DECISION

 

The Michelson Found Animals Foundation, Inc. v. Orr Stern

Claim Number: FA2402002085787

 

PARTIES

Complainant is The Michelson Found Animals Foundation, Inc. ("Complainant"), represented by Rod S. Berman of JEFFER MANGELS BUTLER & MITCHELL LLP, California, USA. Respondent is Orr Stern ("Respondent"), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <adoptandshop.org>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

        Debrett G Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 27, 2024; Forum received payment on February 27, 2024.

 

On February 27, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <adoptandshop.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 29, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2024 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@adoptandshop.org. Also on February 29, 2024, 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.

 

On March 21, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in ADOPT & SHOP and submits that the domain name is identical or confusingly similar to its trademark.  Further, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent registered and used the disputed domain name in bad faith.

 

In particular, Complainant submits that it has used ADOPT & SHOP for more than twelve years in connection with animal adoption services, grooming services, pet registration and microchipping services, and the sale of pet supplies. Complainant states that the website resolving from the disputed domain name ("Respondent's Website") copies significant portions of Complainant's website and uses Complainant's name, address, and other information with the result that Respondent is now holding itself out as Complainant.  

 

In terms of the Policy, Complainant argues that Respondent has copied Complainant's website and repurposed it to generate advertising revenue.  Respondent's fake website promotes services it does not in fact offer for the purpose of luring consumers into visiting the website which carries advertisements for third party goods and services. 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are:

 

1.       Complainant provides animal care and animal adoption services;

2.       those services have been provided under the expression, ADOPT & SHOP;

3.       the disputed domain name was registered on September 19, 2022; and

4.       the disputed domain name resolves to a website using the expression ADOPT & SHOP which exhibits very significant commonalities with a website that was maintained by Complainant.

 

DISCUSSION

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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Appended to the Complaint are copies of three trademark registration certificates issued by the United States Patent & Trademark Office ("USPTO"). None of these establish trademark rights in ADOPT & SHOP.  In particular, Registration No. 4,915,618 for ADOPT & SHOP was issued on March 8, 2016 but cancelled on September 23, 2022 because the registrant (note: not Complainant) did not file an acceptable declaration under Section 8. In any event, the Panel observes that Registration No. 4,915,618 was on the Supplemental Register and would have not established trademark rights.

 

Complainant is the owner of marks, MICHAELSON FOUND ANIMALS ADOPT & SHOP (stylized) (Registration No. 5,566,537) and MICHAELSON FOUND ANIMALS ADOPT & SHOP (stylized) (Registration No. 5,571,374) each on the Principal Register, but both carrying a disclaimer stating: No claim is made to the exclusive right to use the following apart from the mark as shown: "ADOPT & SHOP" .

 

Complainant also asserts common law trademark rights in ADOPT & SHOP and UDRP decisions have long recognised that proof of a common law trademark is an alternative to proof of registration for the purposes of paragraph 4(a)(i) of the Policy (see, for example, Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) finding that Complainant had established common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including "longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.").  

 

Here, Complainant states that it "used [ADOPT & SHOP] in connection with, inter alia, animal adoption services, dog and cat grooming services, pet registration and microchipping services, and the sale of pet supplies, since at least as early as April 2011."  The Panel has underscored the past tense because a critical aspect of this Complaint is that use of ADOPT & SHOP has for all purposes come to an end. There is some evidence of use of the expression on social media pages but the Panel would characterise that use as vestigial and the Panel's own limited research indicates that there is almost no use and certainly no promotion of the term ADOPT & SHOP on Complainant's current website at this point in time.

 

Complainant goes on to state that it "operated both a brick-and-mortar and online retail store under the ADOPT & SHOP mark for many years" and that, by reference to that mark, Complainant "facilitated more than 17,000 pet adoptions, more than 460,000 animal fosters, and countless volunteer hours. … Complainant's website operated at the domain name adoptandshop.org".

 

The Complaint states that the brick-and-mortar store fronts have closed and Complainant is no longer operating the website which had resolved from the domain name, <adoptandshop.org>.  However, it argues that "[t]he foregoing use and registrations are sufficient to establish Complainant's trademark rights in the ADOPT & SHOP Mark. Further, even if Complainant had entirely ceased use of the ADOPT & SHOP mark …, the mark retains residual goodwill."

 

The Panel has found that the USPTO registrations do not establish trademark rights and so the remaining question is whether the expression, ADOPT & SHOP, had and continues to enjoy common law trademark status.

 

As stated above, common law trademark rights may be established through use and public recognition of a trademark such that it has come to acquire secondary meaning.   The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("the WIPO Overview"), asks at paragraph 1.3: "What does a complainant need to show to successfully assert unregistered or common law trademark rights? "  The consensus viewpoint of panelists includes the following statement:

 

"Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning."

