Petpal, Inc. v. KEITH WITT / PET PAL
Claim Number: FA1801001767810
Complainant is Petpal, Inc. (“Complainant”), represented by Peter Tormey, Esq. of 101 Gregory lane suite 46, Pleasant Hill, California, USA. Respondent is KEITH WITT / PET PAL (“Respondent”), Calgary, Alberta, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <petpal.com>, registered with eNom, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2018; the Forum received payment on January 19, 2018.
On January 19, 2018, eNom, LLC confirmed by e-mail to the Forum that the disputed domain name <petpal.com> is registered with eNom, LLC and that Respondent is the current registrant of the disputed domain name. eNom, LLC has verified that Respondent is bound by the eNom, 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 29, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2018 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@petpal.com. Also on January 29, 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 Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 21, 2018.
On February 23, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, Esq., 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 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.
A. Complainant
a. Complainant has rights in the PETPAL mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,297,407, registered Sep. 26, 2017). See Exhibit E to the Complaint.
b. Respondent’s disputed domain name is identical to Complainant’s mark as it is the exact same spelling, pronunciation, and look as Complainant’s PETPAL mark.
c. While Respondent appears to offer services, the offerings are merely illusory as users who have signed up for services on Respondent’s website have received no response whatsoever. See Exhibits B to D to the Complaint.
d. Respondent’s website located at the disputed domain name is not functioning, as the services listed are only an illusion made to appear to be a working site.
e. Further, as there is no company by the name of “PET PAL” in Canada, Respondent must have registered the domain name using false information. See Exhibit A to the Complaint.
B. Respondent
a. Respondent agrees that the domain name is identical to Complainant’s registered trademark.
b. Respondent registered his business, PETPAL LIMITED, in Alberta, Canada on April 19, 2017, which predates Complainant’s rights in the PETPAL mark. See Annex B to the Response.
c. Respondent purchased the disputed domain name <petpal.com> in October, 2016.
d. Respondent has been operating under both the disputed domain name and the business entity PETPAL LIMITED for the past year and has invested a significant amount of time and money into the venture. See Annexes A and B to the Response.
e. Respondent has been making a bona fide offering of services with the disputed domain name and has gained a significant number of users since its inception in early-2017. See Annex C to the Response.
f. Respondent registered the disputed domain name <petpal.com> in good faith without intent to harm Complainant.
g. Respondent has operated under the disputed domain name for almost a full year and has invested significant time and money into the business venture.
h. Respondent considers the Complaint to be an attempt of reverse domain-name hijacking.
A. Complainant has the trademark PETPAL registered before the United States Patent and Trademark Office (USPTO) to identify services of international classes 35, 38, 41 and 44 since September 26, 2017, with registration No. 5,297,407, with first use declared of July 20, 2017.
B. Before any notice of the dispute, Respondent used the disputed domain name in connection with a bona fide offering of goods or services.
C. Before any notice of the dispute, Respondent incorporated a company called PETPAL LIMITED in Alberta, Canada on April 19, 2017, with corporate access number 2020382459.
D. Respondent’s website located at the disputed domain name was designed by BLUEOCEAN INTERACTIVE MARKETING.
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.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
Identical and/or Confusingly Similar
Discussion of this element has been intentionally omitted as explained below.
Paragraph 4(c) of the Policy includes an illustrative list of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Firstly, the Panel notes that as per the information provided by the Registrar, the disputed domain name has been registered since February 8, 2000.
Secondly, Respondent established its rights and legitimate interest in the disputed domain name, as follows:
(i) Before any notice of the dispute, Respondent acquired the disputed domain name in October 2016 and has implemented a website designed by BLUEOCEAN INTERACTIVE MARKETING (Annex 1 to the Response).
(ii) Respondent’s use of the disputed domain name in connection with a bona fide offering of goods and services, as providing a place to connect pets. Currently, Respondent’s site has several users (Annex 3 to the Response). Furthermore, Complainant’s evidence only proves a malfunction but not the lack of activity of said webpage.
(iii) Before any notice of the dispute, Respondent registered his business, PETPAL LIMITED, in Alberta, Canada on April 19, 2017, which predates Complainant’s rights in the PETPAL mark (Annex B to the Response).
Thus, in view of the above arguments taken together, Respondent has established rights and legitimate interests in the disputed domain name, which Complainant failed to rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy has not been satisfied.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
The Panel finds that Complainant did not file any evidence at all addressing Respondent’s bad faith registration of the disputed domain name.
Complainant did not provide evidence that (i) the domain name was acquired by Respondent to prevent Complainant from reflecting its trademark in the disputed domain name; or (ii) Respondent registered the disputed domain name for the purpose of depriving Complainant of use of the trademark online, and benefiting financially from the sale of competitor’s products; or (iii) Respondent acquired the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant’s trademark.
On the opposite, Respondent acquired the disputed domain name to create a legitimate business and incorporated his company before Complainant used or registered its trademark. Thus, Respondent could not have acted in bad faith when acquiring the disputed domain name as the trademark in question did not exist at the time when the disputed domain name was originally registered.
Consequently, all three elements of the Policy paragraph 4(a) have not been established in the present case. Since Complainant has not satisfied paragraphs 4(a)(ii) and 4(a)(iii) of the Policy there is no need for the Panel to address paragraph 4(a)(i) of the Policy[1].
Reverse Domain Name Hijacking
Finally, as per Paragraph 15(e) of the Rules, the Panel is entitled as follows:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
As per Paragraph 1 of the Rules: “Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
Regarding Reverse Domain Name Hijacking, there must be sufficient evidence for the Panel to conclude that Complainant has filed the Complaint in bad faith.
Although the Panel found suggestions as to the possibility of its existence, the Panel did not find incontestable evidence of bad faith on the filing of the Complaint,[2] since failing to prove one element of the Policy cannot be considered as bad faith.[3] Moreover, Complainant filed evidence demonstrating a legitimate study of the case and the US trademark registration which despite of being identical to the disputed domain name was first used and registered after the cited domain name was acquired and used by Defendant. This also weakens the argument of bad faith concerning Complainant’s actions.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the disputed domain name <petpal.com> REMAIN WITH Respondent.
Fernando Triana, Esq., Panelist
Dated: March 2, 2018
[1] See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; See also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
[2] See All About Blinds, LLC v. Blinds Acquisition, LLC c/o Jay Steinfeld, FA 1029947 (Nat. Arb. Forum Aug. 23, 2007) (“The Panel finds that Complainant has not engaged in reverse domain name hijacking through the filing of the present Complaint as Respondent failed to prove any bad faith of Complainant in filling this Complaint.”) see also Brahma Kumaris World Spiritual Organization v. John Allan, FA 1075486 (Nat. Arb. Forum Nov. 19, 2007) (“Although the Panel concludes that Complainant is not entitled to the relief sought, it finds insufficient evidence of bad faith to justify a determination of reverse domain name hijacking.”)
[3] See ECG European City Guide v. Woodell, FA 183897 (Nat. Arb. Forum Oct. 14, 2003) (“Although 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”).
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