Radio Systems Corporation (a Delaware corporation) v. Carl Couric c/o CarlC Computer Corp.
Claim Number: FA1301001478714
Complainant is Radio Systems Corporation (a Delaware corporation) (“Complainant”), represented by William D. Schultz, Esquire of Merchant & Gould, P.C., Minnesota, USA. Respondent is Carl Couric c/o CarlC Computer Corp. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <petsafe.org>, registered with TierraNet Inc. d/b/a DomainDiscover.
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.
M. Kelly Tillery, Esquire as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 4, 2013; the National Arbitration Forum received payment on January 4, 2013.
On January 4, 2013, TierraNet Inc. d/b/a DomainDiscover confirmed by e-mail to the National Arbitration Forum that the <petsafe.org> domain name is registered with TierraNet Inc. d/b/a DomainDiscover and that Respondent is the current registrant of the name. TierraNet Inc. d/b/a DomainDiscover has verified that Respondent is bound by the TierraNet Inc. d/b/a DomainDiscover 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 January 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 28, 2013 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@petsafe.org. Also on January 7, 2013, 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.
A timely Response was received and determined to be complete on January 28, 2013.
Additional Submissions were timely received from Complainant and from Respondent.
On February 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that:
a) it is a provider of pet supplies and pet security products using the PETSAFE mark,
b) it is the owner of the PETSAFE® mark, including United States Patent and Trademark Office (“USPTO”) Registrations for the PETSAFE mark (e.g., Reg. No. 2,502,307 registered Oct. 30, 2001),
c) the <petsafe.org> domain name is confusingly similar to the PETSAFE® mark,
d) the addition of a generic top-level domain (“gTLD”) is not a distinguishing feature,
e) Respondent has no rights or legitimate interest in the <petsafe.org> domain name, as Respondent is not commonly known by the disputed domain name. Respondent is not a licensee of Complainant, Respondent previously associated the disputed domain name with a company by the name of Carlc Computer Corp which has no relation to the PETSAFE mark, the domain name previously resolved to a website which redirected Internet users to a commercial website at <carlc.com> and to adult-oriented content, and the disputed domain name is presently inactive,
f) Respondent registered and uses the <petsafe.org> domain name in bad faith as Respondent diverts Complainant’s web traffic to the disputed domain name, which then redirects Internet users to Respondent’s website at <carlc.com>,
g) Respondent’s use of PETSAFE in the domain name misappropriates Complainant’s goodwill and cheats consumers into clicking on Respondent’s website when they think they will see information regarding Complainant and its PETSAFE brand products,
h) The domain name has been used in the course of its time being owned by Respondent to redirect Internet users to adult-oriented websites,
i) Respondent is holding the <petsafe.org> domain name without presently making an active use of the disputed domain name, and
j) Respondent, when registering the <petsafe.org> domain name, had knowledge of Complainant’s rights in the PETSAFE® mark.
B. Respondent
Respondent contends that:
a) it never marketed anything under the PETSAFE name and never used the domain with intent to profit or to attempt to commercially gain,
b) the <petsafe.org> domain name was originally used for a local charity, which found temporary housing for pets of abused women,
c) Complainant threatened the owner of that charity and subsequently the domain name was pointed to websites not owned by Respondent,
d) the PETSAFE mark is purely descriptive,
e) the <petsafe.org> domain name is not confusingly similar as the addition of the gTLD “.org” denotes that the domain is used not in connection with sales but to provide information and assistance,
f) Respondent was using the <petsafe.org> domain name for a legitimate noncommercial or fair use until Complainant threatened the owner of the charity the domain was associated with a lawsuit,
g) the domain name is now only used in connection with e-mail functionality for the prior owner of the non-profit,
h) the <petsafe.org> domain name did redirect to <carlc.com> and to other websites, websites having no relation to Complainant or the PETSAFE products,
i) Respondent never registered or acquired the domain name for the purposes of selling, renting, or otherwise transferring the <petsafe.org> domain name to Complainant,
j) Respondent has held the disputed domain name since its original registration and has never offered it for sale to anyone,
k) Respondent did not register the domain name in order to prevent Complainant from reflecting the PETSAFE mark in a domain name, and Respondent has not engaged in a pattern of such conduct,
l) Respondent did not register the domain name to disrupt the business of a competitor,
m) Respondent did not intentionally attempt to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the PETSAFE mark as to the source, sponsorship, affiliation, or endorsement of the <petsafe.org> domain name,
n) the <petsafe.org> domain name was registered by Respondent on December 28, 2002.
1) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s Domain Name is identical to a trademark in which Complainant has rights.
2) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent has no rights or legitimate interest in respect of the Domain Name.
3) Complainant has met its burden to prove by a preponderance of the relevant, admissible evidence that Respondent’s 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."
