WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
D. & A.’s Pet Food ‘N More Ltd. v. Mr. Pet s, Mr. P’s & Mr. Pet’s Ltd. and Greg Penno
Case No. D2004-0852
1.
The Parties
The Complainant is D. & A.’s Pet Food ‘N More Ltd. of Surrey, British Columbia,
Canada.
The Respondents are Mr. Pet s, Mr. P’s & Mr. Pet’s Ltd. and Greg Penno all of
Mission, British Columbia, Canada.
2.
The Domain Name and Registrar
The disputed domain name <petfoodnmore.com> is registered with Network Solutions,
LLC.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on October 16, 2004. On October 19, 2004, the Center transmitted by
email to Network Solutions, LLC a request for registrar verification in connection with
the domain name at issue. On October 19, 2004, Network Solutions, LLC transmitted
by e-mail to the Center its verification response confirming that the Respondent
Mr. Pet’s is listed as the registrant and providing the contact details for the
administrative, billing, and technical contact. The Center verified that the Complaint
satisfied the formal requirements of the Uniform Domain Name Dispute Resolution
Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy
(the “Rules”) and the WIPO Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the
Respondents of the Complaint, and the proceedings commenced on October 26, 2004.
In accordance with the Rules, paragraph 5(a), the due date for Response was
November 15, 2004. A Response was filed with the Center on November 15, 2004.
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On November 27, 2004, the Complainant made a supplemental filing, which was duly
delivered to the Respondents.
The Center appointed Edward C. Chiasson Q.C. as the sole panelist in this matter on
November 30, 2004. The Administrative Panel finds that it was properly constituted.
The panelist submitted a Statement of Acceptance and Declaration of Impartiality and
Independence, as required by the Center to ensure compliance with the Rules,
paragraph 7.
On December 13, 2004, the Administrative Panel directed that any comments by the
Respondents with respect to whether the Administrative Panel should consider the
Complainant’s supplemental filing and on the merits of the substance of that filing were
to be delivered to the Center and to the Complainant by December 20, 2004. The time
for the decision in this matter was extended to January 4, 2005. The Respondents made
no comments.
The Administrative Panel has considered the Complainant’s supplemental filing.
4.
Factual Background
The following information derives from the Complaint:
Although the registrant of the subject domain name is the Respondent Mr. Pet s, the
Complainant believes that Mr. Pet s “…is not in fact a legal entity but is the trade name
used by the Respondents Greg Penno and Mr. P’s & Mr. Pet’s Ltd., or either of them”.
For this reason, all have been named as Respondents in this proceeding.
The Complainant has carried on the business of offering pet food and pet supplies retail
sale services in the province of British Columbia, Canada since 1988.
The Complainant currently has five retail stores in British Columbia and employs
approximately 50 people. Its annual sales exceed $5,000,0001.
The Respondent Greg Penno was employed by the Complainant between
approximately August 1991 – 1996, including a period of time when he was the Store
Manager of one of the Complainant’s stores. Mr. Penno left employment with the
Complainant to start the Mr. Pet’s business as a competitive enterprise.
The Complainant is the owner of and has rights in two trade-marks: (1) PET FOOD ‘N
MORE; and (2) PET FOOD ‘N MORE & Design (collectively, “the Trade-marks”).
The trade-mark PET FOOD ‘N MORE is registered under Canadian Trade-mark
Registration No. TMA390,793. The trade-mark PET FOOD ‘N MORE & Design is an
unregistered common-law trade-mark.
The Complainant has used and continues to use the Trade-marks in British Columbia,
Canada in the advertisement and performance of its services. The trade-mark PET
FOOD ‘N MORE has been so used by the Complainant since at least as early as
March 6, 1989, and the trade-mark PET FOOD ‘N MORE & Design has been so used
since at least as early as the early 1990s. The Complainant also has used the Trademarks in association with pet-related wares such as dog collars and birdseed.
1
All monetary amounts are Canadian dollars.
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The Trade-marks are displayed extensively in signage and displays at each of the
Complainant’s stores as well as on merchandise bags, stationary and telephone
directory listings. At considerable expense, the Complainant advertises its services and
Trade-marks in various newspapers and radio broadcasts throughout the lower
mainland of British Columbia, which is where Mission and Surrey are located. For
example, over the past four years the Complainant has spent approximately $100,000
per year on advertising expenditures.
By virtue of the Complainant’s longtime and widespread use of the Trade-marks in
British Columbia, the Trade-marks each have acquired a significant reputation and
goodwill in British Columbia, each are identified with the Complainant and with the
business, wares and services of the Complainant.
In 1998, the Complainant became aware that the Mr. Pet’s business was distributing
advertisements that displayed the mark PET FOOD N’ SUPPLIES. The Respondents
were advised in writing of the Complainant’s trademark PET FOOD ‘N MORE in a
May 1, 1998, letter from the Complainant’s solicitors.
The subject domain name was registered on or about August 22, 2000. It was
registered initially under the name of “Mr. Pet’s” and Mr. Penno was identified as the
Administrative and Billing Contacts for the registration (“Mr. Pet s” now is listed as the
Registrant and Administrative Contact).
The Respondents were put on notice of the Complainant’s dispute concerning the
registration of the subject domain name by a June 27, 2001 letter from the
Complainant’s solicitors.
Shortly after receiving this notice, Mr. Penno contacted Mr. MacKay of the
Complainant by telephone and in order to prevent the Complainant from obtaining the
subject domain name, threatened to transfer the subject domain name to an off-shore
entity, if the Complainant were to take any proceeding in respect of the subject domain
name.
Mr. Penno also offered in that telephone conversation to sell the subject domain name
to the Complainant. A few days later, on July 24, 2001, Mr. Penno delivered, on
Mr. Pet’s letterhead, a written offer to sell the subject domain name to the Complainant
for $25,000.
