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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Hartz Mountain Corporation v. Whois ID Theft Protection

Case No. D2006-1319

 

1. The Parties

The Complainant is The Hartz Mountain Corporation, New Jersey, United States of America, represented by Gottlieb, Rackman & Reisman, P.C., United States of America (the “Complainant”).

The Respondent is Whois ID Theft Protection, Cayman Islands, United Kingdom of Great Britain and Northern Ireland (the “Respondent”).

 

2. The Domain Name and Registrar

The disputed domain name <wardley.com> is registered with Dotster, Inc. (the “Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2006. On October 16, 2006, the Center transmitted by email to the Registrar, Dotster, Inc. a request for registrar verification in connection with the domain name at issue. On October 16, 2006, the Registrar 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. Further, the Registrar stated that, by signing the Registration Agreement with the Registrar, the Respondent had not submitted to the mutual jurisdiction of the courts at the principal office of the registrar.

In light of this, on October 23, 2006, the Center issued a “Complaint Deficiency Notification” to the Complainant (copied to the Respondent), wherein it noted that the Respondent had not submitted to the said mutual jurisdiction. The Center gave the Complainant five days to amend its Complaint in this regard.

By email dated October 23, 2006, the Complainant replied to the Center’s said Notification. It noted that the Complaint had designated the state of Washington, United States of America for jurisdictional purposes, as provided in the Registrar’s Registration Agreement. It sought clarification of whether it was still necessary to amend the Complaint.

On October 24, 2006, the Center wrote via email to the Registrar. It requested clarification as to what mutual jurisdiction the Respondent had agreed to be submitted when signing the Registration Agreement.

By its email dated October 24, 2006, the Registrar replied to the Center’s email of the same date. The Registrar corrected the information contained in its email of October 16, 2006, and confirmed that the Respondent had agreed to submit to the mutual jurisdiction of the courts at the principal office of the Registrar when signing the Registration Agreement (i.e., Washington state, United States of America).

On October 25, 2006, the Center informed the Complainant via email (copied to the Respondent) of the information contained in the Registrar’s email of October 24, 2006. As a result, the Center confirmed that the Complainant did not need to amend its Complaint, and that it would proceed with the case.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was November 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2006.

The Center appointed Thomas Webster as the sole panelist in this matter on November 28, 2006. 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 following information derives from the Complainant.

The Complainant is “a New Jersey pet products corporation which does business under the trademark WARDLEY. […] [The Complainant] is a recognized leader involved in the design, manufacture and sale of high quality pet products, including products relating to fish and reptiles under the WARLDEY brand” (Complaint, Part V, paragraph A, page 6; see also paragraph 2 of the ‘Declaration of Max C. Marx’, being the Corporate General Counsel and Corporate Secretary of the Complainant, filed as Exhibit C to the Complaint, hereinafter referred to as the “Marx Declaration”).

The Complainant sets out that it was established in the United States “in the 1930’s” (Complaint, paragraph A, page 6). During this time, the Complainant sold singing canaries to customers including R.H. Macy, Sears Roebuck, F.W. Woolworth, W.T. Grant and S.S. Kresge, such that “[b]y 1932, Max Stern [founder of the Complainant] was the largest livestock importer in America and decided to expand into packaged bird foods. [The Complainant] and the HARTZ line of pet products were begun” (Complaint, paragraph 7; see also Marx Declaration, paragraph 6)

The Complainant thereafter expanded into a variety of pet care products and pet food, including dog, cat, bird, aquatic and reptile products. This included the creation of a large sales infrastructure, and “[i]n the early 1980s HARTZ products were sold in more than 40,000 U.S. and Canadian retail outlets” (Complaint, paragraph 8; Marx Declaration, paragraph 7).

The Complainant continued expanding in the 1990s, “adding the WARDLEY […] brands as well as rawhide and natural treat manufacturing facilities in America and Brazil”. (Complaint, paragraph 9, Marx Declaration, paragraph 8).

