Crown Products, LLC v. TopPaw Distributing LLC / Top Paw Distributing LLC
Claim Number: FA1910001865158
Complainant is Crown Products, LLC (“Complainant”), represented by William G. Giltinan, of Carlton Fields, P.A., Florida, USA. Respondent is TopPaw Distributing LLC / Top Paw Distributing LLC (Respondent”), represented by Maria Crimi Speth, of Jaburg Wilk, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <poopydoo.co>, <poopydoo.com>, <poopy-doo.com>, <poopydoo.mobi>, <poopydoo.net>, <poopiedo.com>, <poopiedo.net>, <poopiedoo.com>, <poopiedoo.net>, <poopydo.com>, <poopy-do.com>, <poopydo.mobi>, <poopydo.net>, <poopydoos.com>, <gotpoopydoo.com>, <poopydoobag.com>, <poopydoobags.com>, <poopydoobutler.com>, <poopydoocam.com>, <poopydoocleanup.com>, <poopydoodna.com>, <poopydoofacts.com>, <poopydooguy.com>, <poopydoopetcare.com>, <poopydoopetservice.com>, <poopydoopetservices.com>, <poopydoopicksup.com>, <poopydoopickup.com>, <poopydoopickups.com>, <poopydoopooperscooper.com>, <poopydoopooperscoopers.com>, <poopydooremoval.com>, <poopydooscooper.com>, <poopydooscoopers.com>, <poopydooservice.com>, <poopydooservices.com>, <poopydoostation.com>, <poopydoostations.com>, <poopydoostore.com>, <1877poopydo.com>, <1-877-poopydo.com>, <877poopydo.com>, <awpoopiedo.com>, <awpoopiedoo.com>, <awpoopydo.com>, <awpoopydoo.com>, <gotpoopydo.com>, <poopiedoguy.com>, <poopiedooguy.com>, <poopiedooservice.com>, <poopiedooservices.com>, <poopiedoservice.com>, <poopiedoservices.com>, <poopydobag.com>, <poopydobags.com>, <poopydobutler.com>, <poopydocam.com>, <poopydocleanup.com>, <poopydoconcierge.com>, <poopydodna.com>, <poopydoguy.com>, <poopydooconcierge.com>, <poopydopetcare.com>, <poopydopickup.com>, <poopydopooperscooper.com>, <poopydopooperscoopers.com>, <poopydoremoval.com>, <poopydoscooper.com>, <poopydoscoopers.com>, <poopydoservice.com>, <poopydoservices.com>, <poopydostation.com>, <poopydostations.com>, <poopydostore.com>, registered with GoDaddy.com, LLC; Wild West Domains, LLC; and Go France Domains, LLC.
The undersigned certify 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.
Jeffrey M. Samuels, Charles A. Kuechenmeister, and David Safran as Panelists.
Complainant submitted a Complaint to the Forum electronically on October 2, 2019; the Forum received payment on October 2, 2019.
