Generic Top Level Domain Name (gTLD) Decisions

The National Arbitration Forum

P.O. Box 50191

____________________________________

Complainant:
Dog.com, Inc.
1035 Philadelphia Pike, Suite D
Wilmington, DE 19809 USA
Attn: James McNelis
(302) 762-3974 (Telephone)
(302) 762-3974 (Facsimile)

VS.

Respondent:
Pets.com, Inc.
435 Brannon St.
San Francisco, CA 94103 USA
Attn: Bayard Carlin
(415) 222-9999 (Telephone)
(415) 222-9998 (Facsimile)

File Number: 93681

Filing Date: 02/11/00

_____________________________________________________

Domain Name(s): “DOGS.COM”

Domain Name Registrar: Network Solutions, Inc.

Date of domain name registration: 11/30/98

Date Complaint was sent to Respondent in accordance with Rule 2(a): 02/11/00

Response Due Date: 03/06/00

On February 11, 2000 the Complainant, Dog.com, Inc., filed its complaint with the National Arbitration Forum (“The Forum”) pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”). After reviewing the Complaint for administrative compliance, The Forum transferred the Complaint to the Respondent, Pets.com, Inc., in compliance with Rule 2(a), and the administrative proceeding was commenced pursuant to Rule 4(c). In compliance with Rule 4(d) The Forum immediately notified Network Solutions, ICANN and the Complainant that the administrative proceeding had commenced.

The Respondent registered the domain name with Network Solutions, the entity that is the Registrar of the domain names. By registering its domain name with Network Solutions, the Respondent agreed to resolve any dispute regarding its domain name through ICANN’s Uniform Domain Name Dispute Resolution Policy.

The above-captioned matter came on for an administrative hearing on March 27, 2000 before a three (3) arbitrator panel, the Honorable Harold Kalina (Ret.), Sally M. Abel, Esquire and the Honorable Charles K. McCotter, Jr. (Ret.), Panel Chair. The Complainant is represented by Patricia Smink Rogowski, Esquire of Connoly, Bove, Lodge & Hutz, LLP, 1220 Market St., Wilmington, DE 19899. The Respondent is represented by John C. Baum, Esquire of Townsend and Townsend and Crew, LLP, Two Embarcadero Center, 8^th Floor, San Francisco, CA 94111-3834. This matter is submitted for decision in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”) and Rules (the “Rules”). Upon the written submitted record, and the following findings and conclusions, we find for the Respondent.

1. The Complainant Dog.com, Inc. owns U.S. Service Mark Registration No.

2,240,407, registered April 20, 1999 for “DOG.COM and Design” in color, in Class 42 (Miscellaneous services) for providing an interactive computer database in the field of dogs, dog care, dog breeds, dog breeding, dog breeders, dog health, information about dog products, dog adoption, dog rescue, dog advocacy, dog activities, dog clubs, dog training; providing on-line facilities for real-time interaction with other computer users and electronic bulletin boards concerning topics of interest relating to dogs. Dog.com, Inc. owns and administers an active Web site using the domain name DOG.COM and registered this domain name with Network Solutions on August 14, 1997.

2. Pets.com, Inc. has no active Web site at DOGS.COM. Instead, customers who

type DOGS.COM are redirected to its PETS.COM Web site. The Complainant contends that once there, the URL is “refreshed”such that DOGS.COM disappears and the customer’s “back” button is disabled. Customers seeking DOG.COM who mistakenly type DOGS.COM reach the wrong site and get stuck there. Dog.com, Inc. has received complaints from customers when this occurs.

3. Pets.com, Inc. registered and began using the domain address DOGS.COM (along

with others such as KITTENS.COM, GERBIL.COM, and FLEAS.COM) to describe the products and services of its online pet-related business. Pets.com, Inc. obtained the registration on November 30, 1998 by assignment from the original owner, Electronic Image Publishing,

which registered it on March 27, 1995. Pets.com, Inc. registered the DOGS.COM domain address on November 30, 1998 and created the link to its PETS.COM shortly thereafter.

4. Pets.com, Inc. sells products for pets, including dogs, from the website linked to

the DOGS.COM domain name. Pets.com, Inc. links its site to descriptive domain addresses so that consumers can enter a familiar term into their browsers and find a site with related content.

5. The Complainant has a right in the domain name “DOG.COM”, but no trademark or service mark in “dog.com”. The Complainant disclaimed the words “DOG.COM” in its U.S. Registration No. 1,770,301: “no claim is made to the exclusive right to use “DOG.COM”, apart from the mark as shown.”

6. Pets.com, Inc. has legitimate interests in owning the DOGS.COM domain address

and using it to identify and promote the type of goods and services it offers from its PETS.COM website. Pets.com, Inc. registered and is using the DOGS.COM domain address to describe its

pet-related business.

7. The Complainant has failed to show that the Respondent registered and is using the domain name, DOGS.COM, in bad faith.

8. The Respondent seeks dismissal of instant Domain Name Dispute Complaint. The

Respondent further requests that the Arbitrators make an express finding of fact that the Complainant has brought this Complaint in bad faith and has attempted to engage in reverse domain name hijacking.

9. The Arbitrators decline to make a finding of bad faith or reverse domain name hijacking against the Complainant.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
2. that the 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.

The Complainant has not shown any of the above.

We certify that we have acted independently and have no known conflict of interest to serve as the arbitrators in this proceeding. Having been duly selected and being impartial, we enter the following decision:

Based upon the above findings and conclusions, we find in favor of the Respondent. Therefore, the remedies requested by the Complainant pursuant to Paragraph 4.i of the Policy and Paragraph 15 of the Rules are denied. The Respondent shall not be required to cancel or to transfer to the Complainant the domain name “DOGS.COM.”

This 31st day of March, 2000.

Honorable Harold Kalina (Ret.), Arbitrator

Sally M. Abel, Esquire, Arbitrator

Honorable Charles K. McCotter, Jr. (Ret.), Arbitrator

By: Charles K. McCotter, Jr., Panel Chair