Merrick Pet Care, Inc. v. Matthew Lemos
Claim Number: FA1209001464550
Complainant is Merrick Pet Care, Inc. (“Complainant”), represented by Chris Stewart of Burdett, Morgan, Williamson & Boykin, LLP, Texas, USA. Respondent is Matthew Lemos (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <merrickdogfood.org>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 26, 2012; the National Arbitration Forum received payment October 1, 2012.
On September 27, 2012, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <merrickdogfood.org> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 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@merrickdogfood.org. Also on October 9, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 November 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant makes the following allegations in this proceeding:
a) Complainant has rights in the MERRICK mark, used in connection with pet food and treats. Complainant is the owner of a United States Patent and Trademark Office (“USPTO”) registration for the MERRICK mark (Reg. No. 3,114,011 registered July 11, 2006).
b) The <merrickdogfood.org> domain name is confusingly similar to the MERRICK mark. The disputed domain name is made up of Complainant’s mark, the descriptive terms “dog” and “food,” and the generic top-level domain (“gTLD”) “.org.”
c) Respondent is not commonly known by the <merrickdogfood.org> domain name. Respondent is not a licensee or in any other way affiliated with Complainant, and Respondent does not hold federal trademark rights in any variation of MERRICK in connection with dog food.
d) The <merrickdogfood.org> domain name resolves to a website where Respondent advertises, via links to Complainant’s competitors, goods that seek to compete with those that Complainant offers in connection with the MERRICK mark.
e) The <merrickdogfood.org> domain name is disruptive to Complainant’s business. Complainant offers pet food and treats in connection with the MERRICK mark, and Respondent uses the disputed domain name to display links to competing pet foods and treats.
f) Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s Mark. On the <merrickdogfood.org> domain name, Respondent displays photographs of Complainant’s products and the MERRICK mark on the disputed domain name’s resolving website. The mark is registered to Complainant and the photographs are part of a compilation, which has been registered with the United States Copyright Office entitled, “Various Merrick Images” (Reg. No. Wau 957-477 registered September 28, 2007). Respondent intends for Internet users to believe that Complainant is the source of the <merrickdogfood.org> domain name. Respondent profits from the operation of the disputed domain name.
g) Respondent registered the <merrickdogfood.org> domain name with constructive knowledge of Complainant’s rights in the MERRICK mark, as evidenced by Complainant’s ownership of trademark registrations for the MERRICK mark dating seven years prior to the <merrickdogfood.org> domain name’s registration.
Respondent did not submit a Response.
a) The Panel notes that Respondent registered the <merrickdogfood.org> domain name June 25, 2012.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has protected rights.
The Panel finds that Respondent has no rights to or legitimate interests in the domain name containing Complainant’s protected mark.
The Panel finds that Respondent registered and used the disputed domain name 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."
Paragraph 4(a) of the Policy requires Complainant to 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 to 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.
Given 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 will draw such inferences as the Panel 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 asserts that it has rights in the MERRICK mark. Complainant states that the mark is used in connection with pet food and treats. Complainant provides the Panel with evidence that Complainant is the owner of a USPTO registration for the MERRICK mark (Reg. No. 3,114,011 registered July 11, 2006). Registration of a mark with a trademark authority is evidence of having established rights in that mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Additionally, rights established by trademark registration satisfy Policy ¶ 4(a)(i) irrespective of whether the respondent resides in the country where the mark is registered. 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). Therefore, the Panel finds that Complainant has rights in the MERRICK mark pursuant to Policy ¶ 4(a)(i).
Complainant next alleges that the <merrickdogfood.org> domain name is confusingly similar to the MERRICK mark. According to Complainant, the disputed domain name is made up of Complainant’s mark, the descriptive terms “dog” and “food,” and the gTLD “.org.” The addition of descriptive terms to a mark does not differentiate the disputed domain name enough from the mark within it to negate a finding of confusing similarity. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002). Additionally, the presence of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007). Therefore, the Panel finds that Respondent’s <merrickdogfood.org> domain name is confusingly similar to Complainant’s MERRICK mark in accordance with Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has protected rights; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have such 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 asserts that Respondent is not commonly known by the <merrickdogfood.org> domain name. According to Complainant, Respondent is not a licensee or in any other way affiliated with Complainant. Additionally, Complainant notes that Respondent does not hold federal trademark rights in any variation of the MERRICK mark in connection with dog food. The Panel notes that the WHOIS record for the <merrickdogfood.org> domain name lists “Matthew Lemos” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <merrickdogfood.org> domain name 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).
Complainant contends that Respondent’s use of the <merrickdogfood.org> domain name is further evidence of Respondent’s lack of rights and legitimate interests. Complainant asserts that the <merrickdogfood.org> domain name resolves to a website where Respondent advertises, via links to Complainant’s competitors, goods that compete with those that Complainant offers in connection with the MERRICK mark. Display of links to competitors is not a use that falls within the protective realm of Policy ¶¶ 4(c)(i) and 4(c)(iii). See 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)). Therefore, the Panel finds that Respondent’s use of the <merrickdogfood.org> domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and uses the <merrickdogfood.org> domain name in bad faith. Complainant argues that the <merrickdogfood.org> domain name is disruptive to Complainant’s business. According to Complainant, it offers pet food and treats in connection with the MERRICK mark, and Respondent uses the disputed domain name to display links to competing pet foods and treats. Therefore, the Panel finds that Complainant and Respondent are competitors in the pet food and treats market. In Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), the panel held that the display of links to competing goods or services is disruptive to the respective complainant. Therefore, the Panel finds that Respondent registered and is using the <merrickdogfood.org> domain name disruptively, and thus in bad faith, under Policy ¶ 4(b)(iii).
Complainant contends that Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s Mark. Complainant contends that the disputed domain name promotes the goods and services of Complainant’s competitors, such as Blue Buffalo, by displaying links on the <merrickdogfood.org> domain name’s resolving website. Complainant states that, on the <merrickdogfood.org> domain name, Respondent displays photographs of Complainant’s products and the MERRICK mark on the disputed domain name’s resolving website. Complainant argues that the mark is registered to Complainant, and the photographs are part of a compilation that has been registered with the United States Copyright Office entitled, “Various Merrick Images” (Reg. No. Wau 957-477 registered September 28, 2007). Complainant asserts that Respondent intends for Internet users to believe that Complainant is the source of the <merrickdogfood.org> domain name. Complainant also claims that Respondent profits from the operation of the disputed domain name. Therefore, the Panel finds that Respondent’s registration and use of the <merrickdogfood.org> domain name is a bad faith attempt to take commercial advantage of Internet users’ mistakes under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Next, Complainant alleges that Respondent registered the <merrickdogfood.org> domain name with constructive knowledge of Complainant’s rights in the MERRICK mark. Complainant contends that this is evidenced by Complainant’s ownership of trademark registrations for the MERRICK mark dating seven years prior to the <merrickdogfood.org> domain name’s registration. The Panel notes that constructive knowledge alone is generally considered to be insufficient for a finding of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). However, the Panel finds that Respondent’s use shows actual knowledge of Complainant’s rights in the MERRICK mark given evidence Complainant provided, such as Respondent’s use of Complainant’s copyrighted images on the confusingly similar domain name. The Panel finds that Respondent registered and is using the <merrickdogfood.org> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See 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).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <merrickdogfood.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 21, 2012.
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