The Complainant claims that the HARTZ and WARDLEY marks are used on more than 1,500 of their products for a wide variety of pet care products (Complaint, paragraph 10). The Complainant also claims that “sales of products and services bearing or under the WARDLEY trademark have been substantial, as have widespread advertising and promotion. For example, in the year 2005 alone, aggregate worldwide sales figures for merchandise under the WARDLEY trademark have exceeded tens of million dollars” (Complaint, paragraph 11; Marx Declaration, paragraph 10).

The Complainant notes that the WARDLEY mark “is advertised in print magazines, on the website at ‘www.hartz.com’” (Complaint, paragraph 12) and that the WARDLEY mark is registered in forty-six countries (Complaint, paragraph 13; Marx Declaration, paragraph 12 and Exhibit 2 thereto). Exhibit 2 to the Marx Declaration lists the registration of the WARDLEY mark in numerous countries, including, for example, the European Union and the United States. Exhibit 5 to the Marx Declaration provides copies of numerous records from the Principal Register of the United States Patent and Trademark Office. By way of example, a copy of the record for the “WARDLEY” mark states that the mark was first used on July 6, 1998, and registered at the United States Patent and Trademark Office on March 30, 1999.

The Complainant claims to be the owner of various domain names which incorporate the WARDLEY mark, including (amongst others) <wardley.biz>, <wardleyfish.com>, <wardley.info> (Complaint, paragraph 15; Marx Declaration, paragraph 14).

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that “[t]he tremendous sales success and promotion of products under the WARDLEY trademark have established for [the Complainant] an enviable reputation in the trade and with the purchasing public. As a result of this extensive advertising and media coverage, and the corresponding success of products, the WARDLEY mark has come to be recognized and relied upon by the trade and the public as identifying and distinguishing [the Complainant] and its aquarium, fish and reptile related products. Indeed, the WARDLEY trademark has become a “famous” trademark entitled to a broad scope of protection” (Complaint, paragraph 12; Marx Declaration, paragraph 11).

In light of the above, the Complainant disputes the Respondent’s right to any interest or title in the WARLDEY mark, claiming as follows:

“1) Respondents cannot demonstrate any use of, or demonstrable preparation to use, the <wardley.com> domain name in connection with a bona fide offering of goods and services.

2) Respondents are making an illegitimate commercial use of the domain name with the intent to misleadingly divert customers for commercial gain.

3) Respondents have never been known by the domain name <wardley.com>.

4) Internet users searching for WARDLEY products on the internet have been and will be connected to the Respondent’s website. When connected to “www.wardley.com”, a user is connected to a website which states ‘Here are some related websites for: wardley.com’. This site offers various pet products merchandise of competitors of [the Complainant]. […] Because legitimate WARDLEY products are available on [the Complainant’s] own website, “www.hartz.com”, the ‘www.wardley.com’ website is directly competing with Hartz Mountain in the sale of pet, aquarium and fish related products (Marx Declaration, paragraph 17).

5) Respondents registered “wardley.com” primarily to disrupt [the Complainant’s] business under the WARDLEY trademark.

6) Respondents, by using the domain name <wardley.com>, has intentionally attempted to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant’s WARDLEY mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or a product or service on Respondent’s Website.

“Given Respondent’s unauthorized adoption of the <wardley.com> domain name well subsequent to the time that [the Complainant] began global use of its well-known WARDLEY mark and name and subsequent to Complainant’s registration of WARDLEY in many countries around the world, Respondents were or should have been well aware of Complainant’s rights. […] By registering <wardley.com>, there can be no question that Respondents seek to misappropriate and capitalize on Complainant’s goodwill in its WARDLEY mark and name and usurp rights which belong exclusively to Complainant. (Marx Declaration, paragraph 17).” (Complaint, paragraph 16; emphasis in original).