On October 4, 2019, GoDaddy.com, LLC; Wild West Domains, LLC; and Go France Domains, LLC confirmed by e-mail to the Forum that the <poopydoo.co>, <poopydoo.com>, <poopy-doo.com>, <poopydoo.mobi>, <poopydoo.net>, <poopiedo.com>, <poopiedo.net>, <poopiedoo.com>, <poopiedoo.net>, <poopydo.com>, <poopy-do.com>, <poopydo.mobi>, <poopydo.net>, <poopydoos.com>, <gotpoopydoo.com>, <poopydoobag.com>, <poopydoobags.com>, <poopydoobutler.com>, <poopydoocam.com>, <poopydoocleanup.com>, <poopydoodna.com>, <poopydoofacts.com>, <poopydooguy.com>, <poopydoopetcare.com>, <poopydoopetservice.com>, <poopydoopetservices.com>, <poopydoopicksup.com>, <poopydoopickup.com>, <poopydoopickups.com>, <poopydoopooperscooper.com> <poopydoopooperscoopers.com>, <poopydooremoval.com>, <poopydooscooper.com>, <poopydooscoopers.com>, <poopydooservice.com>, <poopydooservices.com>, <poopydoostation.com>, <poopydoostations.com>, <poopydoostore.com>, <1877poopydo.com>, <1-877-poopydo.com>, <877poopydo.com>, <awpoopiedo.com>, <awpoopiedoo.com>, <awpoopydo.com>, <awpoopydoo.com>, <gotpoopydo.com>, <poopiedoguy.com>, <poopiedooguy.com>, <poopiedooservice.com>, <poopiedooservices.com>, <poopiedoservice.com>, <poopiedoservices.com>, <poopydobag.com>, <poopydobags.com>, <poopydobutler.com>, <poopydocam.com>, <poopydocleanup.com>, <poopydoconcierge.com>, <poopydodna.com>, <poopydoguy.com>, <poopydooconcierge.com>, <poopydopetcare.com>, <poopydopickup.com>, <poopydopooperscooper.com>, <poopydopooperscoopers.com>, <poopydoremoval.com>, <poopydoscooper.com>, <poopydoscoopers.com>, <poopydoservice.com>, <poopydoservices.com>, <poopydostation.com>, <poopydostations.com>, <poopydostore.com> domain names are registered with GoDaddy.com, LLC; Wild West Domains, LLC; and Go France Domains, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC; Wild West Domains, LLC; and Go France Domains, LLC have verified that Respondent is bound by the GoDaddy.com, LLC; Wild West Domains, LLC; and Go France Domains, LLC registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2019 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@poopydoo.co, postmaster@poopydoo.com, postmaster@poopy-doo.com, postmaster@poopydoo.mobi, postmaster@poopydoo.net, postmaster@poopiedo.com, postmaster@poopiedo.net, postmaster@poopiedoo.com, postmaster@poopiedoo.net, postmaster@poopydo.com, postmaster@poopy-do.com, postmaster@poopydo.mobi, postmaster@poopydo.net, postmaster@poopydoos.com, postmaster@gotpoopydoo.com, postmaster@poopydoobag.com, postmaster@poopydoobags.com, postmaster@poopydoobutler.com, postmaster@poopydoocam.com, postmaster@poopydoocleanup.com, postmaster@poopydoodna.com, postmaster@poopydoofacts.com, postmaster@poopydooguy.com, postmaster@poopydoopetcare.com, postmaster@poopydoopetservice.com, postmaster@poopydoopetservices.com, postmaster@poopydoopicksup.com, postmaster@poopydoopickup.com, postmaster@poopydoopickups.com, postmaster@poopydoopooperscooper.com, postmaster@poopydoopooperscoopers.com, postmaster@poopydooremoval.com, postmaster@poopydooscooper.com, postmaster@poopydooscoopers.com, postmaster@poopydooservice.com, postmaster@poopydooservices.com, postmaster@poopydoostation.com, postmaster@poopydoostations.com, postmaster@poopydoostore.com, postmaster@1877poopydo.com, postmaster@1-877-poopydo.com, postmaster@877poopydo.com, postmaster@awpoopiedo.com, postmaster@awpoopiedoo.com, postmaster@awpoopydo.com, postmaster@awpoopydoo.com, postmaster@gotpoopydo.com, postmaster@poopiedoguy.com, postmaster@poopiedooguy.com, postmaster@poopiedooservice.com, postmaster@poopiedooservices.com, postmaster@poopiedoservice.com, postmaster@poopiedoservices.com, postmaster@poopydobag.com, postmaster@poopydobags.com, postmaster@poopydobutler.com, postmaster@poopydocam.com, postmaster@poopydocleanup.com, postmaster@poopydoconcierge.com, postmaster@poopydodna.com, postmaster@poopydoguy.com, postmaster@poopydooconcierge.com, postmaster@poopydopetcare.com, postmaster@poopydopickup.com, postmaster@poopydopooperscooper.com, postmaster@poopydopooperscoopers.com, postmaster@poopydoremoval.com, postmaster@poopydoscooper.com, postmaster@poopydoscoopers.com, postmaster@poopydoservice.com, postmaster@poopydoservices.com, postmaster@poopydostation.com, postmaster@poopydostations.com, postmaster@poopydostore.com. Also, on October 10, 2019, 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 November 5, 2019.
