High Tech Pet Products, Inc. v. NA
Claim Number: FA1309001521465
Complainant is High Tech Pet Products, Inc. (“Complainant”), represented by Gary J. Nelson of Christie, Parker & Hale, LLP, California, USA. Respondent is NA (“Respondent”), Saint Kitts and Nevis.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hitechpet.com>, registered with DNC Holdings, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 25, 2013; the National Arbitration Forum received payment on September 25, 2013.
On September 26, 2013, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <hitechpet.com> domain name is registered with DNC Holdings, Inc. and that Respondent is the current registrant of the name. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, 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 September 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 21, 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@hitechpet.com. Also on September 30, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, High Tech Pet Products, Inc., uses its HIGH TECH PET mark in connection with its promotion and sale of its innovative pet products, including pet doors, pet collars, pet training products, and pet crates, gates, and houses. Complainant owns rights in the HIGH TECH PET mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,893,863 filed May 7, 2010, registered December 21, 2010). In addition, Complainant owns common law rights in the HIGH TECH PET mark through its continuous use of the mark in commerce since 1992.
Respondent, NA, registered the <hitechpet.com> domain name on April 20, 2004. The domain name resolves to a website that promotes links to various third-party websites, some of which directly compete with Complainant in the pet product industry, and which states that the domain name is available for purchase and solicits offers.
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.
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’s registration of its HIGH TECH PET mark with the USPTO establishes its rights in the mark under Policy ¶ 4(a)(i) effective the date of filing of the application, May 7, 2010. See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). See also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002)(the date of filing of the application for the trademark registration is the effective date of Complainant’s rights in the mark). A complainant’s registration of its mark with the USPTO is sufficient of complainant’s rights in the mark under the Policy even if the respondent operates out of a different country. 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
While Complainant has rights in its HIGH TECH PET mark through its USPTO registration, the registration, with application filing date of May 7, 2010, is predated by the disputed domain name’s registration on April 20, 2004. However, a Complainant may show that it has valid rights in a mark through common law that predate the domain name’s registration. See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant alleges that it gained common law rights in the HIGH TECH PET mark through its continuous use of the mark in commerce since 1992. Complainant made substantial sales to customers in the United States and across the world. Complainant uses its HIGH TECH PET mark in connection with its promotion and sale of its innovative pet products, including pet doors, pet collars, pet training products, and pet crates, gates, and houses. Previous panels have held that secondary meaning indicating a complainant’s common law rights in a mark is established when, in the minds of the public, the mark indicates the complainant as the source of a product. AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). A complainant can establish secondary meaning through evidence of the complainant’s continuous use of the mark in connection with its products or services and the amount of sales the complainant gains from its use of the mark. See Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”). Here, Complainant has submitted evidence which demonstrates Complainant’s continuous use of the HIGH TECH PET mark since at least 2000, at which time Complainant attained hundreds of dollars in profits from sales made under the mark. Accordingly, the Panel determines that Complainant has established that the mark has developed a secondary meaning in the eyes of the product, identifying Complainant as the source of products marketed under the HIGH PET TECH mark. The Panel finds that Complainant has established its rights in the HIGH TECH PET mark under Policy ¶ 4(a)(i), effective since at least 2000.
Complainant next alleges that the <hitechpet.com> domain name is confusingly similar to its HIGH TECH PET mark, because the domain name merely deletes the letters “g” and “h.” Moreover, the resulting <hitechpet.com> domain name is phonetically identical to Complainant’s HIGH TECH PET mark. The disputed domain name eliminates the spaces found between words in the HIGH TECH PET mark and adds the generic top-level domain (“gTLD”) “.com.” However, a domain name’s elimination of spaces between words and addition of a gTLD does not establish distinctiveness from the complainant’s mark under the Policy. 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)). Also, a domain name that is phonetically identical to a complainant’s mark is confusingly similar to the mark under Policy ¶ 4(a)(i). See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also Therma-Cote, Inc. v. OU Computernik, FA 1257229 (Nat. Arb. Forum May 10, 2009) (“[A] homophone is a word that is pronounced the same as another word but differs in meaning. . . . [I]t is well established precedent under the Policy that a domain name is confusingly similar to a trademark if it is a homonym of the mark.”). In the instant case, the Panel determines that the <hitechpet.com> domain name is phonetically identical to Complainant’s HIGH TECH PET mark, because the word “hi” found in the domain name is a homonym of the word “high” found in the mark, and the remaining words “tech” and “pet” are fully appropriated by the domain name. The Panel finds that the disputed domain name is confusingly similar to the HIGH TECH PET mark under 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 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).
