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Generic Top Level Domain Name (gTLD) Decisions |
BowTie Inc. v.
HotWebNames.com a/k/a Tom Bodner
Claim Number: FA0407000294190
PARTIES
Complainant is BowTie Inc. (“Complainant”), represented by Robert S. Gurwin of Rader,
Fishman & Grauer PLLC, 1233 20th Street, Washington, DC 20036. Respondent is HotWebNames.com a/k/a Tom
Bodner (“Respondent”), 36500 Ford Road, Suite 174, Westland, MI 48185.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <popularpets.com>,
registered with Moniker Online Services,
Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Carlos
Rodriguez-Garcia as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 8, 2004; the Forum received
a hard copy of the Complaint
on July 9, 2004.
On
July 12, 2004, Moniker Online Services, Inc. confirmed by e-mail to the Forum
that the domain name <popularpets.com>
is registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker
Online Services, Inc. has verified that Respondent is bound by the Moniker
Online Services, Inc. registration agreement and
has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
July 14, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of August 3,
2004 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail,
post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts,
and to postmaster@popularpets.com by e-mail.
A
timely Response was received and determined to be complete on August 2, 2004. Furthermore, on August 9, 2004, Complainant
filed a Supplemental written statement.
On August
9, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the Forum appointed Carlos Rodriguez-Garcia as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
In
summary, this Complaint concerns an individual who registered a domain name
that is absolutely identical to Complainant’s famous
trade name and trademark
POPULAR PETS, and now attempts to capitalize on the goodwill associated with
Complainant’s POPULAR PETS
mark through sale of the directly corresponding .com
domain name for an amount well in excess of its registration and maintenance
costs.
BowTie
owns three registrations in the United States for its POPULAR PETS Marks,
including Registration No. 2,632,042 for the POPULAR
PETS mark, for use in
connection with “printed publications, namely magazines relating to animals,
birds, reptiles, fish and insects,”
in International Class 16, and “computer services,
namely providing an online magazine and information relating to animals, birds,
reptiles, fish and insects” in International Class 42.
As
a result of BowTie’s extensive use of its BowTie Marks, including its POPULAR
PETS Mark, in connection with its pet and animal
publications and related goods
and services, the BowTie Marks, and in particular, the POPULAR PETS Mark is
extremely well known,
highly distinctive and associated by consumers with
BowTie and its pet and animal goods and services. In fact, BowTie grossed $5.7
million in sales alone from its POPULAR PETS publications during 2003, and sold
over 2 million copies. Accordingly
BowTie considers its BowTie Marks, including the POPULAR PETS Mark to be famous,
and the POPULAR PETS Mark is therefore
entitled to protection from infringers
and infringement.
Without
having any legitimate rights to the POPULAR PETS name or marks, Respondent
applied for and secured a registration for the
domain name
<popularpets.com>.
Thereafter,
Respondent placed the name up for sale on an active website in connection with
the Infringing Name, entitled “Animal Domain
Names for Sale - Hot Website Names
for Sale!”. Upon receipt of the demand letter from Complainant’s counsel,
asserting BowTie’s exclusive
rights in and to its POPULAR PETS Mark, Respondent
specifically acknowledged Complainant’s trademark registration, for POPULAR
PETS,
which specifically includes computer
services, namely providing an online magazine and information relating
to animals, birds, reptiles, fish and insects, but demanded between
fifteen and
thirty thousand dollars to sell the Infringing Name to BowTie. Such tactics of
bad faith overacts under the Policy since
it is abundantly clear that
Respondent attempts to reap financial gain from selling the Infringing Name to
Complainant as the legitimate
registered trademark holder for a price well in
excess of what it paid.
The
<popularpets.com> domain name is identical in every way to
Complainant’s registered and famous POPULAR PETS Mark. In reviewing the identical issue,
arbitration panels at both WIPO and National Arbitration Forum have reached the
same conclusion.
It was never Respondent’s
intention to register the domain name of a trademarked word or combination of
words. At the time that he
registered the <popularpets.com> domain
name on April 24, 1999 this word combination did not appear to have a trademark
on it when he conducted a search at the USPTO
(United States Patent and
Trademark Office) website. He has since learned that the generic word
combination “Popular Pets” was officially
registered to Fancy Publications
(a.k.a. BowTie, Inc.) on October 8, 2002. It looks like they first attempted to
register this generic
word combination on December 23, 1997 but it took them
almost 5 (five) years to finally get someone at the USPTO to submit to their
numerous requests to grant them official registration status.
Respondent
is not sure why the generic word combination “popular pets” did not show up
when he conducted a trademark search at the
USPTO website on April 24, 1999.