 

Here, there is no evidence of acquired distinctiveness by way of the usual indicia such as sales figures, or advertising expenditure and promotion, or declarations from third parties. Furthermore, the expression ADOPT & SHOP is directly descriptive of most of the services offered by Complainant, something which explains why Registration No. 4,915,618 is found on the USPTO Supplemental Register.

 

At this point the Panel might have rejected the claim of common law trademark rights but, absent challenge from Respondent, the Panel is entitled to accept reasonable statements of fact and draw reasonable inferences. The Complaint states that ADOPT & SHOP has been used since at least as early as April 2011. It is not clear where this date comes from, but it accords roughly with the claimed first use in commerce date of Registration No. 4,915,618.

 

The disputed domain name appears to correspond exactly with the domain name previously used by Complainant for the relevant services. Presumably that registration lapsed and the name was then taken up by Respondent. On that assumption all online use of ADOPT & SHOP by Complainant would have stopped before September 19, 2022, when the disputed domain name was registered and, given the mechanics of the domain name registration system, probably quite some time before that date.

 

There is no indication when the bricks-and-mortar shops closed but Complainant's current website states that there were only two of those shops.

 

On the basis of this material, the Panel would have difficulty finding a reputation, still less a subsisting reputation some time after most use stopped. Nevertheless, the Complaint refers to 17,000 pet adoptions and more than 460,000 animal fosters.  How reliable these figures are may be another matter since Complainant's website refers, for example, to 15,000 pet adoptions in total at the time of writing this decision but, even allowing for some discrepancy, the figures are significant.

 

The Panel observes that UDRP panelists have in the past found common law trademark rights where a localised reputation has been established. Examples have included car dealerships, hairdressers and realty agents which have operated in only one State or one city in the US. This is not to say that the bar has been set especially low but it perhaps recognises that UDRP proceedings have on the whole not insisted on the type of proof a Court may require in, for example, a passing off action.

 

The Panel finds in this case that it is more likely than not that Complainant had a modest level of reputation in the expression ADOPT & SHOP at the time the disputed domain name was registered. Further, the Panel finds that whilst it is more likely than not that use of ADOPT & SHOP has effectively ceased, the time period (both before the disputed domain name was created and at the current time) has been sufficiently short so as to not seriously diminish that pre-existing reputation.

 

In the result, the Panel finds by a narrow margin that Complainant has established trademark rights in ADOPT & SHOP.

 

Moving on and for the purposes of comparison of the trademark with the disputed domain name, the gTLD, ".org", can be disregarded. The disputed domain name is then legally identical to the trademark (see, for example, Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as ".net" or ".com" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; Albertson's, Inc. v. Bennett, FA 117013 (Forum Sept. 5, 2002) ("[T]he absence of a space and the hyphen between the words of the mark are not changes that are capable of overcoming the Policy ¶ 4(a)(i) identical analysis."); Morgan Stanley v. nashan, FA 1706094 (Forum Jan. 23, 2017) finding <morgan-stanley.xyz> identical to complainant's MORGAN STANLEY mark).

 

The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of the underlying domain name registrant disclosed by the Registrar in consequence of these proceedings does nothing to indicate that Respondent might be commonly known by the domain name (see, for example, Tercent Inc. v. Lee Yi, FA 0139720 (Forum Feb. 10, 2003) stating "nothing in [the respondent's] WHOIS information implies that [the respondent] is 'commonly known by' the disputed domain name" as one factor in determining that Policy ¶ 4(c)(ii) does not apply.").

 

There is no evidence that Respondent has any trademark rights.  Complainant states that there is no association between the parties.  The use of the name, as described, could not give rise to any rights or legitimate interests because the name resolves to a website using the trademark and patently mimicking Complainant's business.  Further, Respondent's conduct is little more than a variation on other "parked website" cases where UDRP panels have consistently found no bona fide offerings of goods or services where the disputed domain name merely diverted Internet users seeking a brand owner's site to third party sites.

 

The Panel finds that a prima facie case has been made. Accordingly, the onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

'(i) circumstances indicating that the respondent has registered or acquired the domain name 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 the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website 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 the respondent's website or location or of a product or service on the site or location.'

 

The Panel finds that Respondent's use of the domain name falls squarely under paragraph 4(b)(iv) above. The domain name is identical to the trademark and confusion is inevitable. The resolving website exists for commercial gain. In terms of the Policy, the Panel finds that Respondent intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA 1612750 (Forum May 13, 2015) : "The Panel agrees that Respondent's use of the website to display products similar to Complainant's, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).").

 

The Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <adoptandshop.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Debrett G Lyons, Panelist

Dated: March 26, 2024