PSP Franchising LLC v. The Amazon Associates
Claim Number: FA1202001431414
Complainant is PSP Franchising LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller Schwartz and Cohn LLP, Michigan, USA. Respondent is The Amazon Associates (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pet-supplies-plus.net>, registered with Domain.com, LLC.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2012; the National Arbitration Forum received payment on February 27, 2012.
On February 24, 2012, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <pet-supplies-plus.net> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC 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 March 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 21, 2012 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-supplies-plus.net. Also on March 1, 2012, 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 April 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 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
Complainant and Its Goods and Services
A Well-Known, Booming Business. Complainant is an extremely well-known animal specialty store with locations throughout the U.S. that features a wide-variety of animal products and accessories, including food, housing, bedding, toys, and grooming products, for dogs, cats, birds, fish, reptiles, and other small animals. Complainant opened its first store using the PET SUPPLIES PLUS Mark in 1988, and Complainant first offered franchising services under the PET SUPPLIES PLUS Mark in 1990. Complainant’s business has expanded in recent years to include grooming, as well as training and obedience classes at many locations. Additionally, Complainant hosts adoption events and other special events such as pet vaccination clinics. Complainant’s flagship website, PetSuppliesPlus.com (“Complainant’s Website”), has been in use by Complainant since 1997. Since opening its first store in the United States under the PET SUPPLIES PLUS Mark, Complainant has spent substantial sums of money to promote and advertise the brand. Complainant’s marketing, advertising, and promotion have been successful as demonstrated by the response of consumers. In 2010, Complainant had sales of $549 million dollars. As of 2011, there are over 240 PET SUPPLIES PLUS stores in 22 states, making PET SUPPLIES PLUS one of the largest retailers of pet foods and supplies in the country.
Incredibly Valuable Goodwill. The popularity of the PET SUPPLIES PLUS brand and the resulting consumer recognition is evidenced by Complainant’s continued expansion throughout the U.S. and its strong sales figures. The strong sales figures of the PET SUPPLIES PLUS stores and its continuous growth indicates that that PET SUPPLIES PLUS is a famous trademark and a brand of incredibly valuable goodwill to Complainant.
Complainant’s Website. Complainant’s primary website is at www.PetSuppliesPlus.com. Complainant’s Website is comprised of the distinctive and well-known PET SUPPLIES PLUS Mark. Complainant’s Website not only provides consumers with PET SUPPLIES PLUS store locations, but it also provides information about the products and services that Complainant offers at its PET SUPPLIES PLUS stores throughout the U.S., the PET SUPPLIES PLUS monthly flyer and information about email offers, information about franchising opportunities, and information related to animal care generally. The search metric database Alexa.com ranks the PetSuppliesPlus.com site as among the top 25,000 sites in the United States. Complainant’s Website serves as a direct and vital link to its customers. Complainant also owns the domains PetSuppliesPlus.us and PetSuppliesPlusPPC.com, which include the distinctive and well-known PET SUPPLIES PLUS Mark.
Complainant’s Trademarks
The PET SUPPLIES PLUS Mark symbolizes the tremendous goodwill associated with Complainant and Complainant’s services. The PET SUPPLIES PLUS Mark is well-known, distinctive, and extremely valuable. The PET SUPPLIES PLUS Mark has been widely promoted among members of the general consuming public. The PET SUPPLIES PLUS Mark exclusively identifies Complainant and its services. Furthermore, due to widespread, continuous, and highly publicized use throughout the United States, the PET SUPPLIES PLUS Mark has become famous and was famous before Registrant registered the Domain Name in 2011.
Complainant owns the following U.S. trademark registrations for the PET SUPPLIES PLUS Mark (in word, design, or stylized form):
a. U.S. Reg. No. 1708560 for the mark PET SUPPLIES “PLUS” filed November 8, 1990, and issued August 18, 1992, for use in connection franchising and rendering technical aid and assistance in the establishment and operation of pet merchandise stores and retail discount pet foods and supplies store services;
b. U.S. Reg. No. 1712087 for the mark PET SUPPLIES PLUS filed November 8, 1990, and issued September 1, 1992, for use in connection with franchising and rendering technical aid and assistance in the establishment and operation of pet merchandise stores and retail discount pet foods and supplies store services;
c. U.S. Reg. No. 2190176 for the mark PET SUPPLIES “PLUS” & Design filed April 14, 1995, and issued September 22, 1998, for use in connection with franchising and rendering technical aid and assistance in the establishment and operation of pet merchandise store services and retail pet foods and supplies store services; and
d. U.S. Reg. No. 3135599 for the mark PET SUPPLIES “PLUS” YOUR PET’S FAVORITE STORE filed August 31, 2005, and issued August 29, 2006, for use in connection with retail pet foods and supplies store services; franchising and rendering technical aid and assistance in the establishment and operation of pet merchandise stores.