Complainant filed an Additional Submission on November 19, 2019.
Respondent filed an Additional Submission on November 22, 2019.
Complainant filed a Sur-Reply to Respondent’s Additional Filing on November 25, 2019.[i]
On November 13, 2019, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Jeffrey M. Samuels, Charles A. Kuechenmeister, and David Safran 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant Crown Products, LLC is in the waste solutions business and provides branded waste disposal bags and bag dispensers. Complainant sells its branded products primarily through distributors. A significant portion of Complainant’s business involves selling its pet waste disposal products, through distributors, to communities, hotels, parks, and other consumers who desire to provide convenient, attractive, and sanitary solutions for allowing pet owners to remove pet waste. Such products include pet waste dispensers and pet waste bags. Complainant also sells products for home use in connection with waste cleanup.
Complainant owns several U.S. trademark registrations for the mark POOPY DOO. These registrations include Registration No. 2,827,177 for the use of POOPY DOO for plastic bags for disposing of diapers; Registration No. 2,899,182 for the use of POOPY DOO for plastic bag dispensers; and Registration No. 3,163,246 for the use of POOPY DOO for plastic bags for picking up and disposing of pet feces. The registrations include a claimed date of first use of sometime in 2002, and the applications that matured into the registrations were filed on or before February 2005.
Complainant submits that each of the 74 domain names in dispute is identical or confusingly similar to its POOPY DOO mark. Complainant divides the disputed domain names into four categories: (1) domain names that include the exact phrase “poopy doo” followed by a gTLD and with the space eliminated or replaced with a hyphen ; (2) domain names that include a misspelling of Complainant’s mark in which either “doo” is misspelled as “do” and/or ”poopy” is misspelled as “poopie”; (3) identical domains with generic or descriptive terms, such as store, service(s), guy, bag, added; and (4) misspelled domains with generic or descriptive terms added.
Complainant asserts that, in view of its registrations and longstanding use of POOPY DOO, it has established common law and registered rights in the POOPY DOO mark in connection with bags for pet waste and dispensers therefor. It further maintains that, given that Respondent’s domain names incorporate in full either Complainant’s POOPY DOO mark, a common misspelling of that mark, or add descriptive or generic terms to that mark (or misspellings thereof), the domain names are identical or confusingly similar to the POOPY DOO mark, in which Complainant has rights.
Complainant alleges that Respondent cannot demonstrate rights or legitimate interests in the subject domain names. According to Complainant, Respondent has been, and still is, known as TOP PAW.
Complainant notes that Respondent has two websites to which all of the disputed domain names redirect: poopydoo.com and poopydoostore.com, the former of which is devoted to pet waste solutions and displays a “Products” link that directs consumers to the store site, which sells the exact products listed in Complainant’s registrations. Such sites were acquired by Respondent in 2014. Such use of Complainant’s mark, Complainant declares, is likely to cause consumer confusion and is not a bona fide offering of goods or services.
Complainant also notes that there is no suggestion of fair use commentary on Respondent’s sites, both of which are entirely commercial in nature.
With respect to the issue of “bad faith” registration and use, Complainant emphasizes that its trademark rights arose at least as early as 2002, years before the first registration of any of the disputed domain names, the earliest of which appears to have been registered in 2005. Complainant points out that each of the disputed domain names was renewed by Respondent despite its actual knowledge of Complainant’s superior rights.
Complainant alleges that Respondent had actual knowledge of Complainant’s rights. Complainant explains that Respondent, in August 2005, filed an application with the United States Patent and Trademark Office (PTO) to register the mark “POOPY DO SERVICES, “for use in connection with waste disposal services. The PTO indicated in March 2006 that such application may be rejected on grounds of likelihood of confusion with the marks that were the subject of two then pending applications filed by Complainant for POOPY DOO and POOPY DOO POUCH. Respondent did not respond to the refusal to register and the application went abandoned.
