Foster and Smith, Inc. v. Jasper Development Pty., Ltd.
Claim Number: FA1009001345191
PARTIES
Complainant is Foster and Smith, Inc. (“Complainant”), represented by Kourtney A. Mulcahy, of Hinshaw & Culbertson LLP, Illinois, USA. Respondent is Jasper Development Pty., Ltd. (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <drsfrostersmith.com>, registered with MONIKER ONLINE SERVICES, INC.
PANEL
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.
Dr. Reinhard Schanda, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2010.
On September 9, 2010, MONIKER ONLINE SERVICES, INC. confirmed by e-mail to the National Arbitration Forum that the <drsfrostersmith.com> domain name is registered with MONIKER ONLINE SERVICES, INC. MONIKER ONLINE SERVICES, INC. has verified that Respondent is bound by the MONIKER ONLINE SERVICES, 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 September 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@drsfrostersmith.com by e-mail. Also on September 16, 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.
Respondent did not submit any response.
On October 15, 2010 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that it was incorporated in the state of Wisconsin in 1983. Since its inception, Complainant has sold animal products under the various DOCTORS FOSTER AND SMITH service marks. In 1983, Complainant started its catalog that introduced thousands of products related to pet care. On July 11, 1996, Complainant reserved the domain <drsfostersmith.com> to be used in connection with the sale of its animal products. The earliest available archived page for this website is from December 24, 1996. Complainant’s website establishes that the mark DOCTORS FOSTER AND SMITH is used in connection with a wide variety of animal products. Specifically, the mark DOCTORS FOSTER AND SMITH is used in connection with 1) dog supplies; 2) reptile supplies; 8) wild bird products; and 9) offers a pharmacy.
Complainant has obtained United States Registration Nos. 2683524, 2719968, 2719969, 2651336, 2524313, 2641602, 2477646, and 3283887 for its DOCTORS FOSTERS AND SMITH family of marks. Since its inception, Complainant has spent significant sums on advertising the DOCTORS FOSTER AND SMITH family of marks and brand nationwide and internationally through its website and catalog, as well as television and radio advertising. Complainant has sold its products in the United States, and in France, Japan, Canada, Switzerland, Belgium and Germany. Complainant has received significant revenue from sales related to its DOCTORS FOSTER AND SMITH products. Moreover, Complainant has received several awards related to its website and the quality of its products. Specifically, in 2005 and 2006 Complainant received the “Best of the Web – Top 50 Retail Sites” award, given by Internet Retailer. In recent years, Complainant has also been recognized in the Internet Retailer Top 100. Finally, Catalog Success magazine recognized Doctors Foster & Smith as the “2004 Cataloger of the Year”. Accordingly, the DOCTORS FOSTER AND SMITH family of marks is irrefutably famous and has become a widely recognized source identifier of quality animal products.
There is not or has there ever been any license or other business relationship between Complainant and Respondent. Accordingly, Respondent has no permission whatsoever to use any of the DOCTORS FOSTER AND SMITH service marks.
Currently, and for a period of time, Respondent has maintained a commercial website associated with the Dispute Domain Name, located at <drsfrostersmith.com>. The domain name associated with this website contains the domain portions of one of Complainant’s family of marks; i.e. “Drs. Foster Smith”. In addition, the homepage shows that the name of the site is “DrsFrosterSmith.com”, and features “Sponsored Listings” of manufacturers of pet supply products that are competitive to Complainant. Examples of such competitors are “PetCareRx”, “1800PetMeds”, and “Frontline Plus”. Most importantly, the site has a search feature where visitors can search for a variety of products. A search for “pet supplies” returned “Sponsored Listings” for a variety of manufactures that sell pet supplies, including Complainant’s competitors PetCo and 1800 PetMeds. As one can see from even a cursory look at the “Pet Supplies” page, one of the features of the site is to reach users interested in purchasing pet-related products.
Moreover, if a visitor to the Respondent’s website clicks on any of the “Sponsored Listings” from the “Pet Supplies” webpage, he or she is taken to one of Complainant’s competitors. For example, if one clicks on the “Pet Meds” “Sponsored Listings”, he or she is taken to the homepage for “PetCareRx”. Accordingly, Internet users are falsely led to believe that Respondent’s website is provided or sponsored by Complainant.
According to Complainant the registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning. In this instance, Complainant owns the aforementioned DOCTORS FOSTER AND SMITH family of marks through registrations with the United States Patent and Trademark Office. Furthermore, Complainant has used the DOCTORS FOSTER AND SMITH family of marks continuously since 1983 in connection with its sale of animal products. Thus, Complainant has established that is has service mark rights in its family of marks through its various U.S. registrations.
