evidence which is not challenged is clear about the inclusion of a false claim on the website under the disputed domain name that the Respondent is an authorized retailer of the Complainant's PETSAFE products, as rightfully contented by the Complainant. Such improper attraction and attempt at misleading Internet visitors to believe that the Respondent is associated with, sponsored by or connected with the Complainant when in fact, it is not, and maintaining such activities and implicit representation despite written reiterated demands by the Complainant, clearly establish in this Panel's view that the Respondent is using the disputed domain name in bad faith.
The Panel finds that the disputed domain name was registered in bad faith and is used in bad faith.
The third criterion has been met.
7. Decision
The Panel concludes that:
(a) the disputed domain name <petsafebarkcontrol.com> is identical to the Complainant's Trademark PETSAFE BARK CONTROL and confusingly similar to the PETSAFE Trademarks;
(b) the Respondent has no rights or legitimate interests in the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <petsafebarkcontrol.com> be transferred to the Complainant.
J. Nelson Landry Sole Panelist
Date: July 23, 2010
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