Complainant contends that “[a]cquiring and using a confusingly similar domain to compete with the prior rights holder is registration in bad faith under the Policy.” It further notes that it first learned of Respondent’s domain names on or about August 9, 2019 and promptly thereafter sent a cease and desist letter to Respondent. Respondent failed to respond to the letter.
In conclusion, Complainant maintains that “Respondent’s knowing and willful free-riding on Complainant’s long-established brand despite having been placed on actual notice of Complainant’s longstanding rights is clear evidence of bad faith registration and use.”
B. Respondent
Respondent contends that the complaint represents a “gross abuse” of the UDRP procedure, involving, in its view, a complex trademark dispute.
Respondent asserts that although Top Paw Distributing LLC is the registered owner of the domain names and is the named respondent, the entity that uses the domain names in issue is Poopy Do Services and that the business is publicly known as “Poopy Doo.”
In its Response, Respondent explains that it began offering pet-waste removal services in 2004. In February 2007, Respondent began offering various pet-waste products, including dog waste stations, dog waste bags and the like, to its clients as a complement to its waste-removal services. Respondent eventually created a website for the complementary products at poopydostore.com. Around the same time, Respondent’s principal became aware of Complainant and its pet-waste products. At that time, all of Complainant’s pet-waste products were branded either CROWN or POOPY POUCH. Respondent’s principal had never heard of or seen Complainant’s diaper-disposal products, which were branded POOPY DOO. The first time Respondent became aware of Complainant’s use of the POOPY DOO mark was when it received the cease and desist letter.
Respondent served as a distributor for Complainant’s pet waste products from about February 2007 until its sales of Complainant’s products fizzled out in the following years. While a distributor of Complainant’s products, Respondent operated under the name “Poopy Do Services, which fact was known by Complainant’s VP for Sales.
According to Respondent, Complainant did not object to Respondent’s use of its name inasmuch as Complainant did not and does not actually use the mark POOPY DOO in connection with pet waste products (other than for a brief period of time in order to secure its trademark registration). Rather, according to Respondent, Complainant uses the mark POOPY DOO in connection with the sale of human diaper disposal products, including diaper disposal bags and bag dispensers. Respondent alleges that Complainant uses the mark POOPY POUCH on its pet-waste products. According to Respondent, “Crown simply does not use the registered mark [POOPY DOO] in connection with pet-waste products. Crown has branded its pet-waste products under the dissimilar mark POOPY POUCH. Therefore, Crown cannot demonstrate it has rights in a mark for which Respondent registered identical or confusingly similar trademarks.”
Respondent contends that Complainant’s trademark registration for POOPY DOO in connection with pet-waste products is invalid and void ab initio because Complainant never used the mark in commerce before the registration issued, because the registration was obtained fraudulently and because Complainant falsified its date of first use.[ii] Respondent asserts that its use of the mark POOPY DO predates Complainant’s use of the mark POOPY DOO and, thus, that Respondent has superior rights.
While Respondent concedes that its application to register POOPY DO SERVICES was rejected in view of applications filed on behalf of Complainant, it indicates that its attorney never explained the basis of the refusal or provided Respondent with a copy of the refusal. Respondent notes that Complainant’s applications to register POOPY DOO POUCH and POOPY POUCH were refused on grounds of likelihood of confusion with existing registrations, in the case of POOPY DOO POUCH, and mere descriptiveness, in the case of POOPY POUCH.[iii]
Respondent asserts it has rights and a legitimate interest in the subject domain names. It contends that it has operated a legitimate business under the POOPY DO mark for more than 15 years without any knowledge of Complainant’s alleged rights in POOPY DOO. At all times since 2004, it has marketed itself and been commonly known by the name “Poopy Do.” Although Respondent uses Top Paw Distributing LLC as the holding company for its domain name registrations, it indicates that it does business through Poopy Do Services and has only ever operated under the mark POOPY DO and/or POOPY DOO and that Complainant acknowledged this fact in its cease and desist letter.
