PSP Franchising LLC v. Monchai Promlee
Claim Number: FA1202001431431
Complainant is PSP Franchising LLC (“Complainant”), represented by Jennifer M. Hetu of Honigman Miller, Schwartz and Cohn LLP, Michigan, USA. Respondent is Monchai Promlee (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pet-supplies-plus.us>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2012; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2012.
On February 27, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <pet-supplies-plus.us> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On March 1, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 21, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <pet-supplies-plus.us> domain name is confusingly similar to Complainant’s PCP mark.
2. Respondent does not have any rights or legitimate interests in the <pet-supplies-plus.us > domain name.
3. Respondent registered or used the < pet-supplies-plus.us > domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PSP Franchising LLC, claims the following:
a. Complainant owns rights in its PET SUPPLIES PLUS mark by registering the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,712,087 registered September 1, 1992).
b. Complainant operates animal specialty stores throughout the United States, selling animal products and accessories, food, bedding, toys, and grooming product for household pets.
c. Respondent is Promlee Monchai, which registered the <pet-supplies-plus.us> domain name on February 3, 2009.
d. Respondent’s disputed domain name is confusingly similar to Complainant’s PET SUPPLIES PLUS mark.
e. Respondent has no license or permission from Complainant to use the PET SUPPLIES PLUS mark.
f. Respondent does not use the disputed domain name to offer bona fide goods or services, or use the mark in a legitimate noncommercial or fair manner.
g. Respondent is not commonly known by the <pet-supplies-plus.us> domain name.
h. Respondent receives “pay-per-click” fees from the competing hyperlinks posted on the corresponding website.
i. Respondent registered and uses the disputed domain name in bad faith, shown by the confusing similarity of the domain name to the mark.
j. Respondent had actual knowledge in Complainant’s rights in the mark.
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 or is being used in bad faith.
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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant claims to hold rights in its PET SUPPLIES PLUS mark by its numerous registrations with the USPTO (e.g., Reg. No. 1,712,087 registered September 1, 1992). Pursuant to Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), and Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), both finding that the complainant established rights in their marks by registering the marks with the USPTO, the Panel determines that Complainant successfully acquired rights in the PET SUPPLIES PLUS mark under Policy ¶ 4(a)(i). Further, The Panel finds that for the purposes of Policy ¶ 4(a)(i), Complainant is not required to register its mark in the country where Respondent resides and operates. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that the <pet-supplies-plus.us> domain name is confusingly similar to its PET SUPPLIES PLUS mark because the domain name uses the entirety of Complainant’s mark while replacing the spaces between the words with hyphens and adding the country-code top-level domain (“ccTLD”) “.us.” The panel in Check Into Cash, Inc. v. Questar, FA1024235 (Nat. Arb. Forum August 13, 2007), stated that neither removing the spaces separating the words in the mark, nor adding the ccTLD “.us” sufficiently distinguishes the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i). Further, in Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003), the panel held that adding hyphens to a mark “does not create a distinct characteristic capable of overcoming a [UDRP] ¶ 4(a)(i) analysis. The Panel finds that the changes Respondent made do not serve to set apart the domain name from the mark, and the domain name is thus confusingly similar to Complainant’s PET SUPPLIES PLUS mark according to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
There is no evidence provided to indicate that Respondent owns service marks or a trademark that incorporates the <pet-supplies-plus.us> domain name. The Panel thus finds that Respondent does not possess any rights or legitimate interests under Policy ¶ 4(c)(i). See Meow Media, Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent is not commonly known by the <pet-supplies-plus.us> domain name and that Respondent has not been given permission or authorization to use the mark in any way. Complainant provides evidence that the WHOIS information identifies the domain name registrant as “Monchai Promlee,” which gives no support to the claim that Respondent is commonly known by the domain name. The Panel finds that without any further evidence, the WHOIS information indicates that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant contends that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant alleges that Respondent makes a profit by offering hyperlinks to websites of Complainant’s direct competitors. Complainant also argues that Respondent is itself an affiliate of a competing business. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel held that using a confusingly similar domain name to maintain a “pay-per-click” website was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Similarly, the panel in Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007), stated that diverting Internet users to competing websites by using a confusingly similar domain name was not representative of a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes that Respondent’s use of the domain name to entice Internet users to click on the competing hyperlinks does not demonstrate a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iv).
Complainant asserts that Respondent’s use of the <pet-supplies-plus.us> domain name disrupts its business because the resolving website redirects potential Internet traffic from Complainant’s website to third-party competitors’ websites. Complainant submits screenshots that show the PET SUPPLIES PLUS mark used in association with a competing business, selling similar products to those sold by Complainant. The Panel finds that Respondent’s operation of the website constitutes disruption to Complainant’s business and amounts to bad faith use under Policy ¶ 4(b)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”).
Complainant alleges that Respondent receives “pay-per-click” fees for every website visitor that clicks on the offered hyperlinks on the resolving web page. Complainant contends that by attracting consumers to the website by using a confusingly similar name, Respondent demonstrates bad faith use of the domain name. The panel in Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), determined that using a “misleading domain name” to provide links to the complainant’s competitors, from which the respondent commercially benefited via “pay-per-click” fees, shows bad faith pursuant to UDRP ¶ 4(b)(iv). Likewise, in Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel stated that operating a website that features links to competing commercial websites in order to receive referral fees is evidence of bad faith registration and use. Therefore, the Panel concludes that Respondent’s use of the <pet-supplies-plus.us> domain name amounts to bad faith use under Policy ¶ 4(b)(iv).
Complainant asserts that Respondent had constructive knowledge of Complainant's rights in the PET SUPPLIES PLUS mark. Complainant argues that it is “virtually impossible to believe that Respondent did not have prior knowledge” of Complainant's mark and rights when it registered the domain name. However, past panels have not generally found constructive notice to satisfy for a finding of bad faith. See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). The Panel finds, however, that Respondent had actual knowledge of Complainant’s rights before registering the disputed domain name and concludes that respondent thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the U.S. DOC Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pet-supplies-plus.us> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 10, 2012
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