Central Garden & Pet Company v. Domain Administrator c/o Central Garden & Pet Company
Claim Number: FA0605000712358
Complainant is Central Garden & Pet Company (“Complainant”), represented by Johanna F. Sistek, of Dorsey & Whitney LLP, 555 California St., Suite 1000, San Francisco, CA 94104. Respondent is Domain Administrator c/o Central Garden & Pet Company (“Respondent”), 1340 Treat Blvd Suite 600, Walnut Creek, CA 94597.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <breederschoice.com>, registered with Nameview, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 25, 2006.
On May 23, 2006, Nameview, Inc. confirmed by e-mail to the National Arbitration Forum that the <breederschoice.com> domain name is registered with Nameview, Inc. and that Respondent is the current registrant of the name. Nameview, Inc. has verified that Respondent is bound by the Nameview, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On June 7, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 27, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@breederschoice.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <breederschoice.com> domain name is identical to Complainant’s BREEDERS CHOICE mark.
2. Respondent does not have any rights or legitimate interests in the <breederschoice.com> domain name.
3. Respondent registered and used the <breederschoice.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Central
Garden & Pet Company, and its predecessors in interest have used the
BREEDER’S CHOICE trademark in connection with the sale of pet food since June
1948. Complainant holds a trademark
registration with the United States Patent and Trademark Office (“USPTO”) for
the BREEDER’S CHOICE mark (Reg No. 905,228 issued December 29, 1970).
Respondent registered the <breederschoice.com> domain name on May 5, 2005. Respondent’s true name was originally shielded using the privacy services offered by the Registrar, and since the filing of the original complaint in this case, Respondent has listed Complainant’s information in the WHOIS directory. The true identity of the Respondent remains unknown. Respondent’s disputed domain resolves to a website which previously sold Complainant’s products, and since at least June 2, 2006, is being passively held by Respondent.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant’s federal trademark
registration with the USPTO sufficiently establishes Complainant’s rights in
the BREEDER’S CHOICE mark. See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
The Panel finds that Respondent’s <breederschoice.com> domain name is identical to Complainant’s BREEDER’S CHOICE mark pursuant to Policy ¶ 4(a)(i). The Panel finds that despite the absence of a space between the words, omission of the apostrophe, and the addition of a generic top-level domain name, the disputed domain name is identical to Complainant’s mark. See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also L’Oreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the disputed domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Complainant asserts that Respondent is not authorized to use
Complainant’s BREEDER’S CHOICE mark, and Respondent is not associated with
Complainant in any way. Furthermore,
when examining Respondent’s WHOIS information and other evidence in the record,
there is no other indication that Respondent is or ever has been known by the
disputed domain name. In Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001), the panel found that the respondent did
not have rights in a domain name when the respondent was not known by the
mark. See Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
The evidence on record indicates that prior to the filing of this Complaint, Respondent was using the disputed domain name to sell Complainant’s products. The Panel finds that such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use). Further, the disputed domain name is currently being passively held. Since June 2, 2006, the disputed domain name has not been used, nor does the evidence hold any suggestion of future use by Respondent. In Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001), the panel found no rights or legitimate interests in the domain name <solgarvitamins.com> as the respondent was merely passively holding the domain name. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”). Consequently, the Panel finds that such use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Complainant has alleged that Respondent acted in bad faith
by registering and using the disputed domain name. Based on the uncontested evidence on record, the Panel finds that
the Respondent was using the <breederschoice.com> domain name to
sell Complainant’s products without authorization from Complainant, to the
commercial benefit of the Respondent. A
likelihood of confusion also exists for Internet users accessing the disputed
domain name as to the Complainant’s affiliation with the site, as the disputed
domain name is identical to Complainant’s mark. The Panel concludes that such use is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Fossil Inc. v.
NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent
acted in bad faith by registering the <fossilwatch.com> domain name and
using it to sell various watch brands where the respondent was not authorized
to sell the complainant’s goods); see also Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered
similar products as those sold under the complainant’s famous mark).
Additionally, the Panel also finds that the disputed domain name has been passively held since at least June 2, 2006, and that such use is evidence of bad faith registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Furthermore, the Panel finds that the Respondent’s fraudulent registration information is evidence of bad faith registration and use. The evidence on record shows that Respondent’s true name was originally shielded using the privacy services offered by the Registrar, and since the filing of the original complaint in this case, Respondent has listed Complainant’s information in the WHOIS directory, leaving the true identity of Respondent unknown. Such registration is evidence of bad faith registration and use. See Home Dir., Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also Quixtar Invs., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that use of false registration information constitutes bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <breederschoice.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: July 17, 2006
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