DECISION

 

Radio Systems Corporation v. Joao Nuno Oliveira / Web Ideias

Claim Number: FA2501002135097

PARTIES

Complainant is Radio Systems Corporation ("Complainant"), represented by Lindsay M.R. Jones of Merchant & Gould, P.C., Minnesota, USA. Respondent is Joao Nuno Oliveira / Web Ideias ("Respondent"), Portugal.

 

REGISTRAR AND DISPUTED DOMAIN NAME

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

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

David P. Miranda, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 14, 2025; Forum received payment on January 14, 2025.

 

On January 14, 2025, GoDaddy.com, LLC confirmed by e-mail to Forum that the <petsafecovers.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 January 15, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2025 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@petsafecovers.com. Also on January 15, 2025, 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.

 

A timely Response was received and determined to be complete on February 4, 2025.

 

On February 5, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David P. Miranda, Esq., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Radio Systems Corporation (hereinafter "RSC"), contends it is a well-known provider of pet products and accessories. RSC first adopted the PETSAFE trademark in 1998 and used the mark in connection with a variety of pet and other products. It has applied for and received numerous registrations covering the mark on pet-related goods and services, including those U.S. registrations listed in Annex 3. RSC has used and expanded the PETSAFE Marks continuously, without interruption since 1998. Through RSC's significant promotion of pet products and accessories offered under the PETSAFE Marks, consumers have come to recognize the PETSAFE Marks as the identifying indicia of RSC and its brand of pet goods. As a result, the PETSAFE Marks and corresponding brand have developed substantial goodwill and customer recognition, all of which predates registration of the Domain Name.

 

The Respondent registered the Domain Name on or about April 3, 2024. The Respondent has no statutory or common law trademark rights or any other right or legitimate interest in or to RSC's PETSAFE Marks or in the infringing Domain Name. RSC has not authorized or licensed Respondent to use the PETSAFE Marks or any derivative mark for any purpose. RSC's rights in and to the PETSAFE Marks date back to at least as early as 1998 when it first began use of the same. RSC also registered its PETSAFE Marks in the U.S. and elsewhere long before Respondent registered the Domain Name.

 

Complainant contends Respondent has engaged in a pattern of bad faith through the registration and use of a domain name that is confusingly similar to the PETSAFE Marks, as the Domain Name was registered to unfairly trade upon the goodwill associated with the PETSAFE Marks. The Respondent has registered and used a domain name that is confusingly similar to the PETSAFE Marks in bad faith. Respondent's intent in registering the Domain Name was to unfairly profit off of RSC's trademark rights. Based on Respondent's opportunistic bad faith and lack of legitimate rights in and to the Domain Name, Complainant requests that the Panel transfer the Domain Name to RSC.

B. Respondent

Respondent, Oliveira, contends the Domain Name <petsafecovers.com> was registered by Respondent to offer protective covers for sofas, chairs, and other household furniture. These covers shield furniture from scratches, dirt, or other damage caused by pets. The words "pet," "safe," and "covers" were chosen for their generic and descriptive meaning—i.e., covers that keep furniture "safe" from pets.

Respondent claims it was not aware of Complainant's trademark rights in "PetSafe" when registering the Domain Name.

 

FINDINGS

Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.

 

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

The Domain Name includes the entirety of the PETSAFE Marks – the terms PET and SAFE. The Domain Name is confusingly similar to the PETSAFE Marks pursuant to Policy ¶ 4(a)(i). The Domain Name contains RSC's PETSAFE Marks and fully incorporates the terms PET and SAFE. That it combines the terms PET and SAFE in connection with the descriptive if not generic wording COVERS does not separate the Domain Name from RSC's PETSAFE Marks. See, e.g., Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007). Therefore, the Domain Name is confusingly similar to the PETSAFE Marks.

 

Rights or Legitimate Interests

Complainant has met its initial burden of establishing Respondent does not have any right or legitimate interest in the Domain Name. The registration of a domain name for the purpose of diverting online traffic premised on consumer confusion is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).

 

Respondent has no legitimate rights pursuant to Policy ¶ 4(c)(ii) in that it is not commonly known by the PETSAFE Marks and has not received RSC's permission to use the PETSAFE Marks. Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name). A domain name registrant is presumed not to have a legitimate interest in a domain name where (1) Respondent is not a licensee of Complainant; (2) Complainant's prior rights in the domain name precede Respondent's registration; and (3) Respondent is not commonly known by the domain name. Policy ¶ 4(c)(ii); Gallup, Inc. v. Amish Country Store, FA96209 (Forum Jan. 23, 2001) (holding that Respondent does not have rights in a domain name when Respondent is not known by the mark). Furthermore, it is "incumbent upon respondents to advance concrete evidence pursuant to Policy ¶ 4(a)(ii) rebutting the latter assertion because this information is uniquely within the knowledge and control of the respondent." Wilson v. Whois Privacy Protection Service, Inc., FA0502000417186 (Forum March 29, 2005).

 

There is no evidence Respondent is commonly known by the Domain Name. Because Respondent has not received RSC's permission to use the PETSAFE Marks and is not commonly known by the PETSAFE Marks, there is no evidence of a legitimate right to register the Domain Name or to use the same in connection with a website.

 

Registration and Use in Bad Faith

Respondent's registration of the Domain Name was in bad faith pursuant to Policy ¶ 4(b)(iv) because at the time the name was registered, Respondent knew of RSC's rights. "[T]here is a legal presumption of bad faith when [a] Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively." Pavillion Agency, Inc. v. Greenhouse Agency, Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the domain names are so obviously connected with Complainant that the use or registration by anyone other than Complainant suggests opportunistic bad faith).

 

Respondent had notice of RSC's trademark rights in its PETSAFE Marks prior to the registration of the Domain Name. The Domain Name was registered well after the PETSAFE Marks had been used and registered by RSC.

 

Respondent's diversion of traffic to competitive product offerings also shows bad faith pursuant to Policy ¶ 4(b)(iii). David Hall Rare Coins v. Tex. Int'l Prop. Assocs., FA 915206 (Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant's competitors, thereby disrupting that complainant's business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that a respondent diverted business from a complainant to a competitor's website so as to come within the terms of Policy ¶ 4(b)(iii)); Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor's website in violation of Policy ¶ 4(b)(iii)).

 

Through the Domain Name, Respondent uses the PETSAFE Marks to sell substantially similar goods that are offered by RSC under its PETSAFE Marks. In doing so, Respondent is directly competing for customers and website traffic with RSC. Respondent used its website to divert customers and online website traffic that should have reached RSC and its authentic homepage.

 

Bad faith intent pursuant to Policy ¶ 4(b)(iv) has been inferred from Respondent's choosing to use a designation that it knows to be similar to another's registered trademark in order to attract consumers to its website. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent's domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant's services and merely took advantage of Internet user mistakes).

 

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 <petsafecovers.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

__________________________________________________________________

David P. Miranda, Esq., Panelist

Dated: February 20, 2025