FINDINGS
With
sales of over $60 million in 2003, BowTie is the market leader in publishing
pet and animal related books and magazines. BowTie
currently holds over 80% of
the market share for its goods and services among U.S. consumers, and has
developed a significant customer
base in Canada as well.
BowTie
was founded in 1974 as Fancy Publications. Its publishing business began by
acquiring three defunct magazines, first Private Pilot (in 1974),
followed by Dog Fancy and Cat Fancy (in 1975).
BowTie
currently engages in the business of publishing and circulating dozens of
specialty pet and animal, veterinary trade, and lifestyle
publications which
are marketed and circulated under their respective trademarks, including
POPULAR PETS (collectively, the “BowTie
Marks”). In fact, BowTie owns rights to
over 200 such titles sold under its BowTie Marks. BowTie offers its goods and
services on
the Internet under and in connection with the BowTie Marks as
discussed below.
BowTie
owns three registrations in the United States for its POPULAR PETS Marks,
including Registration No. 2,632,042 for the POPULAR
PETS mark, for use in
connection with “printed publications, namely magazines relating to animals,
birds, reptiles, fish and insects,”
in International Class 16, and “computer
services, namely providing an online magazine and information relating to
animals, birds,
reptiles, fish and insects” in International Class 42.
As
a result of BowTie’s extensive use of its BowTie Marks, including its POPULAR
PETS Mark, in connection with its pet and animal
publications and related goods
and services, the BowTie Marks, and in particular, the POPULAR PETS Mark is
extremely well known,
highly distinctive and associated by consumers with BowTie
and its pet and animal goods and services. In fact, BowTie grossed $5.7
million
in sales alone from its POPULAR PETS publications during 2003, and sold over 2
million copies.
BowTie
has operated and maintained an Internet presence since as early as May of 1996
through its original domain name, <fancypubs.com>.
In 1997, BowTie began
operating its Animal NetworkTM Internet portal located at
<animalnetwork.com>. From this
central website, BowTie actively promotes all of its industry leading pet and
animal family of books and magazines, as well
as its Internet websites.
BowTie’s domain name registrations and corresponding websites are used in
promoting BowTie’s famous pet
and animal publications and services. These BowTie websites are extremely popular,
drawing a high volume of Internet traffic.
For example, BowTie’s Animal Network portal had XXX visitors during
INSERT MONTH/YEAR. Similarly, BowTie’s Dog
Fancy website drew in XXX visitors during INSERT MONTH/YEAR. BowTie has expended substantial time, effort
and resources to develop its websites as a source of information about its
products and
services, and as an online information and shopping resource for
its customers throughout the world.
Without
having any legitimate rights to the POPULAR PETS name or marks, Respondent
applied for and secured a registration for the
<popularpets.com> domain
name (the “Infringing Name”).
Thereafter, Respondent placed the name up
for sale on an active website in connection with the Infringing Name, entitled
“Animal Domain
Names for Sale - Hot Website Names for Sale!”. Upon receipt of
the demand letter from Complainant’s counsel, asserting BowTie’s exclusive
rights in and to its POPULAR PETS Mark, Respondent specifically acknowledged
Complainant’s trademark registration, for POPULAR PETS,
which specifically
includes computer services,
namely providing an online magazine and information relating to animals, birds,
reptiles, fish and insects, but demanded between
fifteen and thirty thousand
dollars to sell the Infringing Name to BowTie. Such tactics are both extortion
and bad faith under the
Policy since it is abundantly clear that Respondent
attempts to reap financial gain from selling the Infringing Name to Complainant
as the legitimate registered trademark holder for a price well in excess of
what it paid.
Paragraph 15(a) of the Rules
for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this
Panel to “decide a complaint
on the basis of the statements and documents
submitted in accordance with the Policy, these Rules and any rules and
principles of
law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the
Complainant must prove each of the following three elements to obtain an order
that
a domain name should be cancelled or transferred:
(1) the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant
has rights;
(2) 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 <popularpets.com>
domain name is identical in every way to Complainant’s registered and
famous POPULAR PETS Mark. In reviewing
the identical issue, arbitration panels at both WIPO and National Arbitration
Forum have reached the same conclusion.
See Am. Express Co. v. Strategic Concepts, FA 96378 (Nat. Arb.
Forum Feb. 15, 2001) (finding that the domain name <americanexpress.net>
is identical to Complainant’s
AMERICAN EXPRESS marks); see also Am. Golf
Corp. v. Perfect Web Corp., D2000-0908 (WIPO Oct. 23, 2000) (finding that
the domain name <americangolf.net> is identical to Complainant’s AMERICAN
GOLF
marks); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233
(WIPO Nov.16, 2000) (finding that the domain name <wembleystadium.net> is
identical to the Complainant’s WEMBLEY
STADIUM mark).
