PSP Franchising LLC v. Indra Kurniawan
Claim Number: FA1107001400699
Complainant is PSP Franchising LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is Indra Kurniawan (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pet-suppliesplus.com>, registered with Onlinenic, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2011; the National Arbitration Forum received payment on July 29, 2011.
On July 29, 2011, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <pet-suppliesplus.com> domain name is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 18, 2011 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@pet-suppliesplus.com. Also on July 29, 2011, 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 August 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Respondent failed to file a Response. Respondent did send an e-mail to the Forum stating that she is a student who was unaware of Complainant and meant no harm in registering the disputed domain name. This e-mail does not amount to a proper Response and the Panel will proceed with this case as one in default.
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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <pet-suppliesplus.com> domain name confusingly similar to Complainant’s PET SUPPLIES PLUS mark.
2. Respondent does not have any rights or legitimate interests in the <pet-suppliesplus.com> domain name.
3. Respondent registered and used the <pet-suppliesplus.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PSP Franchising LLC, franchises and renders technical aid and assistance in the establishment and operation of pet merchandise stores and discount pet foods and supplies retail store services. It carries on these activities in connection with its PET SUPPLIES PLUS mark. Complainant has several registrations with the United States Patent and Trademark Office (“USPTO”) for the PET SUPPLIES PLUS and related marks (e.g., Reg. No. 1,712,087 registered September 1, 1992).
Respondent, Indra Kurniawan, registered the disputed domain name on January 19, 2011. The <pet-suppliesplus.com> domain name resolves to a website which displays links to third-party pet products websites which compete with Complainant.
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 contends that it has established rights in the PET SUPPLIES PLUS mark. The registration of a mark with a federal trademark authority, regardless of the location of the parties and the jurisdiction of the registration, establishes rights in a mark. 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 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 has provided the Panel with documentation of its registrations of the PET SUPPLIES PLUS and related marks (e.g., Reg. No. 1,712,087 registered September 1, 1992) with the USPTO. Therefore, the Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <pet-suppliesplus.com> domain name is confusingly similar to its PET SUPPLIES PLUS mark. Respondent has made the following changes to Complainant’s mark within the domain name: eliminated spaces between words, added the generic top-level domain (“gTLD”) “.com,” and added a hyphen. These changes are typically not considered substantial enough to differentiate a disputed domain name from the registered mark upon which the domain name is allegedly infringing. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel finds that the <pet-suppliesplus.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainants who make a prima facie case in support of their claims effectively move the burden of proof to the respondent to show rights and legitimate interests. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”). Complainant contends that Respondent has neither rights nor legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case in support of this claim, and the burden thus shifts to Respondent to disprove the assertion. However, according to EK Success, Ltd. v. Yi-Chi, CPR0314 (CPR June 12, 2003), and Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), without the benefit of a response from Respondent the Panel may presume that Respondent’s failure to response is indicative of Respondent’s lack of rights and legitimate interests. The Panel will, however, review the record for evidence suggesting that Respondent does have rights or legitimate interests.
Complainant argues that Respondent is not commonly known by the <pet-suppliesplus.com> domain name. The Panel’s determination of the validity of this statement can be made by review of the WHOIS record for the disputed domain name as well as of any other pertinent information which has been submitted. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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). The WHOIS information lists “Indra Kurniawan” as the domain name registrant. Given that this does not, even in part, reflect the <pet-suppliesplus.com> domain name, the Panel finds that this does not suggest that Respondent is commonly known by the disputed domain name. Furthermore, there is no information in the record which disputes or contradicts Complainant’s assertion. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next contends that Respondent has not used the <pet-suppliesplus.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. This has been found consistently true where a respondent registers and uses a disputed domain name to display links to websites of third parties which compete with the complainant. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a 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 pursuant to Policy ¶ 4(c)(iii)). The <pet-suppliesplus.com> domain name resolves to a website which displays links to third-party websites which offer pet products in competition with those that Complainant provides. Thus, the Panel finds that Respondent’s use of the disputed domain name constitutes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant argues that Respondent registered and uses the disputed domain name in order to disrupt Complainant’s business in connection with its PET SUPPLIES PLUS mark. Both Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), and Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), conclude that the use of a domain name to display links to third-party websites competing with the complainant is disruptive under Policy ¶ 4(b)(iii). The <pet-suppliesplus.com> domain name resolves to a website which displays links to third-party websites which are pet product-related. As a result, diverting Internet users to the disputed domain name will likely decrease the Internet traffic to and sales from Complainant’s website in connection with its mark. Therefore, the Panel finds that the <pet-suppliesplus.com> domain name was registered and used in a way which is disruptive and shows bad faith under Policy ¶ 4(b)(iii).
Finally, Complainant contends that the registration and use of the confusingly similar <pet-suppliesplus.com> domain name was due to the likelihood of confusion among Internet users that ultimately profits Respondent. Due to the confusing similarity of the disputed domain name, Internet users will be initially confused as to the affiliation of the <pet-suppliesplus.com> domain name with Complainant and Complainant’s mark. Upon entering the domain name, Internet users are presented with links to websites offering products similar to those that Complainant provides. Therefore, the Internet users’ uncertainty as to the association of the disputed domain name to Complainant will increase. Then, the Internet users may purchase pet products through the third-party websites reached from the links on the suppliesplus.com> domain name’s resolving website. The Panel infers that Respondent receives click-through fees when Internet users use the links displayed. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in a bad faith effort to commercially take advantage of a likelihood of confusion pursuant to Policy ¶ 4(b)(iv). See 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).”); 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)(iv) 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).
The Panel finds that Policy ¶ 4(a)(iii) is 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 <pet-suppliesplus.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 6, 2011
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