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Pet Food Experts, Inc v. R. Ryner [2005] GENDND 535 (30 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pet Food Experts, Inc v. R. Ryner

Case No. D2005-0536

1. The Parties

The Complainant is Pet Food Experts, Inc., Cumberland, Rhode Island, United States of America.

The Respondent is R. Ryner, Las Vegas, Nevada, United States of America.

2. The Domain Name and Registrar

The disputed domain name, <petfoodexperts.com> (the “Domain Name”), is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2005. That same day the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name(s) at issue. On May 19, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 10, 2005. The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 13, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2005. The Response was filed with the Center on July 4, 2005.

The Center appointed Mark Partridge as the sole panelist in this matter on July 11, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a distributor of brand-name pet foods and related supplies in New England. It adopted the corporate name Pet Food Experts, Inc., in 1993, and operates a website at “http://pfxne.com” displaying the service mark PET FOOD EXPERTS and a copyright notice date of 2005. It has also obtained the domain names <petfoodexperts.org>, <petfoodexperts.biz>, <petfoodexperts.net> and <petfood-experts.com>.

Respondent is a distributor of FLINT RIVER RANCH dog and cat food located in Las Vegas, Nevada. Respondent obtained the Domain Name <petfoodexperts.com> on May 18, 2003, which it uses for a website selling FLINT RIVER RANCH pet food.

In 2004, Respondent rejected at least three unsolicited bids to purchase the Domain Name.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has common law rights in the name PET FOOD EXPERTS because it has operated under that name for over 11 years and “prominently displays this service mark on it’s [sic] facility, all stationary, documentation, and current website”.

Complainant contends that Respondent has no legitimate interest in the Domain Name because it is not known by that name and does not use the name on its website. Complainant further contends that the Domain Name was registered and used in bad faith to disrupt the business of a competitor. Complainant also contends that bad faith is shown by Respondent’s use of erroneous information in the Domain Name registration record.

B. Respondent

Respondent denies that Complainant has any protectable rights in PET FOOD EXPERT. Respondent states that it registered and used the Domain Name for a bona fide offering of goods two years before any notice of Complainant’s claim. Respondent asserts that it adopted the name in good faith as an apt description for its business as a distributor of FLINT RIVER RANCH pet food products because it was not permitted by the manufacturer to use the FLINT RIVER RANCH mark in its domain name. Respondent further asserts that it selected the name without any knowledge of Complainant, which is located in a remote part of the country.

6. Discussion and Findings

To prevail on its claims, Complainant has the burden of proving three elements: (1) that the Domain Name is identical or confusingly similar to a mark in which Complainant has rights; (2) that the Respondent lacks any rights or legitimate interests in the Domain Name; and (3) that the Domain Name was registered and used in bad faith. As more fully explained below, Complainant has not met its burden on these elements.

A. Identical or Confusingly Similar

It is obvious that the Domain Name is identical to a name in which Complainant claims trademark rights. Complainant acknowledges that it has not obtained any trademark registrations for the name PET FOOD EXPERTS. Instead, it claims to have common law rights in the name.

Complainant correctly states that common law rights may be a basis for a valid complaint under the Policy. The issues here are whether the name PET FOOD EXPERTS is capable of protection as a trademark and whether Complainant has presented sufficient evidence to establish common law rights.

The standards applicable to the issue of common law rights have been explained in prior decisions. For example, Baltimore Gas and Electric Company v. National Material Supply Co., LLC., WIPO Case No. D2001-0315 (2001), states:

“To prevail on its claim, Complainant must establish enforceable trademark rights in its trade name. Since Complainant lacks a federal registration for its alleged mark, it must rely on common law rights. Such rights can arise from use. However, the fact that it has used the trade name for many years in itself is not sufficient. To serve as a trademark, the name must be used in a manner so that the public can come to recognize it as an indication of source. Since the name is descriptive, the Complainant must also show that the name has become distinctive as an indication of a single source, and is not simply viewed by the public as a description applicable to the goods or services from various sources.

“The evidence presented by Complainant to support its claim of trademark rights is very weak. The materials submitted by Complainant include annual reports and pages from its “BGE.com” website. The only prominent use of the name appears on the cover of the company’s 1955 annual report. The name also appears in text as a reference to the company. However, the primary mark used in the materials is BGE. We are given no evidence of consumer advertising or promotional materials in which the name is used as a mark Based on the materials submitted, it would seem that consumers would know Complainant by the mark BGE, not by its trade name.

“Of course, the fact that Complainant has used BALTIMORE GAS AND ELECTRIC as its trade name since 1955 is an important consideration. Under U.S. trademark law, rights in a descriptive term can be found based on “proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made”. 15 U.S.C. 1052. But this requirement begs the question of whether Complainant has made substantially exclusive and continuous use of BALTIMORE GAS AND ELECTRIC as a mark.

“Complainant has the burden of establishing that the Domain Name is confusingly similar to a trademark or service mark in which it has rights. The Policy is specifically limited to trademark rights. Although personal names and trade names that serve as trademark have been properly protected under the Policy, the Policy does not extend to protection of personal or trade names in which trademark rights have not been established. Based on the evidence presented, it would be difficult to find that Complainant has satisfied its burden of proof with respect to trademark rights in the name BALTIMORE GAS AND ELECTRIC.”

Similarly, the decision in Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083 (2001), dealt with a claim of common law rights in a descriptive name:

“The mark AMERICAN BACKGROUND is obviously descriptive of Complainant’s services. Therefore, to establish common law rights, Complainant must prove secondary meaning. Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. Here, the only evidence presented is the bald claim that the mark has been used since 1992, and that Complainant’s gross sales have exceeded $7 million. The only evidence of the nature and manner of use is a web page dated January 11, 2001. Given the extremely weak character of Complainant’s mark, I find that the evidence of secondary meaning is inadequate to prove any enforceable rights in the mark.”