Complainant argues that Respondent is not commonly known by the disputed domain name, because the WHOIS information identifies the registrant of the disputed domain name as “NA,” not “Hi Tech Pet.” Previous panels have found that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) where there is no evidence on the record, including the WHOIS information, to suggest otherwise. See, e.g., 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). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant next alleges that Respondent’s use of the <hitechpet.com> domain name is not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii) because the domain name resolves to a passive website that promotes links to various third-party websites, some of which directly compete with Complainant in the pet product industry. The <hitechpet.com> domain name is being used to promote links to Complainant’s competitors in the pet product industry. Specifically, the disputed domain name resolves to a website that promotes links entitled, “Electronic Pet Doors,” “Best Wireless Dog Fence,” “Pet Safe Dog Doors,” “Electronic Dog Collar,” “Invisible Pet Fences,” “Pet Doors for Class Doors,” “Patio Pet Doors,” and “Pet Supplies Cheap.” See Complainant’s Exhibit C. A respondent’s use of a disputed domain name confusingly similar to a complainant’s mark to promote links to third parties that directly compete with the complainant is not a use that is protected under Policy ¶¶ 4(c)(i) or 4(c)(iii). See, e.g., United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Accordingly, Respondent’s use of the disputed domain name is not protected as 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 alleges that Respondent has demonstrated bad faith registration and use of the <hitechpet.com> domain name under Policy ¶ 4(b)(i), because the disputed domain name resolves to a website that states that the domain name is available for purchase and solicits offers. See Complainant’s Exhibit C. According to a screenshot provided by Complainant, the disputed domain name’s resolving website states, “HiTechPet.com is available for purchase. Make an offer.” In Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000), the panel held that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith.” The Panel determines that Respondent has made a general offer to sell the domain name, and that this offer evidences Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(i).
Complainant next alleges that Respondent has demonstrated bad faith registration and use under Policy ¶ 4(b)(iii), because the disputed domain name targets potential customers of Complainant and the resolving website in turn diverts these customers to third-party competitors of Complainant by displaying hyperlinks. A respondent demonstrates bad faith disruption under Policy ¶ 4(b)(iii) where the confusingly similar domain name resolves to a website that displays hyperlinks to the complainant’s competitors. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). As the <hitechpet.com> domain name resolves to a website that displays links to Complainant’s competitors, Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).
Complainant next argues that Respondent has demonstrated bad faith registration and use under Policy ¶ 4(b)(iv) because the <hitechpet.com> domain name is likely to mislead Internet users seeking services under Complainant’s HIGH TECH PET mark, and Respondent is likely benefiting from this confusion in the form of click-through fees. Respondent’s resolving website displays a variety of links to Complainant’s competitors. See Complainant’s Exhibit C. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel stated that the respondent’s use of the misleading <mailonsunday.com> domain name was evidence of the respondent’s bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to the complainant's competitors and the respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees. The disputed domain name is misleading, since the <hitechpet.com> domain name is phonetically identical to the HIGH TECH PET mark. As the disputed domain name provides links to Complainant’s competitors in the pet product industry, the Panel presumes that Respondent is receiving click-through fees for its promotion of these competitors. Accordingly, the Panel finds that Respondent has demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant argues that at the time the disputed domain name was registered, Respondent had actual notice of Complainant’s HIGH TECH PET mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). Complainant suggests that Respondent’s actual knowledge of Complainant and its rights in the HIGH TECH PET mark can be inferred since Complainant is so well-known in the pet industry. Previous panels have found that a respondent who registers a confusingly similar domain name with full knowledge of Complainant and its famous mark demonstrates bad faith under 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). Previous panels have found such actual notice indicating bad faith where the complainant and its mark are well known. See, e.g., Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it). Since, Complainant’s HIGH TECH PET mark is well-known in the pet industry, the Panel determines that Respondent registered the phonetically identical <hitechpet.com> domain name with full knowledge of Complainant, and thus demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hitechpet.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: November 5, 2012
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