Complainant’s trademark rights in the PET SUPPLIES PLUS Mark, based on its trademark registrations and common law rights acquired through the use of the PET SUPPLIES PLUS Mark, the corresponding PetSuppliesPlus.com domain name, and the PetSuppliesPlus.us and PetSuppliesPlusPPC.com domain names, long predate Respondent’s registration of the Domain Name on February 2, 2010.
Respondent’s Infringing Activities and Bad Faith Acts
Respondent misappropriated Complainant’s goodwill when it registered the Domain Name, which is confusingly similar to Complainant’s PET SUPPLIES PLUS Mark and the PetSuppliesPlus.com domain name, as well as Complainant’s PetSuppliesPlus.us and PetSuppliesPlusPPC.com domain names. Specifically, the Domain Name is comprised entirely of Complainant’s registered trademark, namely, PET SUPPLIES PLUS, and Complainant’s PetSuppliesPlus.com domain name, with the only difference being that the Domain Name utilizes a hyphen between the words “PET” and “SUPPLIES” and “PLUS” and utilizes the “.net” top-level domain. “[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).” Health Devices Corp. v. Aspen S T C, FA0305000158254 (Nat. Arb. Forum July 1, 2003). See also National Westminster Bank plc v. Westbrom c/o Natalie, FA0706001008190 (Nat. Arb. Forum July 25, 2007) (finding Respondent’s nat-west.nw.com domain name confusingly similar to Complainant’s NATWEST mark under Policy ¶4(a)(i), stating “Respondent’s inclusion of several hyphens and the generic top-level domain “.com” alongside Complainant’s NATWEST mark does not sufficiently distinguish Respondent’s disputed domain name from Complainant’s registered mark.”); Innomed Techs., Inc. v. DRP Servs., FA0312000221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); and InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features.”).
Given the consumer recognition, distinctiveness, and fame of Complainant’s PET SUPPLIES PLUS Mark, there can be no doubt but that Respondent registered the Domain Name to trade upon Complainant’s goodwill and to attract and divert Complainant’s customers for profit. Respondent’s Domain Name consists of the well-known PET SUPPLIES PLUS Mark, and by the time Respondent registered the Domain Name, Complainant’s PET SUPPLIES PLUS Mark had been well-established.
Respondent’s PET-SUPPLIES-PLUS.NET website (the “Infringing Website”) contains various links to commercial websites that feature pet products, but no other content that would provide any good faith reason for the registration. No bona fide goods and services appear to have been offered on the Infringing Website. This further demonstrates that the Domain Name was intentionally derived from Complainant’s PET SUPPLIES PLUS Mark, rather than representing any unique goodwill or identity of the Respondent.
Respondent’s use of the Domain Name with the Infringing Website was intentionally designed to cause a likelihood of confusion with Complainant and its services and to deceive consumers into mistakenly believing that Respondent is authorized, licensed, or sponsored by Complainant, or is otherwise connected, associated, or affiliated with Complainant and/or its PET SUPPLIES PLUS Mark and Complainant’s Website. The Infringing Website does not currently contain anything of substance or any legitimate offering of products or services, and only links to various pet-product related websites, including links to Complainant’s competitors. Moreover, the Domain Name is strikingly similar to Complainant’s PetSuppliesPlus.com and PetSuppliesPlus.us domain names.
As evidenced above, Respondent’s misappropriation of the Domain Name has injured and will continue to irreparably injure the reputation and hard-earned goodwill of Complainant and its PET SUPPLIES PLUS Mark. If Respondent is allowed to retain ownership of the infringing Domain Name, Internet users will continue to be confused and deceived, and Complainant’s reputation will be harmed.
RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTEREST IN THE DOMAIN NAME
Respondent is not using, has not used, and/or has not demonstrated an intent to use the Domain Name in connection with a bona fide offering of goods or services. Respondent is not now and never has been commonly known by the Domain Name. Respondent is not making legitimate noncommercial or fair use of the Domain Name, without intending to mislead and divert consumers or to dilute Complainant’s PET SUPPLIES PLUS Mark for commercial gain.
