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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.

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 Trade-marks in association with pet-related wares such as dog collars and birdseed.

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).

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.

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).

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.

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

¹ All monetary amounts are Canadian dollars.