Respondent maintains that it is using its domain names in connection with a bona fide offering of goods and services. Respondent accuses Complainant of attempting to bootstrap its rights in the POOPY DOO mark for pet-waste products by relying on its prior registrations for POOPY DOO for diaper bags and dispensers. “But Crown’s alleged pet-waste offerings are not reasonable extensions of its registrations for diaper-related products. The offerings are not complementary or related in any reasonable way, such that Crown gained rights in pet-waste products solely by virtue of its use of the mark with diaper products.”
Addressing the issue of bad faith registration and use, Respondent contends that it did not have actual knowledge of Complainant’s alleged prior rights before registering and using the disputed domain names. Respondent asserts that it never saw or was made aware of the March 2006 office action issued by PTO indicating that it may reject Respondent’s application to register “POOPY DO SERVICES” in view of two prior pending applications filed on behalf of Complainant. Moreover, Respondent adds, even assuming actual knowledge of Complainant’s rights, Respondent registered the substantially similar domain name poopydo.com and close alternative spellings thereof before the PTO Office action, i.e., on June 3, 2005. Respondent emphasizes that it had no knowledge of Crown’s claim to the POOPY DOO mark until 2019.
Respondent further notes that, despite Complainant’s claim that Respondent had actual knowledge of Crown’s rights in the POOPY DOO mark, Crown never objected when Respondent used the mark while serving as a Crown distributor. It has been more than 12 years since Crown gained actual knowledge of Respondent’s use of the disputed mark and related domain names, Respondent asserts. Such delay, according to Respondent, is “unjustifiable.” Respondent maintains that ‘[s]uch failure to act would signal to any reasonable party that [Respondent’s] registration of the domain names and close misspellings was acceptable.”
Finally, Respondent indicates that a finding of reverse domain name hijacking (RDNH) is appropriate in this case. “Crown had knowledge of Respondent’s legitimate use because Respondent had been a Crown distributor. It should have been obvious to Crown that it could not prove Respondent had no legitimate interest in the domain names. Even if Crown had a legitimate trademark dispute, it should have known a UDRP proceeding was the inappropriate place to bring its claims. It appears Crown filed this UDRP action because it knew its claims would be barred in court. Crown apparently hoped Respondent would ignore, or fail to appreciate the import of, the Complaint and simply default, like so many UDRP respondents. Therefore, a finding of [RDNH] would be appropriate under the circumstances.”
C. Additional Submissions
In its Additional Submission, Complainant notes that its registrations, including Registration No. 3,163,246 covering POOPY DOO for plastic bags for picking up and disposing of pet feces), are presumed valid in a UDRP proceeding absent compelling evidence of invalidity and that such registrations allege a date of first use that antedates Respondent’s first use.
Complainant also argues that Respondent’s laches argument should be disregarded because such an equitable defense is unavailable in a UDRP proceeding and because Respondent did not begin using Complainant’s exact trademark as a domain name until 2019, and Complainant acted promptly after discovering that change.
Complainant further asserts that Respondent’s attempt to rebut the evidence of bad faith in unconvincing. Complainant maintains that it is “highly unlikely” that Respondent’s founder was not notified that Respondent’s application to register POOPY DO SERVICES was found by the PTO likely to cause confusion with the marks that were the subject of Complainant’s then-pending applications and, thus, that Respondent had actual knowledge of Complainant’s trademark rights as early as the March 1, 2006 PTO Office action.
Finally, Complainant indicates that Respondent’s allegations of RDNH are entirely without merit. According to Complainant, “[t]here is no justifiable basis for concluding that Complainant acted in bad faith where Respondent admits Complainant has satisfied one element [of the Policy; i.e., the use of a domain name that is identical or confusingly similar to Complainant’s registered mark], but disagrees with Complainant’s reasonable evidence regarding the remaining elements.”