According to Complainant a domain name is identical or confusingly similar to a service mark when the domain name at issue contains the service mark, or a confusingly similar approximation. Put another way, under the UDRP, the question of identity and confusingly similarity is examined “solely on a comparison between the Complainant’s word mark and alphanumeric string constituting the domain name at issue”.
In this instance, Respondent’s <drsfrostersmith.com> domain name is a confusingly similar approximation to Complainant’s DOCTORS FOSTER AND SMITH family of marks. Specifically, Respondent’s domain name contains the dominant portions of one of Complainant’s family of marks: “Drs. Foster Smith.” In addition, the “drs” in Respondent’s domain name is the abbreviation for the word “doctors”. The purposeful abbreviation of a word included in the majority of Complainant’s family of marks, created by the use of “drs”, is actionable under the Policy.
Further, Respondent’s domain name deviates only from the dominant portions of Complainant’s mark with the addition of the letter “r” in the word “Foster”. The purposeful misspelling of the Complainant’s mark, created by the addition of the letter “r” is actionable under the Policy.
Lastly, the addition of the top-level domain name ”.com” does not create any distinct characteristics because it is a required feature of every domain name. Therefore, its addition does not overcome a claim of confusing similarity.
Complainant further contends that Respondent has never used the Dispute Domain Name or any name associated with it in connection with a bona fide offering of goods and services.
In this situation, Respondent uses the Dispute Domain Name to drive Internet users searching for one of Complainant’s websites to its own website. Specifically, when Internet users type the Dispute Domain Name into his or her web browser, he or she is taken to Respondents website titled <drsfrostersmith.com>. Respondent’s website offers pet supply products and accessories from Complainant’s competitors. Complainant is harmed inasmuch as the Internet user decides to purchase a product from Complainant’s competitor rather than from Complainant. Respondent’s intentionally infringing use of a domain name confusingly similar to Complainant’s family of marks should not be viewed as bona fide use.
Complainant contends that it used its marks in commerce, and obtained federal registrations for them, many years before Respondent registered the Dispute Domain Name. Complainant began using the DOCTORS FOSTER AND SMITH family of marks in 1983. The Dispute Domain Name was not registered until November 25, 2003. Thus, Respondent’s registration of the Dispute Domain Name cannot give it any rights.
Moreover, Respondent lacks rights and legitimate interests in the Dispute Domain Name pursuant to Rule 4(c)(ii) because there is no evidence (and Respondent will be unable to provide any) to establish that Respondent is commonly known by the domain name of Respondent.
In this instance, there is no non-commercial, fair use information offered at the Respondent’s website. Instead, Respondent’s website contains primarily commercial information, including advertisements for products competitive to Complainant’s. Respondent is diverting Internet traffic to its website due to the fame of Complainant’s marks. Since Respondent’s website is commercial in nature, it cannot qualify under the safe harbor of Rule 4(c)(iii) as a legitimate noncommercial fair use without intent for commercial gain. Moreover, there is no relationship between the parties giving rise to any license, permission or other right by which Respondent could own or use any domain names incorporating Complainant’s mark.
According to Complainant, Respondent’s awareness of Complainant’s marks prior to registration of the Dispute Domain Name evidences Respondent’s lack of rights or legitimate interest in the Dispute Domain Name.
Here, Respondent registered the Dispute Domain Name 20 years after Complainant launched its catalog featuring its DOCTORS FOSTERS AND SMITH family of marks. Respondent therefore had constructive notice (awareness) of Complainant’s ownership of its marks well before the registration of the Dispute Domain Name. This is an appropriate ground on which the Panel may conclude that Respondent is without right or legitimate interests in the Dispute Domain Name.
Finally Complainant contends that the Dispute Domain Name was registered and is being used in bad faith.
Respondent is using Complainant’s marks to attract Internet users to its website without making it clear that it is not a website of the Complainant nor affiliated with, sponsored, or endorsed by it. Furthermore, there is no disclaimer on the Respondent’s website to dispel any connection between the Respondent and Complainant. Therefore, the Respondent has created a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website.
Respondent’s use of the Dispute Domain Name constitutes an opportunistic attempt to trade off of the goodwill and fame of Complainant’s marks. It is clear that Respondent purchased the domain in bad faith, because (1) it had knowledge of Complainant’s prior fame and commercial success; and (2) Respondent is selling products that compete with products sold under Complainant’s mark. Accordingly, there can be no question that the Respondent, having absolutely no association, relationship of affiliation whatsoever with the Complainant, clearly chose to include the Complainant’s mark in the Dispute Domain Name with a goal of diverting Internet traffic to its website.
