Pet Food Express Ltd. v. keith brown / Densvideos.com
Claim Number: FA2101001929201
Complainant is Pet Food Express Ltd. (“Complainant”), represented by Melissa S. LaBauve of Fleckman & McGlynn, PLLC, Texas, USA. Respondent is keith brown / Densvideos.com (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <petfoodexpressnow.net>, registered with NameCheap, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 21, 2021; the Forum received payment on January 21, 2021.
On January 21, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <petfoodexpressnow.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 January 25, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 22, 2021 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@petfoodexpressnow.net. Also on January 25, 2021, 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 Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send emails to the Forum, see below.
On February 26, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 states that it is a chain of retail stores that offers various pet products for sale, including premium brand pet food. Complainant operates over 60 stores in the United States. Complainant partners with more than 100 non-profit animal rescue groups and manages pet adoption centers within its stores. Complainant owns and uses the domain name <petfoodexpress.com> as its primary website and <petfood.express> to operate its online ordering and delivery services. Complainant has rights in the PET FOOD EXPRESS mark through its registration in multiple jurisdictions, including in the United States in 1996.
Complainant alleges that the disputed domain name is confusingly similar to its PET FOOD EXPRESS mark as it differs only by the addition of the generic term “now” and the “.net” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name as it is not commonly known by the disputed domain name and has not been licensed or authorized to use the PET FOOD EXPRESS mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent diverts Internet traffic to a website that offers goods in direct competition with Complainant. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain to sell goods in competition with Complainant. Additionally, Respondent had constructive notice of Complainant’s rights in the PET FOOD EXPRESS mark when the disputed domain name was registered. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its three emails to the Forum, Respondent states, in pertinent part (emphases added):
I’m willing to settle this without it going any further if it means releasing the domain name back to the previous owner who seems to be kicking up a fuss over the domain name that don’t mean that much to me. This will be give-back by my own accord providing the case dispute is cancelled as I purchased the domain in good faith and to me the name is not worth all this unnecessary legal challenge. Obviously to the previous owner it may mean a lot more. But providing my name is not going to be dragged through the mud or try to leave a bad stain on my name.
I am hoping that the dispute can be suspended based on transferring the domain name petfoodexpressnow.net over to pet food express ltd. I have never heard about pet food express ltd prior to purchasing petfoodexpressnow.net and the purchase was not in bad faith. Pet food express is not a generic name, and petfoodexpressnow.net Is not a strong trademark name; it is descriptive term. I was not cyber squatting or targeting any of pet food express ltd clients. I know nothing about the business; I’m a lay person, there is no attempt to harm or steal this company as there is no distinctive mark. My point is anyone can use the words pet food express as it is a commonly used word. So I would just like you to take the domain petfoodexpressnow.net and leave me alone.
I have reached out to all parties concerned to let you know that I’m not going to contest this matter You can have the domain name, and there is really no need to spend money in fighting this case as I’m not contesting this as I express my deepest regret apology for causing any unnecessary distress. Again there was no bad intent on my part to cause any damage or harm to anyone. If I knew the domain name had an active trademark name, I would not have used it at all. I knew nothing about pet food express Ltd. … I have made it clear this is a genuine mistake and the domain was not purchased in bad faith. … So they can take the domain name and do as they see fit with it. One fact of the matter is I was not cybersquatting. …
For the reasons set forth below, the Panel will not make any findings of fact.
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.
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 the present case, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
Given the common request of the Parties, it is Ordered that the <petfoodexpressnow.net> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 26, 2021
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