In its Additional Submission, Respondent first contends the Panel should disregard Complainant’s additional submission because it was filed 14 days after the filing of the Response.[iv]
Respondent asserts that although Crown’s registration is presumed valid, evidence regarding Respondent’s use is relevant to establish its legitimate rights and lack of bad faith registration of the domain names. Respondent further contends that the validity of Crown’s registrations covering diaper-related products is not an issue in this case since “[r]egistrations for diaper products do not reasonably extend to pet waste products.”
Respondent also maintains that Complainant’s unreasonable delay in pursuing its claimed rights is highly relevant to the outcome of this matter. “Most UDRP panels have reached a consensus that consideration of unreasonable delay is a valid exercise of their authority.” Complainant’s assertion that Respondent’s laches argument fails because Respondent did not begin using Complainant’s exact trademark as a domain name until 2019 must be rejected, Respondent declares. “If, as Crown contended when it filed this action, the common misspellings are confusingly similar to its mark POOPY DOO, then it follows that the common misspellings are confusingly similar to Respondent’s prior rights in POOPY DO-and Respondent, thus, has legitimate rights in the domain names and registered them in good faith.”
With respect to the bad faith issue, Respondent attached to its additional submission a declaration signed by the attorney who filed Respondent’s application to register POOPY DO SERVICES in which the attorney attests to the fact that he did not discuss with Respondent the reasons for the application’s refusal.
Lastly, Respondent argues this is an appropriate case for a finding of RDNH because Complainant knew, or should have known, that one of the three elements under the Policy was absent. Respondent emphasizes that it was a Crown distributor and that Respondent communicated with Crown using email addresses associated with one of the disputed domain names – poopydoservices.com.
Complainant, in its Sur-Reply, contends that it has valid pre-dating, incontestable registrations, that Respondent knew or should have known of Complainant’s registrations as early as 2006 and certainly prior to its acquisition of the poopydoo.com and poopystore.com domains, and that, therefore, the Panel should find all of Respondent’s domain registrations after the date of the trademark rejection be treated as bad faith registrations. In the alternative, Complainant maintains that even if the Panel determines that the earliest registrations were innocent, the later registration of Complainant’s exact mark as a domain name used to compete directly with Complainant was not.
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.
Preliminary Issue: Is the Matter Within the Scope of the UDRP?
Respondent contends that this dispute is beyond the narrow scope of the UDRP proceedings, inasmuch as the case involves a complex trademark dispute. As previously noted, some of the issues raised by Respondent in connection with Complainant’s POOPY DOO registration for plastic bags for picking up and disposing of pet feces (Registration No. 3,163,246) are beyond the scope of a UDRP proceeding. However, we understand that Respondent does not dispute the validity of Complainant’s other POOPY DOO registrations. We also believe that the arguments and evidence presented by the parties provide sufficient basis for the Panel to resolve the matter applying well-accepted UDRP principles. Thus, the Panel concludes that this matter falls within the scope of the UDRP.
The Panel concludes that each of the 74 domain names in issue is either identical or confusingly similar to the mark POOPY DOO. As explained by Complainant, the domain names each include either (1) the exact phrase POOPY DOO followed by a gTLD, with the space eliminated or replaced with a hyphen; (2) a misspelling of POOPY DOO in which either “DOO” is misspelled as “DO” and/or “POOPY” is misspelled as “POOPIE”; (3) the POOPY DOO mark with the addition of generic or descriptive terms; or (4) variations of the domain names in category 3 with the same misspellings used in category 2.
It is well-settled that merely misspelling a mark through the addition or deletion of letters and adding a gTLD does not sufficiently distinguish a disputed domain name from a mark under the Policy. See, e.g., Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015).
The Panel further finds that Complainant has rights in the POOPY DOO mark. While Respondent has raised questions regarding Complainant’s Registration No. 3,163,246 - questions that are beyond the scope of the UDRP – the evidence indicates that Complainant owns two other registrations for the POOPY DOO mark. The ownership of a registration demonstrates rights in the mark under the UDRP. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018).
