Radio Systems Corporation v. Mustahsan ali Agha / Amazon affiliate
Claim Number: FA2104001939908
Complainant is Radio Systems Corporation ("Complainant"), represented by Ian G. McFarland of Merchant & Gould, P.C., Tennessee, USA Respondent is Mustahsan ali Agha / Amazon affiliate ("Respondent"), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <petsafe.us>, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 1, 2021; the Forum received payment on April 1, 2021.
On April 2, 2021, NameCheap, Inc. confirmed by email to the Forum that the <petsafe.us> 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 the U.S. Department of Commerce's usTLD Dispute Resolution Policy (the "Policy").
On April 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@petsafe.us. Also on April 7, 2021, 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.
A timely Response was received and determined to be complete on April 9, 2021.
Additional submissions were received from Complainant on April 12, 2021, and from Respondent on April 13, 2021.
On April 13, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 usTLD Dispute Resolution Policy ("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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the largest suppliers of pet products in the United States. Complainant has used PETSAFE in connection with the sale of pet supply goods since at least as early as 1998. Complainant owns multiple United States trademark registrations for PETSAFE both in standard character form and as a design mark.
Respondent registered the disputed domain name <petsafe.us> in April 2020 and is using it for a website that displays a logo that contains Complainant's PETSAFE mark but in other respects differs from the logo used by Complainant. The site identifies itself as "An informational blog featuring Amazon top rated products"; it consists primarily of images and affiliate links to various pet-related products on Amazon.com, many of which compete with Complainant's products. Following correspondence between the parties, Respondent added the following disclaimer to the website: "Petsafe.us doesn’t have any connections with PETSAFE® trademark." Respondent subsequently offered to sell the domain name to Complainant for $5,000, and later increased the asking price to $9,999. Complainant states that Respondent is not commonly known by the disputed domain name and has not been authorized or licensed to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <petsafe.us> is identical or confusingly similar to its PETSAFE mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent essentially agrees with Complainant's description of his website, stating that its intent is to review and link to products available on Amazon, through Amazon's affiliate program. Respondent denies that the website has any connection to Complainant or its products, and notes that he added a clarification to that effect after being contacted by Complainant. He explains that he selected the domain name because he desired to create an affiliate website related to pet supplies, and the domain name <petsafe.us> was available from the registrar. He acknowledges that he offered to sell the domain name to Complainant, explaining that he did so only after Complainant was unsatisfied with the clarification statement; that it was not previously his intent to sell the domain name; and that the asking price was a reflection of his effort and investment in building the website.
C. Additional Submissions
Under Paragraph 7 of the Forum's Supplemental Rules to the usTLD Dispute Resolution Policy, it is within the discretion of the Panel whether to accept or consider additional submissions. In general, additional submissions should be considered only in exceptional circumstances, such as where they reflect newly discovered evidence not reasonably available to the submitting party at the time of its original submission or rebut arguments by the opposing party that the submitting party could not reasonably have anticipated. See Deep Foods, Inc. v. Jamruke, LLC. c/o Manish Patel, FA 648190 (Forum Apr. 10, 2006).
None of those circumstances are present here, and the additional submissions largely reiterate arguments made in the parties' initial submissions. The Panel elects not to consider them.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered or 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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the usTLD Policy, the Panel will draw upon UDRP principles as applicable in rendering its decision.
The disputed domain name <petsafe.us> corresponds to Complainant's registered PETSAFE trademark, with the ".us" top-level domain appended thereto. The addition of a top-level domain such as ".us" is normally irrelevant for purposes of paragraph 4(a)(i) of the Policy. See, e.g., Huntsman International, LLC v. Milen Radumilo, FA 1910409 (Forum Oct. 4, 2020) (finding <huntsman.us> identical to HUNTSMAN); Fareportal Inc v. Anirban Das / Search Engine Pundits, FA 1718919 (Forum Apr. 11, 2017) (finding <cheapoair.us> identical to CHEAPOAIR); Radio Systems Corp. v. Carl Couric c/o CarlC Computer Corp., FA 1478714 (Forum Feb. 12, 2013) (finding <petsafe.org> identical to PETSAFE). The Panel considers the disputed domain name to be identical to Complainant's registered mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website whose purpose is to generate commissions from affiliate links to products offered for sale on Amazon.com, including products that compete directly with Complainant's products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., MTD Products Inc v. Abdullah Mahmud Ashik / SARDAH.COM, FA 1832254 (Forum Apr. 4, 2019) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered or is being used in bad faith.
Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "[b]y using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name corresponding to Complainant's registered mark and is using it to promote directly competing products via affiliate links to Amazon.com. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., MTD Products Inc v. Abdullah Mahmud Ashik / SARDAH.COM, supra (finding bad faith in similar circumstances). (The Panel places little weight on Respondent's offers to sell the domain name to Complainant, as it is not clear that Respondent registered the domain name primarily for that purpose.)
The Panel considers it reasonable to infer that Respondent selected <petsafe.us> because it corresponds to Complainant's well-known brand of pet supply products, and not merely because "it was available for purchase at namecheap.com," as Respondent claims. Indeed, Respondent intentionally targeted the United States by selecting a ".us" domain name. In doing so, he was required to claim to be a citizen of or otherwise have a presence in the United States. See Namecheap, Register Your .US Domain, https://www.namecheap.com/domains/registration/cctld/us/; usTLD Nexus Dispute Policy, https://www.about.us/policies/ustld-nexus-dispute-policy. The Panel therefore disregards the implicit claim that Respondent would not have been aware of Complainant's mark because he is located in Pakistan. Cf. Chamber of Commerce of the United States of America v. Albert Bauer, FA 1335605 (Forum Sept. 24, 2010) (finding bad faith based upon lack of required U.S. nexus); Illycaffe S.p.A. v. Esteban c/o Esteban Remecz, FA 1291938 (Forum Dec. 22, 2009) (same).
For the reasons stated above, the Panel finds that the disputed domain name was registered or is being used in bad faith.
Having considered the three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <petsafe.us> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 14, 2021
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