Foster and Smith, Inc. v. Private Whois Service
Claim Number: FA1009001345140
Complainant is Foster and Smith, Inc. (“Complainant”), represented by Kourtney A. Mulcahy, of Hinshaw & Culbertson LLP, Illinois, USA. Respondent is Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <doctorsfosterandsmith.com>, registered with Internet.bs Corp.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2010.
On September 7, 2010, Internet.bs Corp. confirmed by e-mail to the National Arbitration Forum that the <doctorsfosterandsmith.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 September 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@doctorsfosterandsmith.com by e-mail. Also on September 9, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <doctorsfosterandsmith.com> domain name is identical to Complainant’s DOCTORS FOSTER AND SMITH mark.
2. Respondent does not have any rights or legitimate interests in the <doctorsfosterandsmith.com> domain name.
3. Respondent registered and used the <doctorsfosterandsmith.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Foster and Smith, Inc., sells a wide variety of animal products in the United States, France, Japan, Canada, Switzerland, Belgium, and Germany. Its products include dog supplies, cat supplies, fish and aquarium products, bird supplies, pond products, small pet supplies, reptile supplies, wild bird products and pharmaceutical products. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the DOCTORS FOSTER AND SMITH and related marks:
Mark Reg. No. Date Issued
DOCTORS FOSTER & SMITH 2,477,646 Aug. 14, 2001
DOCTORS FOSTER & SMITH 2,524,313 Jan.1, 2002;
DOCTORS FOSTER & SMITH 2,641,602 Oct. 29, 2002;
DOCTORS FOSTER & SMITH ULTRA CLENS 2,651,336 Nov. 19, 2002;
DRS. FOSTER SMITH 2,683,524 Feb. 4, 2003;
DOCTORS FOSTER & SMITH’S PET WAREHOUSE 2,719,968 May 27, 2003;
DOCTORS FOSTER & SMITH’S PET WAREHOUSE 2,719,969 May 27, 2003;
DOCTORS FOSTER AND SMITH 3,283,887 Aug. 21, 2007.
Respondent, Private Whois Service, registered the <doctorsfosterandsmith.com> domain name on November 7, 2009. The disputed domain name resolves to a website featuring pay-per-click links to third-party providers of competing pet supplies, as well as other unrelated third-party websites.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant owns numerous trademark registrations with the USPTO for the DOCTORS FOSTER AND SMITH and related marks:
Mark Reg. No. Date Issued
DOCTORS FOSTER & SMITH 2,477,646 Aug. 14, 2001
DOCTORS FOSTER & SMITH 2,524,313 Jan.1, 2002;
DOCTORS FOSTER & SMITH 2,641,602 Oct. 29, 2002;
DOCTORS FOSTER & SMITH ULTRA CLENS 2,651,336 Nov. 19, 2002;
DRS. FOSTER SMITH 2,683,524 Feb. 4, 2003;
DOCTORS FOSTER & SMITH’S PET WAREHOUSE 2,719,968 May 27, 2003;
DOCTORS FOSTER & SMITH’S PET WAREHOUSE 2,719,969 May 27, 2003;
DOCTORS FOSTER AND SMITH 3,283,887 Aug. 21, 2007.
The Panel finds that Complainant’s extensive evidence of its trademark registrations with the USPTO sufficiently prove Complainant’s rights in the DOCTORS FOSTER AND SMITH mark for the purposes of Policy ¶ 4(a)(i), even when Respondent lives or operate in a different country. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant alleges that Respondent’s <doctorsfosterandsmith.com> domain name is identical to Complainant’s DOCTORS FOSTER AND SMITH mark. The only differences between the two are the elimination of the spaces between terms and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither eliminating the spaces between terms nor attaching the gTLD prevents the disputed domain name from being identical to Complainant’s DOCTORS FOSTER AND SMITH mark according to Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to the complainant's registered trademark GAY GAMES); see also Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Therefore, the Panel finds that Respondent’s <doctorsfosterandsmith.com> domain name is identical to Complainant’s DOCTORS FOSTER AND SMITH mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant has put forth a prima facie case, the burden shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has adequately established a prima facie case in these proceedings. Since Respondent has failed to respond to the allegations against it, the Panel may assume that Respondent lacks any rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant contends that there is no evidence showing that Respondent is commonly known by the <doctorsfosterandsmith.com> domain name or that the disputed domain name comprises any part of the legal name of Respondent. The WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel thus finds that Respondent lacks rights and legitimate interests in the <doctorsfosterandsmith.com> domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant asserts that Respondent’s <doctorsfosterandsmith.com> domain name resolves to a directory-style website featuring links to websites not affiliated with Complainant that sell competing pet supplies. The Panel finds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp pls et. al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was 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).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s <doctorsfosterandsmith.com> domain name resolves to a website featuring links, presumed to be pay-per-click links, to the websites of competitors, such as PetMeds and J-B Wholesale Pet Supplies. Complainant also alleges that the resolving website has a search box where visitors can search by manufacturer name to locate specific pet supplies and other pet related items. Such an activity clearly disrupts Complainant’s business, as Internet users seeking Complainant’s products will be diverted to sites featuring competing pet products. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors shows bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant contends that Respondent incorporates Complainant’s full DOCTORS FOSTER AND SMITH mark into the <doctorsfosterandsmith.com> domain name in order to attract Internet users seeking Complainant by creating a likelihood of confusion. When the Internet users are diverted to Respondent’s website and then click on any of the third-party links, it is presumed that Respondent is compensated on a pay-per-click basis. The Panel finds Respondent’s efforts to mislead Internet users and attract Complainant’s business in order to receive commercial gain constitute bad faith registration and use under 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <doctorsfosterandsmith.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 15, 2010
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