DECISION

 

Petco Animal Supplies Stores, Inc. v. me wu

Claim Number: FA2508002170238

 

PARTIES

Complainant is Petco Animal Supplies Stores, Inc. ("Complainant"), represented by Jason J. Mazur of ArentFox Schiff LLP, District of Columbia, USA. Respondent is me wu ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theimagitarium.com> ('the Domain Name'), registered with Name.com, Inc.

 

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.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 7, 2025; Forum received payment on August 7, 2025.

 

On August 8, 2025, Name.com, Inc. confirmed by e-mail to Forum that the <theimagitarium.com> Domain Name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 8, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 28, 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@theimagitarium.com. Also on August 8, 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.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On August 29, 2025 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne 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

The Complainant's contentions can be summarised as follows:

 

The Complainant owns the trade mark IMAGITARIUM registered, inter alia, in the USA for aquariums since 2017 and in Australia and Mexico since 2015.

 

The Domain Name registered in 2024 is confusingly similar to the Complainant's trade mark adding only the generic word 'the' and the gTLD .com which is insufficient to prevent said confusing similarity.

 

The Respondent does not have rights or legitimate interests in the Domain Name, is not commonly known by the Domain Name and is not authorised by the Complainant.

 

The web site attached to the Domain Name uses the Complainant's IMAGITARIUM mark in its logo form as a masthead, material taken from the Complainant's web site, similar dark blue trade dress, confusing wording and the registered trade mark symbol with the Complainant's mark on the site to suggest it is a site of the Complainant. The site linked to products on Amazon for affiliate income and is collecting email addresses from customers. After the Complainant sent the Respondent a cease and desist letter the Respondent added a disclaimer in small writing to the web site and substituted the links to Amazon to links to the Complainant's web site, but the Complainant's logo as masthead, dark blue trade dress, material taken from the Complainant's web site and confusing wording referring to the Complainant as though it is running the site remains. This cannot be a bona fide offering of goods or services or a legitimate non-commercial or fair use.

 

It is registration and use in opportunistic bad faith in actual knowledge of the rights of the Complainant, passing the Respondent off as the Complainant to cause confusion for commercial gain. The Respondent is based in China but uses a false non existent address on the website representing the Respondent is based in Ohio, USA a further indication of bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant owns the trade mark IMAGITARIUM registered, inter alia, in the USA for aquariums since 2017 and in Australia and Mexico since 2015.

 

The Domain Name registered in 2024 used the Complainant's IMAGITARIUM mark in its logo form as a masthead, material taken from the Complainant's web site, similar dark blue trade dress, confusing wording and the registered trade mark symbol with the Complainant's mark on the site to suggest it was a site of the Complainant. The site linked to products on Amazon for affiliate income as commercial gain and is collecting email addresses from customers. After the Complainant sent the Respondent a cease and desist letter the Respondent added a disclaimer in small writing to the web site and substituted the links to Amazon to links to the Complainant's web site, but the Complainant's logo as masthead, dark blue trade dress, material taken from the Complainant's web site and confusing wording referring to the Complainant as though it is running the site remains. The Respondent is based in China but uses a false non existent address on the website representing the Respondent is based in Ohio, USA.

 

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.

 

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").

 

Identical and/or Confusingly Similar

The Domain Name consists of the Complainant's IMAGITARIUM mark (which is registered, inter alia, in the USA for aquariums since 2017 and Australia and Mexico since 2015), the generic term 'the' and the gTLD .com.

 

Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The addition of the generic term 'the' does not prevent confusing similarity between the Domain Name and the Complainant's mark.

 

A gTLD does not serve to distinguish a domain name from a Complainant's mark. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark). The panel holds that the addition of the gTLD .com does not prevent confusing similarity between the Complainant's mark and the Domain Name.

 

Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant's registered mark.

 

As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The use is commercial, so is not legitimate non-commercial fair use.

 

IMAGITARIUM is a distinctive mark and the use of the definitive article 'the' as a prefix in itself with its implied meaning as the actual IMAGITARIUM product risks a high affiliation with the Complainant. The web site attached to the Domain Name used the Complainant's mark in its logo form as its masthead, material taken from the Complainant's web site, similar dark blue trade dress, confusing wording and the registered trade mark symbol with the Complainant's mark on the site to suggest it was a site of the Complainant. The site linked to products on Amazon for commercial gain and is collecting email addresses from customers. It did not make it clear that there was no commercial connection with the Complainant. The Panel finds this use was deliberately confusing to impersonate the Complainant. As such it cannot have amounted to the bona fide offering of goods and services. (See Am. Intl Group Inc v Benjamin FA 944242 (Forum May 11, 2007) finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services). After the Complainant sent the Respondent a cease and desist letter the Respondent added a disclaimer in small writing to the web site and substituted the links to Amazon to links to the Complainant's web site, but the Complainant's logo as masthead, dark blue trade dress, material taken from the Complainant's web site and confusing wording referring to the Complainant as though it is running the site remains. Disclaimers are widely held as not effective to prevent the actual customer confusion and bar the disclaimer the site still strains every nerve to impersonate the Complainant. Links now pointed to the Complainant's own site just compound confusion.

 

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant as presented herein.

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

In the opinion of the panelist the use made of the Domain Name in relation to the Respondent's site was confusing and disruptive in that visitors to the site might reasonably have believed that it was connected to or approved by the Complainant as it used the Complainant's mark in its logo form as its masthead, material taken from the Complainant's web site, similar dark blue trade dress, confusing wording and the registered trade mark symbol with the Complainant's mark on the site to suggest it was a site of the Complainant. The site had links to Amazon products earning the Respondent income. The current disclaimer is ineffective to prevent the impression that the Respondent' site is a site of the Complainant and the links to the Complainant's site that are now on the Respondent's site instead of the Amazon links are likely to compound confusion. The use of the Complainant's logo, the dark blue trade dress and use of material taken from the Complainant's web site including pictures of the Complainant's products shows that the Respondent is aware of the Complainant and its rights, business and products. 

 

Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. (See Asbury Auto Group Inc v Tex. Int'l Prop Assocs FA 958542 (Forum May 29, 2007) finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use). The physical address given on the site suggesting that the site is associated with Ohio, USA is false and non existent a further indication of bad faith.

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under Paragraphs 4(b)(iii) and (iv).

 

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

 

 

 

Dawn Osborne, Panelist

Dated: August 29, 2025