The Complainant further asserts that “[d]uring the course of [the Complaint’s investigation regarding the ‘wardley.com’ website], we discovered that the ‘wardley.com’ website is being used for access to lewd jokes and ‘sexy personals’. (Marx Declaration, paragraph 16. Copies of documents which the Complainant claims demonstrate the ‘lewd jokes’ and ‘sexy personals’ are provided in Exhibit 7 to the Marx Declaration).

The Complainant also claims that “Respondent has used the Sponsored Link feature provided by Google to indicate to actual and potential consumers that [the Complainant] sponsors the ‘wardley.com’ site, which is not true. Consumers clicking on ‘wardley.com’ and going to the site, which displays fish and aquarium products, thus are led to believe that these products are legitimate WARDLEY products. [The Complainant] is losing business as a result of the misappropriation of its WARDLEY trademark as part of the <wardley.com> domain name improperly registered by Respondent”. (Marx Declaration, paragraph 17).

Pursuant to paragraph 4(a) to (c) of the Policy, the Complainant brings the Complaint on the grounds that the <wardley.com> domain name is identical or confusingly similar to the Complainant’s Mark, that the Respondent has no right or legitimate interest in the domain name, and the domain name was registered and used in bad faith.

The Complainant claims that the domain name is identical or confusingly similar to the Complainant’s WARDLEY mark, noting that “[w]here a domain name incorporates the entirety of a mark such that the domain name and mark are identical, confusing similarity exists”. […] Since <wardley.com> incorporates the distinctive WARDLEY mark in its entirety, there is sufficient similarity to find WARDLEY and <wardley.com> identical. Moreover, the fact that the WARDLEY mark and <wardley.com> are both used in connection with providing pet products such as aquarium and pond products, fish and reptile food and other pet items, increases the likelihood of confusion among consumers who access <wardley.com> (Complaint, Part V(B), paragraph 1). The Complainant relies upon numerous cases to support its contention in this regard.

The Complainant claims that the Respondent has no right or legitimate interest in the domain name, noting that “[s]ince this element requires complainant to prove a negative, the burden on complainants is light” (Complaint, Part V(B), paragraph 2, footnote 3).

The Complainant contends that “[s]upport for this conclusion [that Respondent has no right or legitimate interest in the domain name] can be found in the fact that the website offers links to websites of direct competitors of [the Complainant] for pet products which are directly competitive with WARDLEY branded products but is not used with the authorization of Complainant.

…

“Further, Respondents lack rights or a legitimate interest in “wardley.com” because neither alias is commonly known by that name. […] A party cannot claim to be commonly known by a particular domain name where, as here, that party uses a domain name incorporating another’s mark to offer competing goods or services. […] Respondents also lack rights or a legitimate interest because there is no evidence that Respondents, before any notice of the dispute, were using the domain name in connection with a bona fide offering of goods or services. Under the Policy, a use is only bona fide if it is a non-infringing use-since trademark law prevents the use of a mark in conjunction with a goods or services similar to those for which the mark was registered any use of a mark in violation of trademark law, as here, is not a bona fide use.”

…

Here, however, Respondents are using the domain name to divert intent users to a website featuring links to various website offering goods and services from [the Complainant’s] competitors, the same goods and services [the Complainant] offers under its WARDLEY mark. Such use of a domain name constitutes trademark infringement, and thus cannot give rise to a bona fide use. […] Furthermore, Respondents’ use of “wardley.com” cannot be bona fide because Complainant has never licensed or otherwise permitted Respondents to use the WARDLEY mark or to apply for or use any domain name incorporating the mark WARLDEY. […] Finally, where a party has registered and used a domain name in bad faith, that party cannot be found to have made a bona fide offering of goods and services”. (Complaint, Part V(B), paragraph 2, pages 15-18) (emphasis in original).