At the time of the communications between the Complainant and Mr. Penno in
July 2001, or at any time prior to that, there was no active website to which the subject
domain name resolved.
At no time prior to the Respondents being notified of the Complainant’s dispute in this
matter in June 2001, had any of the Respondents carried on any business in connection
with a bona fide offering of goods or services in connection with the subject domain
name.
After the Respondents were notified of the Complainant’s dispute in respect of the
subject domain name, a website to which the subject domain name resolves has
appeared with, among other items, sponsored links to the websites of various pet food
and supplies businesses, some of which are competitors of the Complainant. The
website also indicates that offers are accepted for the subject domain name (and other
domain names).
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The Complainant has never consented to or authorized the use of the subject domain
name for display on the Respondents’ website or for any other purpose.
None of the Respondents have become known by the subject domain name.
The following derives from the Response.
The Respondents concede that the subject domain name is identical to the
Complainant’s marks.
The Respondents purchased the subject domain name before this dispute arose. They
do not make money from it.
The Respondents deny that they acquired the subject domain name with the intention of
selling it and deny that they intended to disrupt the Complainant’s business.
Concerning the allegation that the Respondents offered to sell the subject domain name
to the Complainant for $25,000, the Respondents say that the Complainant,
“…approached [Mr. Penno] first and asked me if I would sell it to them. In reply I
proposed $25,000.00, which did not seem exorbitant in view of the fact that other
domain names at the time were selling for hundreds of thousands or millions of
dollars”.
The Respondents deny that they acted in bad faith.
The following derives from the Complainant’s Reply.
The Complainant denies that it approached the Respondents and asked whether they
would sell the subject domain name.
5.
Parties’ Contentions
A.
Complainant
The Complainant relies on its registered and unregistered marks and contends that the
subject domain name is identical to them.
A lack of legitimate interest in the subject domain name is said to be established by the
original non-use of the subject domain name, the history of the relationship between the
parties, a lack of authorization by the Complainant and the fact that the Respondents are
not know by the subject domain name.
The same basic factual framework is asserted to establish bad faith coupled with the
Respondents’ offer to sell the subject domain name for $25,000.
B.
Respondent
The Respondents do not contest the Complainant’s assertion that the subject domain
name is identical to the Complainant’s marks.
The Respondents say that they make no money from the subject domain name and that
they meant no harm to the Complainant.
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The $25,000 offer is said to have been responsive to a request for an offer from the
Complainant and to reflect an appropriate market price.
6.
Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i)
the domain name is identical or confusingly similar to a service mark in
which the Complainant has rights; and
(ii)
the Respondents have no rights or legitimate interests in respect of the
domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of
circumstances:
(i)
circumstances that indicate that the 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 the
Complainant, for valuable consideration in excess of the Respondent’s
documented out-of-pocket costs directly related to the domain name;
(ii)
registration of 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 the Respondent has engaged in a pattern of
such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the
business of a competitor;
(iv)
by using the domain name, intentionally attempting to attract, for
commercial gain, Internet users to the Respondent’s 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 the website or
location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise
evidence of bad faith.
The Complainant refers to a number of previous decisions. While neither determinative
nor binding on this Administrative Panel, often consideration of them is helpful.
A.
Identical or Confusingly Similar
It is conceded that the subject domain name is identical to the Complainant’s registered
and unregistered marks.
The Administrative Panel concludes that the Complainant has met the requirements of
paragraph 4(a)(i).
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B.
Rights or Legitimate Interests
The Respondents have a lengthy, previous history with the Complainant and are
competitors of the Complainant. Competition per se is neither offensive nor does it
connote the lack of a legitimate interest in a domain name, but the use in a domain
name of the mark of another without differentiation, seldom can be legitimate.
The Respondents say that they considered the subject domain name to be generic, but it
is not. They give no explanation why they purchased the subject domain name. In and
of itself, the lack of an explanation need not be telling against them, but placed in the
context of the history of the relationship between the parties, leads clearly to an
inference that they do not have a legitimate interest in the subject domain name.
The Administrative Panel is satisfied that the Complainant has met the requirements of
paragraph 4(a)(ii).
C.
Registered and Used in Bad Faith
A finding that a respondent does not have a legitimate interest in a domain name that is
identical to the mark of a complainant does not lead automatically to a conclusion of
bad faith, but the facts that support the finding are relevant to the bad faith inquiry.
In this case, the Respondents’ driving force, Mr. Penno, was employed by the
Complainant and left to form the corporate Respondent to compete with the
Complainant. The parties operate in relatively close geographic proximity to each
other, that is, in the same physical market.
When the Respondents acquired the subject domain name they had clear knowledge of
the Complainant’s interests.
Respondents say that their $25,000 offer to sell was in response to an inquiry by the
Complainant, which is denied by the Complainant. The Respondents’ contention lacks
credibility in light of the demand letter from the Complainant that preceded the
telephone conversation which apparently resulted in the offer.
Even if the offer were responsive, the quantum would offend the Policy. The
Respondents say that the offer merely reflected the market, but there is no proper
market for the sale of domain names in which the vendor has no legitimate interest and
which are identical to the mark of another. The Policy prescribes the limits of
compensation that properly may be requested. The Respondents’ offer far exceeds that
limit and clearly raises an implication of bad faith.
The Administrative Panel is satisfied that the Complainant has met the requirements of
paragraph 4(a)(iii).
7.
Decision
Based on the information provided to it and on its findings of fact, the Administrative
Panel concludes that the Complainant has established its case.
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The Complainant asked for the transfer of the subject domain name. The
Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Sole Panelist
Dated: December 29, 2004
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