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FoodScience Corporation v. Netpets, Inc. [2001] GENDND 1022 (25 May 2001)

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

1.1 The Complainant is FoodScience Corporation, a Vermont corporation with its principal place of business at 20 New England Drive, Essex Junction, Vermont, USA.

1.2 The Respondent is Netpets, Inc., a corporation having a place of business at 2053 Sandalwood Court, Palo Alto, California, USA.

2.1 The disputed domain names are <glyco-flex.com> and <glycoflex.com>.

2.2 The registrar of the disputed domain names is Network Solutions, Inc., a Verisign company having a corporate administration office located at 505 Huntmar Park Drive, Herndon, Virginia, USA.

3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on April 2, 2001.

3.2 On April 12, 2001, all formal requirements for the establishment of the complaint were checked by WIPO and found to be in compliance with the ICANN 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 Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.

3.3 On April 12, 2001, WIPO transmitted Notification of the Complaint and Commencement of the Administrative Proceedings to Respondent.

3.4 On May 2, 2001, WIPO transmitted notification of Respondent's default to the Respondent.

3.5 On May 9, 2001, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On May 10, 2001, the undersigned transmitted by facsimile the executed Statement and Declaration to WIPO.

3.6 On May 11, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances it would be required to forward its decision to WIPO by May 25, 2001.

The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

4.1 Complainant FoodScience Corporation owns the rights to the registered trademark GLYCO-FLEX for "veterinary food supplements for dogs," which was registered August, 26, 1997 as U.S. Reg. No. 2,091,217, with a claimed first use as early as 1986.

4.2 The Respondent registered the domain names <glyco-flex.com> and <glycoflex.com> on May 26, 2000. The domain names are not active.

A. Complaint

Complainant states:

"Complainant is in the business of, among other things, selling vitamins and nutritional supplements for animals. Complainant has been using GLYCO-FLEX for approximately fifteen (15) years to identify veterinary food supplements for dogs. GLYCO-FLEX has no meaning or significance other than as a trademark identifying Complainant’s products and distinguishing them from those of its competitors. As a consequence of product quality and consumer acceptance, GLYCO-FLEX has acquired substantial goodwill belonging exclusively to Complainant."

"A search of the term "glycoflex" on any world wide web search engine will reveal multiple "hits" containing information regarding Complainant’s products, which are marketed and sold by Complainant’s Vetri-Science Laboratories division. Complainant has sales of approximately Thirty Million Dollars ($30,000,000) for products bearing the GLYCO-FLEX mark since 1991."

"Complainant owns a U.S. federal registration for GLYCO-FLEX, a trademark for veterinary food supplements for dogs. The federal registration number is 2,091,217. The mark is registered on the Principal Register."

"Complainant first used GLYCO-FLEX on its products in 1986. Complainant obtained its federal registration on August 26, 1997. Respondent applied for and obtained registrations for the domain names at issue on May 26, 2000 – approximately fourteen (14) years after Complainant began using GLYCO-FLEX and approximately three (3) years after Complainant obtained its U.S. federal trademark registration."

"Respondent’s name is "Netpets, Inc.," which leads one to assume that Respondent is familiar with the veterinary pet industry. Accordingly, Respondent obtained the domain names at a time when it likely knew of the fame that GLYCO-FLEX possessed and likely knew that Complainant owned a U.S. trademark registration for GLYCO-FLEX."

"Complainant first contacted Respondent by sending a letter to Respondent on October 25, 2000. A copy of the letter, and the confirmation of receipt executed by Respondent, is attached as Annex 4. The letter asked Respondent to contact counsel for Complainant to discuss the transfer of the domain names. At that time, Complainant had no reason to believe that Respondent was acting in "bad faith," as such term is defined in the Policy or the Anti-Cybersquatting Act, 15 U.S.C. Section 1125(d). Respondent did not reply to the October 25, 2000 letter."

"On December 18, 2000, a second letter was sent to Respondent. This letter asked the Respondent to contact counsel for the Complainant as soon as possible to discuss the domain names."

"On December 21, 2000, Respondent replied to the December 18, 2000 letter. A copy of the reply is attached as Annex 6. The reply indicates that Respondent was willing to transfer the domain names to Complainant, but at a cost per domain name of $4,100.00 each."

"On January 22, 2001, Complaint sent a third letter to Respondent. This letter advised that Complaint was willing to cover Respondent’s legitimate out-of-pocket costs in obtaining the domain names, but would not permit Respondent to profit from the transfers."

"The January 22, 2001 letter asked the Respondent to reply to Complainant by January 26, 2001. Respondent did not reply to the letter."

"On February 5, 2001, Complainant sent a fourth letter to Respondent. This letter asked the Respondent to immediately contact counsel for the Complainant if Respondent had any interest in avoiding litigation. A copy of this letter, and its facsimile confirmation report, is attached as Annex 8. Respondent did not reply to the February 5, 2001 letter."

"To date, and to Complainant’s knowledge, Respondent has not used the domain names. At a minimum, there is no web site that can be accessed through either domain name."

"The only actual differences between the domain names and the trademark are the "www", ".com" and a hyphen (lack thereof) in one of the domain names. These are trivial differences. Accordingly, both domain names should be considered identical to GLYCO-FLEX for purposes of this proceeding."