With respect to the domain name being registered in bad faith, the Complainant contends that “[i]t is sufficient that the domain name is used with the intent to attract Internet users for commercial gain by diverting users to an entity totally different website from the one intended. Respondents need not realize actual commercial gain. [By using the WARDLEY name and linking its site to the Google sponsored links page for the Complainant], Respondents must have expected that internet users would be confused into thinking that the entity operating at ‘wardley.com’ and its goods and services are affiliated with [the Complainant], or otherwise believe that the ‘wardley.com’ site and/or any goods promoted there are somehow sponsored, endorsed or otherwise authorized by [the Complainant].

…

“[I]t was Respondents’ duty to determine if the registration of its domain name infringed or violated the rights of any third party. Respondents either failed to determine if any infringement existed or purposely chose to infringe the Complainant’s mark. In either case, Respondents acted at least irresponsibly, and can be found to have registered “wardley.com” in bad faith.

…

“The uniqueness of the WARDLEY mark, and the fact that Respondents have incorporated that mark in its entirety into the domain name, creates a confusingly similar domain name and weighs in finding of bad faith.

…

“Respondents must have intended or expected that internet users seeking to find [the Complainant’s] website under its brand name WARDLEY would encounter Respondents’ website instead, confusing those users into thinking that the entity operating the website associated with “wardley.com”, and the content of that website, is affiliated with or sponsored, endorsed or otherwise authorized by [the Complainant]. Such usage of a domain name amounts to use in bad faith. Additionally, one can access lewd jokes and “sexy personal” advertisements through the “wardley.com” site. The user of the WARDLEY brand in this fashion serves to sully the brand name in a manner which would never be permitted by [the Complainant]” (Complaint, Part V(B), paragraph 3, pages 18-22).

The Complainant seeks that the <wardley.com> domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

A. Identity of the Respondent

Prior to examining the arguments of the Complainant, for the sake of clarification, the Panel seeks to confirm (i) the identity, and (ii) the proper address of the Respondent. In particular, the Panel notes that the Complaint describes the Respondent on page 1 of the Complaint as “General Delivery, Webmaster, Georgetown, Grand Cayman GT, United Kingdom of Great Britain And Northern Ireland”. Later in the Complaint, the Complaint states that “[a]ccording to the Whois database, the Respondent in this administrative proceeding is Whois ID Theft Protection/General Delivery (‘Respondent’)” (Complaint, paragraph I(B), page 4).

With respect to the proper identity of the Respondent, the Panel notes that the Complainant sent its ‘cease and desist’ letter dated May 30, 2006 (Exhibit 5 to the Marx Declaration) to “General Delivery”. The Complainant states that it subsequently became aware that the details of the domain name had been updated on June 27, 2006, and the registrant of the domain name had changed to “Whois ID Theft Protection”. As a result, it issued another ‘cease and desist’ letter dated August 21, 2006, this time to “Whois ID Theft Protection” (Exhibit 6 to the Marx Declaration).

The Panel notes that the Whois database searches provided by the Complainant and the Center to the Panel for the <wardley.com> domain name confirms that “Whois ID Theft Protection” is the registrant, and these searches confirm that the details of the domain name were updated on June 27, 2006.

The Panel finds that the proper Respondent is “Whois ID Theft Protection”. The confusion over the change in registrants is explained by the update of the details of the domain name, wherein the identity of the registrants was changed (either at this time, or around this time), from “General Delivery” to “Whois ID Theft Protection”.

With respect to the proper address of the Respondent, the Complainant states that “Whois ID Theft Protection” is located in the “United Kingdom of Great Britain and Northern Ireland”. The correct address of the Respondent is, however, the Cayman Islands. While the Panel recognises that the Cayman Islands are an overseas territory of the United Kingdom, clarification is required so as to not, for example, confuse the Respondent’s address with a location in Europe.

