Feline Instincts, LLC v. Feline Future Cat Food Co., Inc.
Claim Number: FA0906001270908
Complainant is Feline Instincts, LLC (“Complainant”), represented by Tisha
Dodge, of Dodge Legal Group, PC, Texas, USA.
Respondent is Feline Future Cat Food Company Inc.
(“Respondent”), represented by Eamon Murphy, of Clement Murphy and
Woodward, Baristers & Solicitors,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <felineinstincts.info>, <felineinstincts.org>, <felineinstincts.net>, <catinstincts.com>, <catinstincts.org>, and <catinstincts.net>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David P. Miranda, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 29, 2009.
On June 29, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <felineinstincts.info>, <felineinstincts.org>, <felineinstincts.net>, <catinstincts.com>, <catinstincts.org>, and <catinstincts.net> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 2, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 22, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on July 22, 2009.
On July 22, 2009, Complainant’s Additional Submission was received, on July 31, 2009 Respondent’s Additional Submission was received. Subsequently, Additional and Supplemental Submissions from both parties were requested, received, accepted, and considered by the Panel.
On August 25, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant Feline Instincts, LLC of Dallas, Texas (“Complainant”), seeks the transfer of six domain names <felineinstincts.info>, <felineinstincts.org>, felineinstincts.net> (“feline instincts domains”), <catinstincts.com>, <catinstincts.org>, and <catinstincts.net> (“cat instincts domains”) from Respondent Feline Future Cat Food Co., Inc. of Canada (“Respondent”). Complainant contends that both parties are in the business of producing and selling natural cat food supplements. There was a business relationship between Complainant and Respondent from 2000 to 2003. In 2003 the relationship was severed and Respondent became Complainant’s competitor operating at <www.felinefuture.com>. In August 2003, Complainant filed an application for U.S. Trademark FELINE INSTINCTS and contends that it has continuously used the mark FELINE INSTINCTS and the unregistered CAT INSTINCTS in commerce since that time. In 2009 Respondent registered the six domain names at issue; Complainant contends that Respondent never used these names before in its business.
The trademark FELINE INSTINCTS was
originally registered in the name of Felice Arata-Rhodes, the principal and
owner of Complainant. On June 23, 2009 rights to the U.S. mark
FELINE INSTINCTS were assigned to Complainant,
a copy of the assignment filed with the USPTO was submitted by Complainant. Complainant
contends that the “feline instincts” domains <felineinstincts.info>, <felineinstincts.org>, <felineinstincts.net> are identical to Complainant’s FELINE INSTINCTS
trademark. Complainant further contends that the
“cat instincts” domains are confusingly similar to Complainant’s mark because Respondent has only substituted a synonym for a key part of Complainant’s trademark. Complainant contends that Respondent has no trademark rights to
the FELINE INSTINCTS mark, and that Respondent’s Canadian trademark
application indicating a date of first use of the mark in
that it has been using the terms feline, instincts, and cat in various
combinations since 1997 when it created cat food recipes under the business
name “Feline Future”, and product name “Instincts”. In 2000 Complainant
began using the name Feline Instincts to sell Respondent’s
products, pursuant to an agreement. In
2003 Complainant began using the
name “Feline Instincts” in competition with Respondent without
any agreement between the parties. Respondent
operated as a partnership until 2006 when Respondent’s company was
incorporated as Feline Future Cat Food Co., Inc. in the
C. Additional Submissions
Complainant and Respondent submitted multiple additional and supplemental submissions, all of which were accepted, considered and relevant facts are set forth herein.
The Panel finds that with respect to the “feline instincts” domain names <felineinstincts.info>, <felineinstincts.org>, and felineinstincts.net>, Complainant has established that the marks are identical or confusingly similar to its registered trademark, that Respondent has no rights or legitimate interests with respect to these domain names, and that these domain names have been registered and are being used in bad faith. The three “feline instincts” domain names should be transferred to Complainant. The Panel finds that Complainant has failed to meet its burden of proof with respect to the “cat instincts” domain names <catinstincts.com>, <catinstincts.org>, and <catinstincts.net>, and those domain names are not transferred.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
According to Respondent, Complainant’s use of, and claim of rights to the FELINE INSTINCTS mark arise from an agreement in 2000 between Respondent and Complainant that Complainant would distribute Respondent’s products under the FELINE INSTINCTS mark. Respondent also contends that in 2003, Complainant began using the FELINE INSTINCTS mark in commerce without Respondent’s permission. Complainant contends that its trademark registration of the FELINE INSTINCTS mark with the United States Patent and Trademark Office gives it rights in the FELINE INSTINCTS mark.
