DECISION

 

Aussie Pet Mobile, Inc. v. Michael Prouse

Claim Number: FA2408002111115

PARTIES

Complainant is Aussie Pet Mobile, Inc. ("Complainant"), represented by J. Damon Ashcraft of SNELL & WILMER L.L.P, Arizona, USA. Respondent is Michael Prouse ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <aussiepetmobilesucks.com>, 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 August 14, 2024; Forum received payment on August 14, 2024.

 

On August 14, 2024, GoDaddy.com, LLC confirmed by e-mail to Forum that the <aussiepetmobilesucks.com> 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 August 15, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@aussiepetmobilesucks.com. Also on August 15, 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 September 5, 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 rights in AUSSIE PET MOBILE for which it has a trademark registration and further asserts that the disputed domain name is confusingly similar to its trademark.

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that the Respondent registered the disputed domain name in bad faith. Its arguments regarding use in bad faith are discussed later.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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

1.       Complainant is the owner of United States Patent & Trademark Office ("USPTO") Reg. No. 2,466,457, filed June 19, 1999, and registered July 3, 2001, for AUSSIE PET MOBILE;

2.       Complainant licenses the trademark for use in respect of pet grooming services;

3.       the disputed domain name was registered on July 11, 2024, and is not in use; and

4.       there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

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). The Complainant provides proof of registration of AUSSIE PET MOBILE with the USPTO, a national trademark authority, and so has established rights in that mark.

 

Complainant submits that "the Disputed Domain incorporates Complainant's … mark in its entirety with the non-distinctive term 'sucks.'  It is well-established that the element 'sucks' does not decrease the risk of consumer confusion when used in combination with the entirety of a trademark."  The Panel observes that this is an inaccurate statement as to how "sucks" cases have been approached under the Policy. The submission appears linked to other implausible statements in the Complainant, such as the claim that internet users "accessing the Disputed Domain, believ[e] they are reaching a website that is associated with [Complainant] when they are not". The argument appears driven by the misunderstanding that paragraph 4(a)(i) of the Policy requires either actual confusion or a likelihood of confusion. It does not. What is required is only that the compared terms be confusingly similar and Question 1.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"), namely, "Is a domain name consisting of a trademark and a negative term ("sucks cases") confusingly similar to a complainant's trademark?" and the authorities cited there, set out the proper approach (see, also, 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).

 

The Panel finds that the disputed domain name is confusingly similar to the trademark and so 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, Case No. D2000 0624 (WIPO Aug. 21, 2000).

 

There is no suggestion that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights. The domain name has not been used. Accordingly, there has been no bona fide offering of goods or services per Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under paragraph 4(c)(iii) of the Policy.

 

The Panel finds that a prima facie case has been made that Respondent lacks rights or a legitimate interest in the disputed domain name (see, for example, Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) ("Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain.  Respondent's <kohler-corporation.com> resolves to an inactive webpage displaying the message "website coming soon!").

 

The onus thus shifts to Respondent. Absent a Response that onus is not met and so the Panel 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.

 

The scenarios of bad faith registration and use provided in paragraph 4(b) of the Policy are of no real assistance in this case and none are explicitly relied upon by Complainant. Thus, Complainant must show, as separate matters, registration in bad faith and use in bad faith.  

 

An issue arises for Complainant since the domain name has not been used. Nonetheless, it cites the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("Telstra") where the panel faced the novel question of whether inactive, passive holding of a domain name could constitute "use" in bad faith. The conclusion was that the circumstances of a case should show the complainant's trademark to be widely known, the respondent to have provided no evidence of any actual or contemplated good faith use, and that it is not possible to conceive of any plausible use of the domain name by the respondent that would not be illegitimate in the sense of infringing complainant's rights.

 

Complainant makes a broad assertion that it "has been using the [trademark] since as early as 2001 and has established rights in the mark through its wide use in commerce in connection with mobile pet services. It states that "Respondent registered the Disputed Domain in bad faith to capitalize on the goodwill associated with Complainant's rights in the [trademark]". It asserts that "Complainant and the [trademark] are recognized internationally". 

 

The consensus of cases which have followed Telstra has been to consider proof of reputation (whether that be enough to also establish common law rights in the relevant trademark, or "well-known" to some lesser standard) indispensable and the cornerstone of whether it would be possible to conceive of plausible good faith use of the domain name.

 

The Panel is entitled to accept reasonable allegations set forth in a complaint; however, the Panel should deny relief where a complaint contains mere conclusory or unsubstantiated arguments (see, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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's claim to international recognition of the trademark is simply not sustained by the evidence. There is reference to the trademark having been first used in Australia, but nothing to show reputation in that country. What little evidence there is appears to focus on the US market. The USPTO trademark registration carries a first date of use in commerce of 2000 but that, of itself, is not proof of use, still less of reputation. The evidence includes screenshots of Complainant's own website which do not assist the Panel. All that is included of any weight is (Annex 4) a small sample of third-party news articles which provide readers with information about the pet services market and the opportunities that exist for franchisees interested in that market. Those articles refer to Complainant and its trademark and it can at least be said that Complainant is one of the bigger businesses in that space.

 

Albeit that the evidence falls short of showing common law rights in the trademark as set out, for example, in the WIPO Jurisprudential Overview 3.0, the Panel is prepared to find that Complainant has shown a modest public knowledge of the trademark. Liberally, applying the line of

authority starting with Telstra, the Panel is just prepared to find passive holding in bad faith. The Panel had made that finding in part because the argument against any good faith use of the trademark in the future is strong given the pejorative term which has been added to the mark.

 

Further, accepting that the trademark is known to at least a section of the US public, and given the nature of the domain name, there is little doubt that Respondent targeted Complainant and its trademark at the time of registration and so the Panel also finds registration in bad faith.

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 <aussiepetmobilesucks.com> domain name BE TRANSFERRED to Complainant.

 

Debrett G. Lyons, Panelist

Dated: September 8, 2024