Respondent uses the Domain Name in connection with its Infringing Website, which features links to the commercial websites of Complainant’s competitors. Respondent does not sell any products, and when Internet users click on the “Buy” button associated with any product, they are redirected to the underlying commercial site. Respondent likely collects “click-through” or “pay-per-click” profits by directing Internet users to the underlying commercial websites. Such use does not amount to a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii). See Vanguard Trademark Holdings USA LLC v. Server Thoughts, FA1112001421216 (Nat. Arb. Forum February 3, 2012) (holding that the respondent’s use of a domain name used in connection with a website that features links to the websites of the complainant’s competitors, while likely receiving profits in the form of “click-through” associated with the visits of Internet users to the websites resolving from the hosted links, does not amount to a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iii)); ALPITOUR S.p.A. v. balata inc, FA FA0701000888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees . . . is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii).”); and Carey International, Inc. d/b/a Manhattan International Limousine Network Ltd v. Alex Kogan, FA FA0505000486191 (Nat. Arb. Forum July 29, 2005) (holding that a respondent’s use of disputed domain names, which were confusingly similar to the mark of a complainant, to market limousine services competing with the business of that complainant, was not a bona fide offering of goods or services under Policy ¶4(c)(i), where that respondent appropriated the mark in a domain name in order to profit from its use.).
RESPONDENT’S BAD FAITH UNDER SECTION 4(B) OF THE UDRP
Respondent’s registration and use of the Domain Name meets the bad faith element set forth in Sections 4(b)(iii) and (iv) of the UDRP. Respondent registered a Domain Name comprised entirely of the PET SUPPLIES PLUS Mark, which is a distinct and famous trademark. When coupled, the words PET SUPPLIES PLUS have no meaning other than as a trademark. Respondent uses the Domain Name to divert Internet users to its Infringing Website and away from Complainant’s legitimate website, PetSuppliesPlus.com. Respondent’s use of the Domain Name disrupts Complainant’s business by diverting consumers and such use infringes upon and dilutes Complainant’s PET SUPPLIES PLUS Mark.
Respondent’s registration and use of the Domain Name meets the bad faith element set forth in Section 4(b)(i) and (iv) of the UDRP. Specifically, because Respondent has no legitimate interest in the Domain Name and because it is clearly confusingly similar to Complainant’s PET SUPPLIES PLUS Mark and Complainant’s PetSuppliesPlus.com website domain, there can be no explanation other than that Respondent is attempting to highjack the Domain Name for financial gain or intentionally attracting users to the Infringing Website for commercial gain by creating a likelihood of confusion with the PET SUPPLIES PLUS Mark. As mentioned above, Respondent uses the Domain Name in connection with its Infringing Website, which features links to the commercial websites of Complainant’s competitors. Respondent likely collects “click-through” or “pay per click” profits by directing Internet users to the underlying commercial websites. Respondent does not directly sell any of the products it features on the Infringing Website. In fact, the “How to Shop” portion of the Infringing Website contains the following information: “How to Use pet-supplies-plus.net? 1. Search[.] Use our search text box to search for a particular product. 2. Compare Price for a particular product[.] Click on the Compare ## Prices button to show a list of stores selling that product. 3. Buy It[.] After you review the list of stores with different prices, click on the store logo to buy from that store.” (Emphasis added). Respondent appears to be affiliated with at least Amazon (which is one of Complainant’s competitors) via its “Amazon Associates” program, as evidenced by Respondent’s business name The Amazon Associates. Respondent references particular products using hyperlinks on the Infringing Website, which go directly to the Amazon.com site. See Provide Gifts, Inc. d/b/a RedEnvelope v. Privacy Ltd. Disclosed Agent for YOLAPT c/o Domain Admin, FA0909001286921 (Nat. Arb. Forum Nov. 9, 2009) (“Respondent has created a substantial likelihood of confusion as to the source and affiliation of the <redenevelope.com> domain name and the corresponding website. Respondent benefits from such a likelihood of confusion, as it receives referral fees for the competitive upscale gifts advertisements that are displayed to the diverted Internet users. The Panel finds this to be adequate evidence of Respondent’s bad faith registration and use pursuant to Policy ¶4(b)(iv).”), and 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).”).
Furthermore, because of the fame of the PET SUPPLIES PLUS Mark, it is virtually impossible to believe that Respondent did not have prior knowledge of Complainant’s rights when it registered the Domain Name. However, even without direct evidence of knowledge, the Panel may find that Respondent had constructive knowledge of Complainant’s marks, because the marks are well known and federally registered, and because Respondent’s use is so transparently opportunistic. See Orange Glo Int’l v. Blume, FA0208000118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”). “[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.” Digi Int’l v. DDI Sys., FA0209000124506 (Nat. Arb. Forum Oct. 24, 2002); See also Sea World, Incorporated v. Holix Inc., FA0702000924533 (Nat. Arb. Forum April 19, 2007) (“registration of a domain name containing Complainant’s well-known mark with knowledge of Complainant’s rights is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii)”); Samsonite Corp. v. Colony Holding, FA0003000094313 (Nat. Arb. Forum April 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Accordingly, there is a presumption of bad faith here.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The panel finds:
(1) The <pet-supplies-plus.net> domain name 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 <pet-supplies-plus.net> domain name; and
(3) the <pet-supplies-plus.net>domain name was registered and is being used in bad faith.