The Panel notes that the address for “Whois ID Theft Protection” (as set out in the Whois database records) is “West Bay, Grand Cayman, GT KY”. Further, the telephone number set out in the Whois records provided by both the Complainant and the Center commences with the telephone code prefix “345”.

The Panel finds that these said address locations (“West Bay, Grand Cayman”) correspond to the Cayman Islands, and the “KY” code is indicative of the same. Further, the “345” dialing code is that of the Cayman Islands.

The Panel notes that this does not conflict with the Complainant’s understanding of the proper address of the Respondent. As the Complainant’s DHL records evidence (included in Exhibit 6 to the Marx Declaration), its letter of August 21, 2006 was sent to the Respondent at the above address in the Cayman Islands.

Accordingly, the Panel finds that the proper address of the Respondent is P.O. Box [-], West Bay, Grand Cayman GT, KY, Cayman Islands.

B. Determination of Issues

Paragraph 4(a) of the Policy requires the Complainant to prove that each of the following elements are present:

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

(ii) the Respondent has 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.

The Panel shall consider each of the above elements in turn.

(a) Identical or Confusingly Similar

The first issue is to determine whether the Complainant has rights in the WARDLEY mark, and then to determine whether the <wardley.com> domain name is identical or confusingly similar to the WARDLEY mark.

The Panel finds that the Complainant does have rights in the WARDLEY mark. As set out above, this is evidenced, amongst other things, by the Complainant’s registration of the mark in some forty-six countries around the world, dating back to the first use of the WARDLEY mark in 1998, and its subsequent registration in 1999. The Complainant’s registration is prior to the registration of the domain name in 2001, and accordingly no issue arises as to the registration prevailing over the Complainant’s claimed right in the mark.

Further, the Complainant is known in the public domain through its extensive advertising and sales around the world, such that the Complainant’s WARDLEY mark is, as claimed by the Complainant, “famous”. The Panel understands this to mean that the Complainant’s products are well-known and identifiable in the public domain with respect to pet care products. The Panel finds that it is reasonable for the Complainant to make such a claim based on the extent of its global business. This includes annual sales of “tens of millions of dollars” as well as extensive promotion of its products under the WARDLEY mark. For example, in the documents exhibited to the Marx Declaration (Exhibit 1) (being print advertising and printouts of the Complainant’s “Hartz” website), the WARDLEY mark is displayed extensively throughout. Indeed, the variety and volume of products advertised by the Complainant bearing the WARDLEY mark supports the Complainant’s claim.

The Panel therefore finds that the Complainant has rights in the WARDLEY mark.

As to whether the <wardley.com> and WARDLEY mark are identical or confusingly similar, the Panel finds that they are identical. There is nothing in the text of the domain name or the Complainant’s mark which makes them different or distinguishable. Accordingly, this element of the Policy has been satisfied by the Complainant.

(b) Rights or Legitimate Interests

This element requires the Complainant to satisfy the Panel that the Respondent has no rights or legitimate interests in the domain name. Although not exhaustive, the circumstances listed in paragraph 4(c) of the Policy are a guidance as to how this may be proven by the Complainant, or denied by the Respondent. The Panel shall consider these circumstances below.

First, the Panel notes that the Respondent has not filed a Response. In order to comply with paragraph 10(b) of the Rules (to treat the parties with equality and afford the parties a fair opportunity to present their case), the Panel notes that “in the absence of exceptional circumstances, the Panel shall decide the dispute based on the complaint” (Rules, paragraph 5(e)). The Panel finds that there are no circumstances in this case which would give rise to the Panel derogating from the standard practice under the Rules, and so shall decide the dispute based on the Complaint.