The Panel concludes that Complainant has not met its burden of proof that Respondent has no rights or legitimate interests in the disputed domain names. Rather, the evidence establishes that Respondent is commonly known by the domain name “poopy do” or “poopy doo.” Such terms, or alternative spellings thereof, are the dominant feature of each of the disputed domain names.
As explained in the Response, although Top Paw Distributing LLC is the named respondent, Top Paw is merely the holding company that owns all the domain names. “The entity that actually uses the domain names in business operations is Poopy Do Services.” In support of such assertion, Respondent submitted a variety of documents attesting to the fact that it is commonly referred to as “poopy do” or “poopy doo.” Such documents include a June 2005 letter from American Express to Poopy Do Services, LLC, an invoice from Air America Phoenix KXXT addressed to Poopy Doo, a Bank of America account summary information document relating to an account in the name of Poopy Do Services, a May 2005 letter from the IRS assigning an employer identification number to Poopy Do Services LLC, and an October 2004 invoice from Poopy Do- Carl Gregory to a customer in Chandler, AZ. See Grundfus Holding A/S v. PrivacyProtect, org., et al., WIPO Case No. 2011-1355 (“Furthermore, Respondent’s business appears to be commonly known by the disputed Domain Name, which would establish a legitimate interest pursuant to paragraph 4(c)(ii) of the Policy.”)
The Panel further concludes that before any notice of this dispute, Respondent was using the disputed domain names in connection with a bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy. The evidence, including the sworn declaration of Carl Gregory, the owner of Respondent, as well as the documents referred to in the preceding paragraph, indicates that, at all times since 2004, Respondent has offered pet waste cleanup services and been commonly known by the name “Poopy Do.” Respondent registered poopydo.com and close alternative spellings thereof in June 2005. Such evidence is the type accepted by prior UDRP panels to establish rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, Section 2.2.
The Panel determines that the evidence does not establish that the disputed domain names were registered and are being used in bad faith. While each of Complainant’s POOPY DOO registrations alleges a date of first use of 2002, the weight of the evidence does not support Complainant’s assertion that Respondent had actual notice of Complainant’s rights in POOPY DOO prior to August 19, 2019, when Respondent received Crown’s cease and desist letter. Mr. Gregory, in his sworn declaration, so testified. See Gregory Declaration, para. 61. As noted above, Respondent registered the domain name poopydo.com and alternative spellings thereof as early as June 2005. The evidence further indicates that Respondent registered the poopydoo.com and poopydoostore.com domains in 2014; in other words, prior to Respondent’s actual knowledge of Complainant’s rights in POOPY DOO. While Complainant asserts that Respondent must have known of Complainant’s rights in POOPY DOO at the time of the PTO’s March 2006 Office action, such assertion is based on mere conjecture and is rebutted not only by Mr. Gregory in his sworn declaration but also by the attorney, Jared C. Simmons, who prosecuted Respondent’s application to register POOPY DO SERVICES. Mr. Simmons, in his sworn declaration, indicates that “Mr. Gregory and I did not discuss the reasons why [the application] was denied since Mr. Gregory abandoned his efforts to secure the intellectual property rights for monetary and other reasons.” See Simmons Declaration, para. 7.[v]
Reverse Domain Name Hijacking
Paragraph 15(e) of the UDRP Rules provides that, 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.”
