Pet Life LLC v. ROBERT RIESS / blue streak marketing llc
Claim Number: FA1810001810870
Complainant is Pet Life LLC (ďComplainantĒ), represented by Ezra Sutton, New Jersey, USA.† Respondent is ROBERT RIESS / blue streak marketing llc (ďRespondentĒ), represented by Edward M. Livingston, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <petlife.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Scott R. Austin, David A. Einhorn and Paul M. DeCicco (Chair) as Panelists.
Complainant submitted a Complaint to the Forum electronically on October 9, 2018; the Forum received payment on October 9, 2018.
On October 9, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <petlife.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 ICANNís Uniform Domain Name Dispute Resolution Policy (the ďPolicyĒ).
On October 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondentís registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org.† Also on October 11, 2018, 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 Respondentís registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 29, 2018.
Complainantís Additional Submission was filed on or about October 31, 2018.
On November 2, 2018, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Scott R. Austin, David A. Einhorn and Paul M. DeCicco (Chair), as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant engages in the business of providing educational services, namely, conducting seminars, conferences, exhibitions, and conventions in the field of animal welfare and education.
Complainant has rights in the PET LIFE mark through its registration of the mark with the United States Patent and Trademark Office (ďUSPTOĒ).
Respondentís <petlife.com> domain name is identical to Complainantís mark.
Respondent has no rights or legitimate interests in the <petlife.com> domain name. The domain name has been and currently remains parked. Further, Respondent previously listed the domain name for sale for $99,999.99, and currently lists the domain name for sale for $75,000.00.
Respondent registered and uses the <petlife.com> domain name in bad faith. Respondent has never actually used the domain name, and has only listed the domain name for sale.
Respondent purchased the <petlife.com> domain name with the intent of using the domain name in connection with pet related products and services.†
Respondent had no knowledge of Complainantís mark or business, and continues to have no knowledge of Complainant, as Respondent registered the domain name more than five years before Complainant even began using its PET LIFE mark.
Complainant does not own or have exclusive rights to the wording PET LIFE as it was required to disclaim the wording PET apart from the design mark it registered with the USPTO.
Respondent has listed the domain name for sale at various points throughout Respondentís ownership of the domain name, which is well within Respondentís rights.
Respondent alleges Complainant has engaged in reverse domain name hijacking.
Respondent registered the <petlife.com> domain name on July 12, 2003.
C. Additional Submissions
Complainant contends in its Additional Submission as follows.
Respondent by its response admits that it is violating the UDRP by trying to sell the at-issue domain name during the last 15 years and otherwise.
Any prior good faith use of the domain name turned into bad faith because of the non-legitimate use/passive holding of the domain name over the last 15 years.
Reverse Domain Name Hijacking is without merit because Respondent has failed to use the domain name when it intended to use it at the outset, and desired to sell the domain for unreasonable amounts.
Complainant has rights in the PET LIFE mark through its registration of such mark with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainantís trademarks in any capacity.
Respondent registered the at‑issue domain name years prior to Complainantís first use in commerce of its PET LIFE trademark.
Respondent holds the at-issue domain name inactively and offers it for sale.
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.
Because, as discussed below, Complainant fails to satisfy the requirements of Policy ∂ 4(a)(iii), the Panel need not consider the remaining two sections under Policy ∂ 4(a) (Identical and/or Confusingly Similar, and Rights or Legitimate Interests).
Notwithstanding the Panelís finding regarding Complainantís rights in a mark to which the at-issue domain name is confusingly similar pursuant to Policy ∂4(a)(i), a complainantís successful demonstration of a respondentís bad faith under Policy ∂4(a)(iii) almost universally requires a showing by the complainant that its trademark rights predate the respondentís registration of †the† domain name.
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainantís non-existent right.
WIPO, WIPO Overview of WIPO Panel Views on Selected UDRP Questions ∂ 2.1 (2d ed.).
It is axiomatic that if a complainant does not have trademark rights at the time of a domain nameís registration (even though it may have such rights at the time of the partiesí dispute), there can be no bad faith registration on the part of the domain name registrant/respondent. Numerous decisions support this logical proposition. See, e.g.,: Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001); Digital Vision, Ltd. v. Advanced Chemill Sys., D2001-0827 (WIPO September 23, 2001); PrintForBusiness B.V v. LBS Horticulture, D2001-1182 (WIPO December 21, 2001).
Here, Respondent registered its <petlife.com> domain name in 2003, well prior to Complainantís November 3, 2017 filing of its application to register its PET LIFE mark with the USPTO. Additionally, Complainantís USPTO registration states that the earliest use of the PET LIFE mark in commerce was November 20, 2008. Thus, while common law rights might arise subsequent to a markís use in commerce, they logically cannot precede such use.
Given the foregoing, the Panel concludes that Complainant does not, and cannot, meet its burden regarding Respondentís bad faith registration and use of the <petlife.com> domain name under Policy ∂4(a)(iii).
Reverse Domain Name Hijacking
Respondent requests a finding of reverse domain name hijacking (RDNH) against Complainant. However, even though the Panel holds that Complainant fails to satisfy its burden under the Policy, a finding of reverse domain name hijacking does not necessarily follow. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (ďAlthough the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.Ē).
Here, however, Complainant has engaged in reverse domain name hijacking. Given PET LIFEís trademark registration date and first use in commerce date being years after Respondentís registration of <petlife.com>, Complainant --who is represented by competent counsel-- knew or should have known at the time it filed the instant complaint that it would be unable to prove each of the three elements of Policy ∂ 4(a) necessary to prevail. Given the foregoing, the Panel finds that reverse domain name hijacking has occurred. See Labrada Bodybuilding Nutrition, Inc. v. Glisson, FA 250232 (Forum May 28, 2004) (finding that the complainant engaged in reverse domain name hijacking where it used ďthe Policy as a tool to simply wrest the disputed domain name in spite of its knowledge that the Complainant was not entitled to that name and hence had no colorable claim under the Policy.Ē).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. The Panel also declares, on the issue of reverse domain name hijacking, that the Complaint has been brought in bad faith and as such is an abuse of the Policy.
Accordingly, it is Ordered that the <petlife.com> domain name remain with Respondent.
Scott R. Austin, David A. Einhorn,
Paul M. DeCicco (Chair),
Dated: November 11, 2018
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