WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Patriot Supply Store, Inc. and Matt Parker v. Benjamin Wiese

Case No. D2013-1810

1. The Parties

The Complainants are Patriot Supply Store, Inc. of Las Vegas, Nevada, United States of America and Matt Parker of Muncie, Indiana, United States of America, represented by Gavin Law Offices, PLC, United States of America.

The Respondent is Benjamin Wiese of Littleton, Colorado, United States of America.

2. The Domain Name and Registrar

The disputed domain name <patriotpantry.org> is registered with Domain.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2013. On October 23, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 1, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on November 6, 2013 amending the Respondent from Domain Privacy Group, of Burlington, Massachusetts, United States of America to Benjamin Wiese of Littleton, Colorado, United States of America.

The Center verified that the Complaint together with the amendment to 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 November 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 28, 2013.

The Center appointed Angela Fox as the sole panelist in this matter on December 6, 2013. 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

Matt Parker (“the Second Complainant”) is the owner on record of United States trademark registration no. 4,383,360 for PATRIOT PANTRY for various foods and emergency food kits in Class 29, filed on December 12, 2012 and registered on August 13, 2013.

Patriot Supply Store, Inc. (“the First Complainant”) is the assignee of the above United States trademark registration, as evidenced by the copy of an assignment dated October 17, 2013 annexed to the Complaint.

Although the Complaint contains scant details on the Complainants’ business, it appears from a website extract annexed to the Complaint that the trademark PATRIOT PANTRY has been used by one or both of the Complainants in respect of food survival packs on the “www.mypatriotsupply.com” website. According to the “About Us” page, that website is operated by an entity called My Patriot Supply with an address identical to that of the Second Complainant.

The disputed domain name was registered on March 18, 2013. Website print-outs annexed to the Complaint show that it is in use for a business selling prepared survival food packs similar to those offered on the “www.mypatriotsupply.com” website. The website contains no physical contact details but the copyright notice refers to an entity called “Essential Foods Processing.” The Complaint states that upon information and belief the website is operated by the Respondent on behalf of Essential Food Processing Co. LLC of […] Omega Cir., Littleton, Colorado 80124, United States.

Annexed to the Complaint were “excerpts from a private investigation performed by the Complainant [sic] into the party behind the Disputed Domain.” These indicate that telephone calls were made to the Respondent’s warehouse and canning facility in Cheyenne, Wyoming, which resulted in information provided by the Respondent’s son as follows:

“…the Starter Pac of PATRIOT PANTRY products consists of ‘about 12 cases’ of various meats, vegetables, eggs and dairy products that are all ‘dehydrated, but not freeze-dried.’ He said he believes the Starter Pac is ‘around $800’ and can be purchased from their retail store in Denver or online on their Essential Foods Processing website (www.essentialfoodsprocessing.com)…”

The excerpts go on to state:

“We subsequently received a call from Ernie Wiese, who explained their brand name is actually Plentiful Pantry and that PATRIOT PANTRY is a private label they make for another company, which he declined to name. He said that the products are identical, but that this group is Mormon and purchases the products wholesale for resale to a specific group of customers. Ernie said that Essential Foods Processing is a wholesale only business with one retail store in Denver. When asked about the distribution of PATRIOT PANTRY products, Ernie said that it is limited to ‘a fairly small area on the Front Range.’”

5. Parties’ Contentions

A. Complainant

The Complainants submit that the disputed domain name is confusingly similar to the registered trademark PATRIOT PANTRY, which is wholly incorporated in the disputed domain name.

The Complainants further submit that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent has not been licensed or otherwise authorized to use a domain name incorporating the PATRIOT PANTRY mark, is not and never has been commonly known by a name corresponding to the disputed domain name, and is not making a noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainants’ trademark. The Complainants contend that the use the Respondent has made is misleading and is therefore not a bona fide offering of goods within the meaning of paragraph 4(c)(i) of the Policy.

Finally, the Complainant states that the disputed domain name was registered and has been used in bad faith, on the basis that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ mark. The Complainants argue that the PATRIOT PANTRY trademark is so obviously connected with the Complainants that the adoption of the disputed domain name by the Respondent suggests “opportunistic bad faith.”