RDNH is furthermore defined under the UDRP Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
This is a close case on the issue of RDNH. The Panel concludes, however, that it cannot find that Complainant brought this complaint in bad faith. It appears to the Panel that Complainant raised substantial issues with respect to each of the elements of the Policy. While Respondent was a former distributor of Complainant, Mr. Trunsky indicates that he did not recall dealing with a company called Poppy Do Services. See Trunsky Declaration, para. 3. Moreover, Respondent’s assertion that the complaint was a gross abuse of the UDRP procedure is belied by the fact that the Panel has determined that this matter is appropriate for resolution under the UDRP. Respondent’s assertion that the complaint was filed in the hope that Respondent would default is based solely on conjecture.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <poopydoo.co>, <poopydoo.com>, <poopy-doo.com>, <poopydoo.mobi>, <poopydoo.net>, <poopiedo.com>, <poopiedo.net>, <poopiedoo.com>, <poopiedoo.net>, <poopydo.com>, <poopy-do.com>, <poopydo.mobi>, <poopydo.net>, <poopydoos.com>, <gotpoopydoo.com>, <poopydoobag.com>, <poopydoobags.com>, <poopydoobutler.com>, <poopydoocam.com>, <poopydoocleanup.com>, <poopydoodna.com>, <poopydoofacts.com>, <poopydooguy.com>, <poopydoopetcare.com>, <poopydoopetservice.com>, <poopydoopetservices.com>, <poopydoopicksup.com>, <poopydoopickup.com>, <poopydoopickups.com>, <poopydoopooperscooper.com>, <poopydoopooperscoopers.com>, <poopydooremoval.com>, <poopydooscooper.com>, <poopydooscoopers.com>, <poopydooservice.com>, <poopydooservices.com>, <poopydoostation.com>, <poopydoostations.com>, <poopydoostore.com>, <1877poopydo.com>, <1-877-poopydo.com>, <877poopydo.com>, <awpoopiedo.com>, <awpoopiedoo.com>, <awpoopydo.com>, <awpoopydoo.com>, <gotpoopydo.com>, <poopiedoguy.com>, <poopiedooguy.com>, <poopiedooservice.com>, <poopiedooservices.com>, <poopiedoservice.com>, <poopiedoservices.com>, <poopydobag.com>, <poopydobags.com>, <poopydobutler.com>, <poopydocam.com>, <poopydocleanup.com>, <poopydoconcierge.com>, <poopydodna.com>, <poopydoguy.com>, <poopydooconcierge.com>, <poopydopetcare.com>, <poopydopickup.com>, <poopydopooperscooper.com>, <poopydopooperscoopers.com>, <poopydoremoval.com>, <poopydoscooper.com>, <poopydoscoopers.com>, <poopydoservice.com>, <poopydoservices.com>, <poopydostation.com>, <poopydostations.com>, <poopydostore.com> domain REMAIN WITH Respondent.
Jeffrey M. Samuels, Charles A. Kuechenmeister, David Safran
Panelists
Dated: November 27, 2019
[i] The Panel notes that Complainant’s Sur-Reply was filed only two days prior to the due date of the Panel’s decision. While the Forum Rules seem to permit such filing, and the Panel has therefore considered the arguments set forth therein in reaching its decision, the Panel expresses concern that permitting such filings so late in the process has the potential to undercut one of the features of the UDRP process, namely, the prompt determination of the parties’ rights under the Policy.
[iii] The Panel notes, however, that the evidence indicates that Complainant owns a registration (No. 4,288,738) for the mark “Poopy Pouch – Doggy Poo Bags” and Design, as used since January 2010 for biodegradable plastic bags for disposing of pet waste, and a registration (No. 4390592) for the mark “Poopy Pouch” and Design, as used since December 2004 for plastic bags for disposing of pet waste.
[iv] As Respondent concedes, however, the Forum’s Supplemental Rules no longer provide deadlines for the submission of additional materials. Thus, the Panel, exercising its discretion, has considered the parties’ additional submissions in reaching its decision.
[v] While Respondent contends that Complainant unreasonably delayed in bringing this matter, the sworn to evidence on this issue is equivocal. While Mr. Gregory swore that he provided Crown’s VP of Sales, Todd Trunsky, with information, including the email address of info@poopydo.com, back in 2007 (see Gregory Declaration, para. 47), Mr. Trunsky, in his sworn declaration, stated that “[t]o the extent any email address or other mention of the domain name poopydo.com might have been used in connection with PDS services, I do not recall that it caught my attention at the time.” See Trunsky Declaration, para. 6. In view thereof, the issue of unreasonable delay or laches did not factor into the Panel’s decision.
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