See also Trendwest Resorts, Inc. v. Kevin Tisdel, WIPO Case No. D2001-0987 (2001) (discussing evidence sufficient to establish common law rights in the mark MOUNTAIN STAR).

Here, Respondent contends that Complainant has failed to present sufficient evidence of secondary meaning to establish trademark rights. The record presented by Complainant, indeed, is sparse on this point. Complainant has shown that it changed its corporate name to PET FOOD EXPERTS, INC on December 15, 1993. In the intervening eleven years, it claims it has prominently displayed this name on its facility, trucks, stationary, documentation and website. Unfortunately, Complainant provides no evidence to show the nature and manner of this use, and we are not informed how long the name has appeared in its current form on the website. Complainant also tells us that it serves over 2000 retail shops and veterinarians in the New England territory, but does not show the manner in which it presents the claimed name to those customers.

Given the record presented, the Panel simply cannot tell if Complainant has made adequate use of PET FOOD EXPERTS to establish rights in the mark. It is regrettable that Complainant relied on meager allegations and failed to present further evidence of use and secondary meaning in its Complaint. Perhaps such rights could be shown if Complainant were invited to submit additional evidence. Given the findings on the other issues below, however, it is unnecessary to extend an invitation to submit further evidence or to make any finding on this issue. Even if the Panel assumed that Complainant did have rights sufficient to meet this first element of its claim, the Panel finds that it has not prevailed on the other elements.

B. Rights or Legitimate Interests

Respondent contends that it has a legitimate interest in the Domain Name because it adopted the name without knowledge of Complainant and has used the Domain Name for a bona fide offering of goods for two years prior to any objection by Complainant.

A similar situation was addressed in American Eyewear, Inc. v. Thralow, Inc., WIPO Case No. D2001-0991 (2001), which states:

“Paragraph 4(c) of the Policy states that if the Panel, based on its evaluation of all the evidence, finds that Respondent: (i) used the Domain Name in connection with a bona fide offering of goods and services; (ii) has been commonly known by the domain name; or (iii) is making a legitimate noncommercial use of the domain name, then Respondent will be found to have a legitimate interest in the Domain Name.

“The evidence indicates that Respondent is making use of the Domain Name in connection with an offering of goods and services in commerce. For example, in Paragraph 13(f) of its Complaint, Complainant explains how Respondent came to own the Domain Name in late 1998 or early 1999, and in Paragraph 13(g) Complainant explains that, “Respondent uses the Domain Name to sell sunglasses and related accessories outside the Geographic Service Area of North Dakota and Minnesota and uses the Domain Name in advertisements, publications and other documents to promote the Respondent’s services outside the Geographic Service Area of north Dakota and Minnesota”. Respondent claims its annual sales of goods and services through <peepers.com> is approximately $3,5 million.

“Although use in connection with the sale of goods or services is apparent, our inquiry must go further since not all such use qualifies as bona fide use. “To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.” Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (2000). Here, it does not appear that Respondent adopted PEEPERS as a deliberate infringement of Complainant’s rights. Rather, the selection was based on a long period of prior use of the name. At the time of Respondent’s adoption of PEEPERS, any rights of Complainant were limited to its local area of Texas. As a good faith junior user in a remote location, Respondent did not violate any potential rights of Complainant. See United Drug Co. v. Theodore Rectanus Co., [1918] USSC 182; 248 U.S. 90 (1918). In the absence of contradictory facts suggesting a deliberate intent to infringe, I find that Respondent’s use of the Domain Name was bona fide.”

Similarly here, it appears that Complainant’s use of PET FOOD EXPERTS was limited to the New England area. Even assuming Complainant had protectable rights in the name in that area, Respondent appears to have been a good faith user in a remote location, since the records shows it used the Domain Name for its pet food distribution business in the Las Vegas, Nevada area. The Panel finds that Respondent made a bona fide offering of goods and services under the name well prior to any knowledge of Complainant’s objection or use of the same name.

Thus, the Panel finds that Respondent has shown a legitimate interest in the Domain Name under the Policy.

C. Registered and Used in Bad Faith

Complainant relies on two circumstances to claim bad faith: (1) that respondent registered and used the Domain Name to disrupt the business of a competitor; and (2) that respondent used erroneous registration information.

The evidence presented indicates that the parties are not direct competitors, but rather merely regional distributors of brands of pet food that happen to be competitive on a national scale. More importantly, it does not appear that Respondent selected the Domain Name with the intent of disrupting Complainant’s business. Instead, it appears that Respondent did not know of Complaint until this case was filed. Respondent has adequately explained its good faith basis for selecting the Domain Name, which is an apt description for its business. The Panel finds no basis for concluding that Respondent registered or used the Domain Name with an intent to disrupt Complainant’s business or to trade on Complainant’s remote use of the same name.

Although some cases have relied on false registration information to support a finding of bad faith, that reasoning does not apply here. The allegedly erroneous information is explained as routine change in mailing address and a typo in which the Respondent’s last name is spelled “Ryner” instead of “Reyner”. Respondent has shown that there was nothing “calculated to conceal [Respondent’s] identity and location in an attempt to obstruct application of the Policy”, as Complainant contends.

Thus, the Panel finds that Complainant has failed to show that the Domain Name was registered and used in bad faith under the Policy.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Mark Partridge
Sole Panelist

Dated: July 30, 2005