In consideration of paragraph 4(c)(i) of the Policy, the Panel finds that there is no evidence that the Respondent was making a bona fide offer of goods or services under the domain name or name corresponding to the domain name prior to notice of the dispute. The Complainant’s ‘cease and desist’ letters of May and August 2006 did nothing to change the Respondent’s position in this regard. The only goods and services provided under the <wardley.com> domain name by the Respondent is to offer links to pet care products which are in direct competition with the Complainant, as well as links to websites which have nothing to do with the Respondent’s purported business of pet care products or the Complainant (i.e., the “lewd jokes” and “sexy personals” websites). This has continued both prior to and following notification of the dispute to the Respondent. There is therefore no evidence of a bona fide offering of goods or services by the Respondent. The Panel finds that the Complainant has satisfied this element of the Policy.

With regard to paragraph 4(c)(ii) of the Policy, there is no evidence of the Respondent being commonly known by the <wardley.com> domain name. The website does not purport to create any such good will or recognition either, as it is simply a website offering links to other websites. Accordingly, the Respondent has not satisfied this element of the Policy.

With regard to paragraph 4(c)(iii) of the Policy, there is no evidence that the Respondent is making “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish [the WARDLEY trademark]”. In fact, the Respondent is using the domain name for the very opposite reasons; that is, it is using the WARDLEY mark for commercial gain, to divert users from the <wardley.com> domain name to websites directly in competition with the Complainant. The links to the lewd jokes and sexy personals are not related to the Complainant’s mark, and accordingly it is reasonable to consider that associating the Complainant’s mark with these websites does tarnish the WARDLEY mark (see, for example, ADT Services AG v. ADT Sucks.com, WIPO Case No. D2001-0213).

The Panel finds that the Complainant has satisfied the burden of proof in demonstrating that the Respondent has no rights or legitimate interests in respect of the <wardley.com> domain name.

(c) Registered and Used in Bad Faith

The Panel also finds the Respondent registered and has used, and is using the domain name in bad faith.

The Panel bases its conclusion on the circumstances listed in paragraphs 4(b)(ii) and 4(b)(iv) of the Policy.

With respect to paragraph 4(b)(ii), the Panel considers that the Respondent “registered the domain name in order to prevent [the Complainant, being the owner of the trademark] from reflecting the mark in a corresponding domain name”, and that the Respondent has “engaged in a pattern of such conduct”.

The Complainant is prevented from using its WARDLEY mark in a domain name, unless it creates variations as set out above (e.g., <wardley.biz>, <wardleyfish.com>, <wardley.info>). It is reasonable to conclude that the Respondent has registered the domain name in order to be associated with the goodwill and recognition of the Complainant’s WARDLEY mark for its own commercial gain, and in seeking such an association, wishes to prevent the Complainant from using the domain name for its own purposes.

Further, as the Complainant sets out in its Complaint (Part (I)(B)(2) and Exhibit D thereto), the Respondent has engaged in a pattern of ‘cybersquatting’ before, as evidenced by the cases of Industrial Products Limited v. Whois ID Theft Protection c/o Domain Admin, NAF Case No. FA0606000726075 (transfer of the domain name <industrialproducts.com> to the Complainant) and Wind-lock Corporation v. Whois ID Theft Protection, NAF Case No. FA0608000767125 (transfer of the domain name <windlock.com> to the Complainant).

The Panel finds bad faith in the Respondent’s registration of the domain name, and that such bad faith is supported by the Respondent’s prior practice of registering other domain names in a like manner.

With respect to paragraph 4(b)(iv) of the Policy, the Panel finds the Respondent is using the domain name in bad faith as it has “intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location”.

That the domain name is identical to the Complainant’s mark is likely to create confusion with the Complainant’s mark. In light of the good will and recognition of the Complainant’s rights in the WARDLEY mark, the Panel finds there is no coincidence that the domain name also relates to pet care products; it is this confusion which the Respondent seeks to commercially exploit. In light of these facts, consumers would likely be led to believe that domain name is sponsored or endorsed by the Complainant.

The Panel finds the Respondent has therefore registered and is using the domain name in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <wardley.com> be transferred to the Complainant.

---

Thomas Webster
Sole Panelist

Dated: December 12, 2006