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 is a provider of pet supplies and pet security products. Complainant notes that it uses the PETSAFE® mark in connection with the offerings of these products. Complainant is the owner of the PETSAFE® mark, including the USPTO Registrations for the PETSAFE® mark (e.g., Reg. No. 2,502,307 registered Oct. 30, 2001). It is well-established that the registration of a mark with a federal trademark authority establishes rights that satisfy the required showing under Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Complainant has rights in the PETSAFE® mark under Policy ¶ 4(a)(i).
Complainant asserts that the <petsafe.org> domain name is identical or confusingly similar to the PETSAFE® mark. The domain name, absent the gTLD is, of course, identical to Complainant’s mark. Complainant argues that the addition of a gTLD is not a distinguishing feature. Where a domain name differs from a mark merely due to the addition of a gTLD, the domain name is identical to the mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). As such, the Panel finds that the <petsafe.org> domain name is identical to the PETSAFE® mark pursuant to Policy ¶ 4(a)(i).
While Respondent contends that the <petsafe.org> domain name is comprised of common and descriptive terms and as such cannot be found to be identical to Complainant’s mark, the Panel need not address this issue under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
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 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 has no rights or legitimate interest in the <petsafe.org> domain name, in part because Respondent is not commonly known by the disputed domain name. Complainant notes that Respondent is not a licensee of Complainant, and Respondent previously associated the disputed domain name with a company by the name of Carlc Computer Corp which has no relation to the PETSAFE® mark. The <petsafe.org> domain name’s WHOIS record lists “Carl Couric c/o CarlC Computer Corp.” as the domain name Registrant. Accordingly, the Panel finds that Respondent is not commonly known by the <petsafe.org> domain name pursuant to Policy ¶ 4(c)(ii). See 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 argues that the previous use of the <petsafe.org> domain name was for neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant contends that the disputed domain name previously resolved to a website which redirected Internet users to Respondent’s unrelated, commercial website at <carlc.com>. The diversion of Internet users to a respondent’s own website that is unrelated to the Complainant is not a use which provides the registrant with rights or legitimate interests. See Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). Therefore, the Panel finds that Respondent’s previous use of the <petsafe.org> domain name, redirecting Internet users to its own commercial website, 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.
Complainant asserts that the <petsafe.org> domain name’s current inactivity is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Respondent argues that the disputed domain name is presently entirely inactive. Non-use of a domain is a strong indicator of a lack of rights and legitimate interests. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s failure to currently associate content with the <petsafe.org> domain name means that the disputed domain name is not being used for either a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Next, Complainant alleges that Respondent’s previous use of the <petsafe.org> domain name similarly fails to gain protection under Policy ¶¶ 4(c)(i) and 4(c)(iii). Complainant notes that the <petsafe.org> domain name was previously redirecting web traffic to adult-oriented content. See Complainant’s Exhibits 14 – 17. The panel in Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002), found that the association of a disputed domain name with adult-oriented content is clear evidence of a lack of rights and legitimate interests. Therefore, the Panel finds that Respondent has neither rights nor legitimate interests in the <petsafe.org> domain name under Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <petsafe.org> domain name in bad faith. Complainant first notes that Respondent previously diverted Complainant’s web traffic to the domain name, which then redirected Internet users to Respondent’s website at <carlc.com>. Complainant argues that Respondent’s use of PETSAFE in the domain name misappropriates Complainant’s goodwill and cheats consumers into clicking on Respondent’s website when they think they will see information regarding Complainant and its PETSAFE® brand products. The Panel infers that Respondent was commercially benefiting from this redirection. Intentionally confusing Internet users for the diversion for the purpose of commercial gain is evidence of bad faith. 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). Therefore, the Panel finds that Respondent’s registration and previous use of the <petsafe.org> domain name evidences bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues also that bad faith is clear because the domain name has been used in the course of its time being owned by Respondent to redirect Internet users to adult-oriented websites. Associating a disputed domain name with adult-oriented content presumptively demonstrates bad faith. See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith). Therefore, the Panel may find that Respondent’s previous redirection of Internet users to adult-oriented content demonstrates the bad faith registration and prior use of the <petsafe.org> domain name under Policy ¶ 4(a)(iii).
Complainant next alleges that Respondent’s registration and current nonuse of the disputed domain name further support bad faith claims. Complainant argues that Respondent is holding the <petsafe.org> domain name without presently making an active use of the disputed domain name. In DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel determined that inactive holding of a domain name demonstrates bad faith. The Panel finds that Respondent’s registration and present nonuse of the <petsafe.org> domain name are a product of bad faith under Policy ¶ 4(a)(iii).
Complainant also alleges that Respondent, when registering the <petsafe.org> domain name, had knowledge of Complainant’s rights in the PETSAFE mark. Complainant argues that Respondent should have conducted a trademark search prior to registering its domain name. Additionally, Complainant asserts that it has made extensive use of the PETSAFE® mark since as early as 1994. While some panels have concluded that constructive notice is not sufficient to support a bad faith finding, this Panel finds such notice sufficient, but further finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <petsafe.org> domain name be TRANSFERRED from Respondent to Complainant.
M. Kelly Tillery, Esquire, Panelist
Dated: February 12, 2013
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