"The dominant portion of each domain name is "glycoflex," which is identical to the federally registered trademark GLYCO-FLEX. Accordingly, both domain names and the trademark are confusingly similar in terms of sight and sound."

"Complainant owns a federal registration for GLYCO-FLEX to identify veterinary food supplements for dogs. Moreover, Complainant has used that mark to identify those goods for over fifteen (15) years."

"Respondent has no license rights under Complainant’s common law rights to GLYCO-FLEX, or under Complainant’s federal trademark registration for GLYCO-FLEX. In short, Complainant has never granted any permission or consent to Respondent to use GLYCO-FLEX in any way, shape or form."

"Further, there is no evidence showing that Respondent has ever used the domain names. And, a search on the United States Patent and Trademark Office Database reveals no records of any pending application or registration of Respondent for any trademark or service mark similar or akin to GLYCO-FLEX."

"Complainant submits that Respondent acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring them to Complainant, for valuable consideration in excess of its out-of-pocket costs directly related to the domain names."

"Complainant estimates that Respondent’s actual out-of-pocket costs in obtaining the domain names was less than $50.00 per domain name (the current fee for a .com domain name is only $35 from Network Solutions, see Annex 9: the fee may have been nominally higher when the domain names were first registered in May, 2000). Yet, Respondent demanded more than $4,000 for each domain name from Complainant. It seems quite clear that Respondent intended to make a significant profit from selling the domain names to Complainant. For this reason, Complainant submits that Respondent has acted in bad faith."

"In the alternative, Complainant submits that Respondent registered the domains names primarily for the purposes of disrupting Complainant’s business. Respondent’s name is "Netpets, Inc.," making it a reasonable assumption that Respondent either already does or intends to compete with Complainant’s business. In light of Respondent’s persistent refusals to timely respond to Complainant’s letters, and Respondent’s unwillingness to sell the domain names for its actual out-of-pocket costs, it is a reasonable conclusion that Respondent simply desires to prevent Complainant from being able to use the domain names in furtherance of its business."

"Further, there is no evidence:

(1) of Respondent’s use of, or demonstrable preparations to use, the domain names in connection with any bona fide offering of goods or services;

(2) that Respondent has been commonly known by either of the domain names; or

(3) that Respondent is making any legitimate non-commercial or fair use of the domain names."

B. Response

Respondent did not file a Response to the Complaint.

6.1 The Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).

6.3 WIPO forwarded Notification of the Complaint to the Respondent via post/courier and email in accordance with the contact details found in the appropriate WHOIS database. WIPO also forwarded Notification of Default to the Respondent via email.

6.4 Based on the methods employed to provide the Respondent with notice of the Complaint and default the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.

6.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

In the administrative proceeding, the Complainant must prove that each of these three elements are present.

6.6 As the Respondent has failed to submit a Response to the Complaint, the Panel may accept as true all of the allegations of the Complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, February 29, 2000.

6.7 Based upon the registered trademark for GLYCO-FLEX and the continuous use of the mark, the Complainant clearly has rights in the mark.

6.8 Complainant asserts that the domain names <glyco-flex.com> and <glycoflex.com> are identical to the trademark GLYCO-FLEX.

6.9 The Panel agrees with the Complainant that the only actual differences between the domain names and the trademark are the "www", ".com" and the lack of a hyphen, which are trivial.

6.10 The Panel finds the <glyco-flex.com> and <glycoflex.com> domain names are identical to the registered trademark GLYCO-FLEX, and that the Complainant has established it has rights in the mark GLYCO-FLEX, pursuant to paragraph 4(a)(i) of the Policy.

6.11 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:

(i) before any notice to you [Respondent] of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.

6.12 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain names <glyco-flex.com> and <glycoflex.com>.

6.13 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names <glyco-flex.com> and <glycoflex.com>, pursuant to paragraph 4(a)(ii) of the Policy.

6.14 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(i) states:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name.

6.15 In responding to counsel for the Complainant, the Respondent sent a letter dated December 21, 2000, which stated only the following:

"We are willing to transfer the domains in question to you if the associated charges for registration and handling are reimbursed to us. We have estimated these to be $4100 per domain. If this is acceptable please forward $8200 and all documents for domain transfer to us. We will then complete these documents and return them to you."

6.16 In the absence of contrary evidence, Respondent’s offer to sell the domain names at issue to the Complainant for $4,100.00 each is clearly evidence of registration and use of the domain names in bad faith.

6.17 The Panel finds that the Respondent's offer to sell the domain names for $4,100.00 each is also clearly in excess of any reasonable out-of-pocket costs that could have been associated with each domain name.

6.18 The Panel finds the Complainant has established that the Respondent registered and used the domain names <glyco-flex.com> and <glycoflex.com> in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.

As the Complainant, FoodScience Corporation, has established that the Respondent, Netpets, Inc., has engaged in abusive registration of the domain names <glyco-flex.com> and <glycoflex.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names <glyco-flex.com> and <glycoflex.com> be transferred to the Complainant.

R. Eric Gaum
Sole Panelist

Dated: May 25, 2001