The Panel has discretion to determine whether or not it has jurisdiction over this dispute. The Panel finds that there is sufficient evidence for it to properly decide the dispute under the UDRP. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it.”).
Complainant owns a federal registration to the FELINE INSTINCTS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,917,859, issued January 11, 2005). The Panel finds that the trademark registration establishes Complainant’s rights in the FELINE INSTINCTS mark pursuant to Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.”); see also Stevenson v. Crossley, FA 1028240 (Nat. Arb. Forum Aug. 22, 2007) (“Per the annexed U.S.P.T.O. certificates of registration, assignments and license agreement executed on May 30, 1997, Complainants have shown that they have rights in the MOLD-IN GRAPHIC/MOLD-IN GRAPHICS trademarks, whether as trademark holder, or as a licensee. The Panel concludes that Complainants have established rights to the MOLD-IN GRAPHIC SYSTEMS mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that the <felineinstincts.info>, <felineinstincts.org>, and felineinstincts.net> domain names are confusingly similar to the FELINE INSTINCTS mark. Respondent’s disputed domain names contain the FELINE INSTINCTS mark in its entirety, and add generic top-level domains. The Respondent makes a very serious allegation that Complainant’s FELINE INSTINCTS federal trademark registration is based in fraud. However, Respondent’s allegation is not supported by proof sufficient to overcome the presumption of the validity that the USPTO registration provides. The Panel determines that Complainant has established rights to the trademark FELINE INSTINCTS and that the domain names <felineinstincts.info>, <felineinstincts.org>, and felineinstincts.net> are identical or confusingly similar to Complainant’s trademark.
With respect to trademark rights to CAT INSTINCTS, Complainant does not contend that it has a federal registration for CAT INSTINCTS, and it has failed to set forth sufficient proof to establish common law trademark rights to the mark CAT INSTINCTS. The Panel finds that Complainant has failed to establish that it has common law rights to CAT INSTINCTS, and thus has failed to meet its burden of proof with respect to the <catinstincts.com>, <catinstincts.org>, and <catinstincts.net> domains. As such, the “cat instincts” domain names will not be transferred, and only the “feline instincts” domain names will be addressed in the subsequent analysis.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests in the disputed domain names. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, the burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent is not and has not been commonly known by the disputed domain names. In the WHOIS information for the disputed domain names, Respondent is listed as “Feline Future Cat Food Co., Inc.” There is no evidence that Respondent has been commonly known by the FELINE INSTINCTS mark, and the Panel finds that Respondent is not commonly known by the disputed feline instincts domains pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).
Respondent’s disputed domain names redirect to Respondent’s website at <felineinstincts.ca>, where Respondent’s products are being sold in competition with Complainant. Respondent’s efforts to direct Internet users seeking Complainant’s business to Respondent’s website is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
Complainant contends that Respondent is intentionally disrupting Complainant’s business through its diversion to Respondent’s competing website. Based upon the nature of the relationship between the Complainant and the Respondent, Respondent was aware that Complainant was using the FELINE INSTINCTS mark in commerce since at least as early as 2003. Respondent has registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the complainant's marks suggests that the respondent, the complainant’s competitor, registered the names primarily for the purpose of disrupting the complainant's business); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also contends that Respondent is using the confusingly similar disputed domain names for profit by attracting unsuspecting Internet users to Respondent’s website and selling competing goods to those Internet users. This use of the disputed domain names demonstrates that Respondent was attempting to profit from Complainant’s goodwill associated with the FELINE INSTINCTS mark, and therefore is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Having established all three elements required under the ICANN Policy as to the “feline instincts” domains, the Panel concludes that relief shall be GRANTED as to those domains only. Accordingly, it is Ordered that the <felineinstincts.info>, <felineinstincts.org>, and <felineinstincts.net>, domain names be TRANSFERRED from Respondent to Complainant.
No Order is made with respect to the <catinstincts.com>, <catinstincts.org>, and <catinstincts.net> domain names.
David P. Miranda, Esq., Panelist
Dated: October 2, 2009
National Arbitration Forum
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