Fetch, Inc. v. Jay Lalli / California Pet Pharmacy
Claim Number: FA2306002047208
Complainant is Fetch, Inc. (“Complainant”), represented by Ashley Kessler, New York, USA. Respondent is Jay Lalli / California Pet Pharmacy (“Respondent”), represented by Vivek Vaidya of Bend Law Group, PC, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fetchpetmeds.com> and <fetchpetrx.com>, registered with Google LLC.
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.
Sozos-Christos Theodoulou as Panelist.
Complainant submitted a Complaint to Forum electronically on June 1, 2023; Forum received payment on June 1, 2023.
On June 2, 2023, Google LLC confirmed by e-mail to Forum that the <fetchpetmeds.com> and <fetchpetrx.com> domain names are registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google LLC 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 June 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 2023 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@fetchpetmeds.com, postmaster@fetchpetrx.com. Also on June 5, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
A deficient response was received after the deadline to file a response.
Also, Additional Submissions were received by both parties on July 10, 2023, and July 11, 2023, respectively.
On July 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sozos-Christos Theodoulou as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a pet insurance company. Complainant has rights in the FETCH mark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 6,702,460, registered on April 12, 2022). See Compl. Ex. B. Respondent’s <fetchpetmeds.com> and <fetchpetrx.com> domain names are identical or confusingly similar to Complainant’s FETCH mark as it merely adds the generic terms “pet” and either “meds” or “rx” and the “.com” generic top-level-domain name ("gTLD").
Respondent lacks rights or legitimate interests in the <fetchpetmeds.com> and <fetchpetrx.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Respondent been authorized by Complainant to use the FETCH mark. Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services as Respondent registered the disputed domain names to cause consumer confusion with Complainant.
Respondent registered and uses the <fetchpetmeds.com> and <fetchpetrx.com> domain names in bad faith. Respondent’s website disrupts Complainant’s business as Respondent registered the disputed domain name to confuse users. Additionally, Respondent had actual knowledge of Complainant’s rights to the FETCH mark prior to registering the disputed domain names. Finally, Respondent used a privacy service to register the domain names in order to conceal its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel notes that the <fetchpetmeds.com> and <fetchpetrx.com> domain names were registered on May 4, 2023 and February 7, 2023, respectively. See Compl. Ex. D.
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.
Preliminary Issue: Deficient Response
The Response was received after the deadline to file a response. The Forum does not consider the Response to be in compliance with ICANN Rule 5. Therefore, the Panel, at its discretion, chooses not to accept or consider this Response. See Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010).
Consequently, the Panel also decides, on the basis of Forum Supplemental Rule 7, not to accept or consider the Additional Submissions received by the parties, as they both followed the deficient Response, which the Panel has chosen not to accept or consider.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the FETCH mark through Complainant’s registration of the mark with the USPTO (e.g. Reg. No. 6,702,460, registered on April 12, 2022 and in use since 2003), as well as on several other relevant registrations. See Compl. Ex. B and C. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds Complainant has demonstrated rights in the FETCH mark per Policy ¶ 4(a)(i).
Next, Complainant argues Respondent’s <fetchpetmeds.com> and <fetchpetrx.com> domain names are identical or confusingly similar to Complainant’s FETCH mark as they merely add the generic terms “pet” and either “meds” or “rx” (which may also mislead consumers, due to their proximity to Complainant’s pet-related business) and the “.com” gTLD. The addition of a generic or descriptive term and a gTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Therefore, the Panel finds the disputed domain names are confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel reminds that 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names nor has Complainant authorized or licensed to Respondent any rights in the FETCH mark. When a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Jay Lalli / California Pet Pharmacy” and Complainant asserts there is no other evidence to suggest that Respondent was authorized to use the FETCH mark. The Panel therefore finds Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent creates consumer confusion into believing Respondent is related or affiliated with Complainant. Using a disputed domain name to create confusion about the affiliation between a respondent and complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant argues since it provides pet insurance services, the addition of the descriptive terms was intended to create confusion and a false sense that the disputed domain names were affiliated with or owned and operated by Complainant. The Panel therefore finds Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends Respondent registered and uses the disputed domain names in bad faith as Respondent registered the disputed domain names to intentionally attract users for commercial gain and create confusion as to the ownership of the disputed domain names. Registration of a confusingly similar domain name with the intent to disrupt business by attracting and deceiving users can evince bad faith registration and use per Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Complainant argues the disputed domain names are disruptive to its business and cause great harm. The Panel finds Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Furthermore, Complainant argues Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the FETCH mark. Use of a mark to divert Internet traffic to a disputed domain name where a respondent benefits from an association with complainant can demonstrate actual knowledge of a complainant’s rights in a mark at registration and show bad faith per Policy ¶ 4(a)(iii). See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Complainant argues that Respondent had full knowledge of Complainant’s FETCH mark which was wholly incorporated in the registration of the disputed domain names. The Panel finds Respondent registered the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant asserts Respondent registered and uses the disputed domain names in bad faith as Respondent used a privacy service to conceal its identity. Using a privacy service in order to hide one’s identity may evince bad faith registration and use per Policy ¶ 4(a)(iii). See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). The Panel therefore finds Respondent registered the disputed domain names in bad faith per 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 <fetchpetmeds.com> and <fetchpetrx.com> domain names be TRANSFERRED from Respondent to Complainant.
Sozos-Christos Theodoulou, Panelist
Dated: July 20, 2023
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