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) a respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainants have shown that the Second Complainant is the registered proprietor of a United States federal trademark registration for PATRIOT PANTRY and that the First Complainant is the (as yet unrecorded) assignee of rights in that registration.

The disputed domain name is identical to the Complainants’ PATRIOT PANTRY trademark, adding only the non-distinctive domain suffix “.org”.

Although the Complainants did not advance a case for identity, the Panel nonetheless considers the disputed domain name to be identical to a trademark in which the Complainants have rights, and so finds.

B. Rights or Legitimate Interests

The Complainants have not authorized the Respondent to use the PATRIOT PANTRY trademark and the Respondent does not appear to be known by any trademark or trading name corresponding to the disputed domain name. The Respondent is in default and has therefore advanced no case as to why it should be regarded as enjoying a right or legitimate interest in the disputed domain name.

Nonetheless, under paragraph 4(c)(i) of the Policy, a panel may find that a respondent has a right or legitimate interest in a disputed domain name if the circumstances suggest that before any notice to it of the dispute, the respondent used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to it in connection with a bona fide offering of goods or services.

In this case, there is evidence in the Complaint that since before receiving notice of the dispute the Respondent has been using the disputed domain name in relation to a website offering for sale survival food packs. However, such use must be bona fide in order to give rise to a right or legitimate interest under paragraph 4(c)(i) of the Policy, since “otherwise…a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy" (Madonna Ciccone, p/k/a Madonna v. Parisi, WIPO Case No. D2000-0847; see also American Eyewear, Inc. v. Thralow, Inc., WIPO Case No. D2001-0991).

The Complainants allege that the Respondent’s offering of survival food packs under the disputed domain name is not bona fide because it is likely to create confusion with the Complainants’ business under the PATRIOT PANTRY mark in the same commercial sphere. In support of this, the Complainants annex an email dated September 28, 2013 to […]@mypatriotsupply.com and […]@mypatriotsupply.com enquiring whether “you are the same company as patriot pantry.org?”

There is, however, no indication that the Respondent had a deliberate intention to create confusion. While it is notable that the Respondent is using the disputed domain name in the same commercial sphere, the Complainants have provided scant information on the history of their use and on the extent to which the PATRIOT PANTRY trademark enjoyed any market profile, such that the Respondent can be expected to have heard of it. The logo versions of the marks use by the respective parties appear very different. Nor is it clear, moreover, which party began its activities first; although the disputed domain name was only registered on March 18, 2013 and the Complainants claim to have made extensive use of PATRIOT PANTRY for over 4 years before that, the Complainants’ evidence indicates that the Respondent also appears to be using PATRIOT PANTRY as a trademark in respect of goods offered through the website at “www.essentialfoodsprocessing.com”, and the Complaint does not indicate when the Respondent’s use of PATRIOT PANTRY began, despite an investigation having been conducted. The mere possibility that parties’ activities appear likely to come into commercial conflict does not necessarily mean that either party lacked bona fides in commencing them.

While it is entirely possible that the Respondent’s use could be found to infringe the Complainants’ trademark registration or that confusion may arise from the parties’ concurrent use, nonetheless, as noted in Rapido TV Limited v. Jan Duffy-King ( WIPO Case No. D2000-0449), “the Policy does not aim to adjudicate between genuine conflicting interests,” but is rather designed to deal with clear cases of cybersquatting.

The Panel finds that the second element of the Policy has not been proved.

C. Registered and Used in Bad Faith

For the same reasons, the Complainants have not discharged their burden of proving that the disputed domain name was registered and has been used in bad faith. There is no evidence that the Respondent was targeting the Complainants’ trademark at the time the disputed domain name was registered.

The Complainants argue that the Respondent would have noted the Complainants’ trademark in an Internet search had one been conducted before the disputed domain name was registered. That may well have been the case, but it is not at all clear that the Respondent was not already conducting a bona fide business under the PATRIOT PANTRY mark at that time that would have justified its application to register the disputed domain name. There is insufficient evidence, based on the Complaint and the supporting materials, to allow the Panel to conclude that in registering and using the disputed domain name the Respondent acted in bad faith.

The Panel finds that the third element of the Policy, also, has not been proved.

7. Decision

For the foregoing reasons, the Complaint is denied.

Angela Fox
Sole Panelist
Date: December 20, 2013