Furthermore Respondent’s website contains links to products competitive to those of Complainant, including links to competing pet supply companies like PetMeds and J-B Wholesale pet Supplies. Thus, Respondent’s promotion of Complainant’s competitors is a clear bad faith use under the UDRP.
As indicated above, Complainant is well known and recognized both nationally and internationally. Given Complainant’s long and continuous use of its marks, through the distribution of products by mail order catalog and over the Internet. Respondent clearly had knowledge of the Complainant’s marks prior to registration of the Dispute Domain Name. Additionally, Complainant had multiple registrations for its trademarks with the United States Patent Office prior to the registration of the Dispute Domain Name. These prior registrations gave constructive knowledge (i.e., awareness) to Respondent.
B. Respondent
Respondent did not submit any Response.
FINDINGS
The Panel finds that:
1. the Domain Name <drsfrostersmith.com>is confusingly similar to Complainant’s marks,
2. the Respondent has not established any right or legitimate interest in the Domain Name <drsfrostersmith.com>and
3. the Respondent has registered and is using the Domain Name <drsfrostersmith.com>, in bad faith.
DISCUSSION
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.”
In view of Respondent's failure to submit a response, the Panel decides 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 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.
The entity Jasper Development Pty Ltd was listed as the registrant in the Whois at the time of the filing of the complaint. When the complaint was filed, Complainant's counsel served a copy of the complaint upon the Registrar and Registrant, as required by the Policy, Rules, and Supplemental Rules. Either the Registrar or the Registrant promptly changed the Whois record to reflect Complainants counsel, though Complainants counsel had no control of the domain name. Because Complainant's counsel was now the registrant of record, counsel submitted a Response, consenting to the transfer of the domain name. The Panel finds that Jasper Development Pty Ltd participated in cyberflight after the initiation of the UDRP case and that it is the real respondent to this case and notes that Jasper Development Pty Ltd was served with a copy of the complaint. The Panel orders the National Arbitration Forum to amend the case caption accordingly and is proceeding absent the benefit of a Response from Jasper Development Pty Ltd.
Complainant submits evidence to show that it owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its DRS. FOSTER SMITH (Reg. No. 2,683,524 issued February 4, 2003) and DOCTORS FOSTER & SMITH marks (Reg. No. 2,524,313 issued January 1, 2002) that it uses to promote and conduct business in the pet care industry. The Panel finds that such registrations are sufficient for Complainant to establish rights in its marks pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant argues that the <drsfrostersmith.com> domain name is confusingly similar to its family of marks, most specifically the DRS. FOSTER SMITH mark. Complainant argues that the disputed domain name contains a misspelled version of its mark by deleting spaces between the terms of the mark, omitting the period after the “drs” term of the mark, adding the letter “r” to the mark, and adding the generic top-level domain (“gTLD”) “.com.” Complainant contends that the above noted changes to its mark are not sufficient to render the domain name distinct from Complainant’s mark. The Panel also finds that the <drsfrostersmith.com> domain name is confusingly similar to Complainant’s DRS. FOSTER SMITH mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Memoirs, Inc. v. Patel, FA 98244 (Nat. Arb. Forum Aug. 28, 2001) (finding the domain name to be confusingly similar where a period was omitted from the I.MEMOIRS mark and the gTLD “.com” was added); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:
(a) He has made 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 prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Technologies, Inc. v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000); Inter-Continental Hotel Corporation v. Khaled Ali Soussi, D2000-0252 WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant argues that Respondent is not commonly known by the disputed domain name, and that Respondent has not been authorized or licensed by Complainant to use its marks in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent is using the disputed domain name to resolve to Respondent’s commercial website that features advertisements and third-party hyperlinks to competing pet supply companies and products. Complainant argues that such use cannot be viewed as a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant argues that Respondent is using the disputed domain name to resolve to a website that displays advertisements and third-party links to competing pet supply companies. The Panel is of the view that Respondent’s use of the disputed domain name disrupts Complainant’s pet supply business by diverting Internet users to Complainant’s competitors and is evidence of Respondent’s 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent is attempting to profit from Complainant’s famous marks by creating a likelihood of confusion as to the sponsorship or affiliation of Respondent’s website and third-party links thereon. Complainant contends that Respondent is attempting to attract Internet users to its website by using a closely similar domain name to Complainant’s mark in order to divert Internet traffic to Respondent’s website. The Panel finds that Respondent’s use of the disputed domain name to maintain a commercial website that displays third-party hyperlinks to competing pet supply companies, presumably for commercial profit, is further evidence of Respondent’s 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 Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <drsfrostersmith.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda
Panelist
Dated: October 27, 2010
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