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order 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.
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.”).
Complainant claims to own the rights for its PET SUPPLIES PLUS mark by its many registrations with the USPTO (e.g., Reg. No. 1,712,087 registered September 1, 1992). The panels in Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) and Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) provide a complainant adequately establishes rights to its mark by registering the mark with the USPTO (inter alia). The Panel finds Complainant has succeeded in establishing its rights to the PET SUPPLIES PLUS mark for the purposes of Policy ¶4(a)(i) by registering the mark with the USPTO. Although the mark is not registered in China, where Respondent resides and operates, Complainant has established rights in the United States, which satisfies the requirement of Policy ¶4(a)(i). See 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); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues the disputed domain name is confusingly similar to its PET SUPPLIES PLUS mark. Complainant points out the <pet-supplies-plus.net> domain name incorporates the entire PET SUPPLIES PLUS mark, replaces the spaces between the words with hyphens, and adds the generic top-level domain (“gTLD”) “.net.” The panel in Nat’l Westminster Bank PLC v. Westrbrom, FA 1008190 (Nat. Arb. Forum July 25, 2007), held that adding hyphens and a gTLD to a mark did not sufficiently distinguish the disputed domain name from the complainant’s mark. In U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007), the panel stated that eliminating the spaces between words “does not establish distinctiveness from the complainant’s mark.” The Panel finds the disputed domain name is confusingly similar to Complainant’s PET SUPPLIES PLUS mark under Policy ¶4(a)(i) due to Respondent’s use of the entire mark, while adding only hyphens in place of spaces, and adding the gTLD “.net.”
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). The burden then shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the 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, which 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 argues Respondent is not commonly known by the <pet-supplies-plus.net> domain name, and it does not have permission to use the registered mark in any manner. Complainant offers the WHOIS information as evidence the domain name registrant is “The Amazon Associates,” which does not demonstrate Respondent is commonly known by the disputed domain name. The Panel determines, according to the WHOIS information provided, Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further claims Respondent created the website to collect “click-through” fees by redirecting Internet users who click on the displayed hyperlinks to competitors’ websites, which Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶4(c)(i) or 4(c)(iii). Complainant submitted screenshots showing the hyperlinks displayed on the resolving website lead to competing websites. In ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), the panel held no rights or legitimate interests existed in the domain name when the respondent’s only use of the website was to offer links to competing commercial websites and determined that such use was not a bona fide offering of goods or services. The panel in Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) similarly stated that advertising hyperlinks to competitors’ websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. By displaying hyperlinks to businesses whose goods and services compete with those of Complainant, Respondent is not using the domain name in 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).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent’s registration and use of the <pet-supplies-plus.net> domain name disrupts Complainant’s business by using a confusingly similar domain name to divert consumers from its website to competitors’ websites. Complainant claims such use is evidence of bad faith. This Panel finds Complainant’s business is disrupted because of Respondent’s use of the website to offer hyperlinks to Internet traffic, which constitutes bad faith registration and use under Policy ¶4(b)(iii). See 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); 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 Respondent collects revenue from visitors who click on the offered links on the web page, which amounts to bad faith registration under Policy ¶4(b)(iv). Complainant contends Respondent takes advantage of the confusing similarity of the domain name to Complainant’s mark to attract consumers to the corresponding website, where visitors are invited to click on the displayed hyperlinks, which in turn generate fees collected by Respondent. This Panel holds Respondent’s use of the domain name confuses consumers, attracts traffic, and Respondent profits from the confusion. All of this constitutes bad faith registration and use under 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant claims Respondent had prior knowledge of Complainant’s rights in the PET SUPPLIES PLUS mark because the mark existed long before Respondent registered the disputed domain name. Complainant argues Respondent has constructive knowledge of Complainant's rights in the mark. Past panels have held constructive knowledge in a mark alone is not adequate to make a finding that Respondent registered a domain name in bad faith. However, the Panel finds Respondent had actual knowledge of the mark prior to registering the disputed domain name because of the notoriety of the mark. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <pet-supplies-plus.net> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, April 10, 2012
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