The
Affidavit of Doug Steil, and BowTie’s current, valid registrations for its
POPULAR PETS Marks, conclusively establish Complainant’s
rights in the subject
trademark, and provide strong evidence that consumers associate the POPULAR
PETS Mark solely with the Complainant
and its industry leading pet and animal
publications.
Accordingly,
Complainant has met its burden of proof under Policy 4(a)(i) and the Infringing
Name should be rightfully transferred
to Complainant.
Respondent
has no legitimate rights, whatsoever, in the Infringing Name and has made no
legitimate use of this domain name.
Paragraph
4(c) of the UDRP provides three specific circumstances that shall be deemed
evidence of a domain name registrant’s rights
or legitimate interests to a
domain name. These include:
(i)
before any
notice to you 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
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.
In this
case, Respondent cannot establish any of these circumstances. In fact, even the simplest evaluation of
Respondent’s conduct utilizing the factors set forth in Policy 4(c) precludes
any finding
that the Respondent has a legitimate interest in these domain
names.
As
already noted, Respondent was hosting an active website in connection with the
Infringing Name, offering the Infringing Name for
sale. Only after receiving the Complainant’s
demand letter did Respondent remove the Hot Web Names For Sale page and replace
it with a web
page containing hyperlinks to other pet and animal related
sites. On the current page, Respondent
even acknowledges Complainant as the rightful owner of the POPULAR PETS Mark as
the first thing on
the redesigned web page is a disclaimer stating:
Note:
This website has no affiliation whatsoever with BowTie, Inc. or Fancy
Publications, Inc. You can reach their website by clicking
here.
Accordingly,
through its own conduct, Respondent admits that it has no rights or legitimate
interests in and to the POPULAR PETS name
and mark.
There
can be no dispute that Respondent does not, and has never, offered bona fide
goods or services under the POPULAR PETS Mark as
required by Policy 4(c)(i),
but rather, has registered the Infringing Name solely to re-sell it for a
profit. As indicated in the Affidavit
of Doug Steil, BowTie has not authorized the use of its marks by Respondent.
Since Respondent is not
an authorized dealer or distributor of Complainant’s
products, Respondent has no basis upon which to use any of the BowTie Marks,
including BowTie’s POPULAR PETS Mark.
Accordingly, Respondent cannot and does not meet the first prong of
Policy 4(c).
Moreover,
Respondent has never been commonly known by the name POPULAR PETS in accordance
with Policy 4(c)(ii). In Victoria’s
Secret et al. v. Victoria Summers, FA 96931 (Nat. Arb. Forum May 8, 2001),
the arbitration panel addressed this question, finding that Complainant had
fulfilled its
burden under Policy 4(a)(ii) because Respondent had failed to
demonstrate any rights or legitimate interests in the disputed domain
name. The Victoria’s Secret
dispute is analogous to the instant matter because in each instance, Respondent
registered a domain name or domain names that are
either identical or which
fully incorporate Complainant’s Mark, Respondent was not commonly known
by Complainant’s mark, and had not used the name in connection with any bona
fide offering of goods and services prior
to the time of dispute, or for any
legitimate noncommercial or fair use.
Respondent, therefore, is also unable to fulfill the second prong of the
test under Policy 4(c).
Finally,
in evaluating the third prong of the test, Respondent’s conduct cannot
constitute “noncommercial or fair use without intent
for commercial gain to
misleadingly divert customers or to tarnish the trademark or service mark at
issue.” Respondent’s conduct is the
antithesis of the 4(c)(iii) criteria since Respondent’s registration of the
Infringing Names, and posting
an active website placing the Infringing Name up
for sale is per se evidence of Respondent’s intent to reap commercial gain from
Complainant’s protected and famous POPULAR PETS Mark. The fact that Respondent removed its Hot WebSite Names for Sale!
web page in connection with the Infringing Name after receiving Complainant’s
demand letter is evidence that Respondent knows it acted improperly and now
tries to cover up its actual intention of trying to sell
the domain name to
BowTie as the rightful owner of the POPULAR PETS mark for significant profit.
Since
Respondent herein cannot meet any of the criteria under Policy 4(c) to
justify its registration of the Infringing Name, Complainant has satisfied its
burden under
Policy 4(a)(ii).
Having established that Respondent registered a domain name
comprised of the identical Mark to that of Complainant, and has no legitimate
rights in the Infringing Name, Complainant now demonstrates that Respondent
registered these names in bad faith.
Policy 4(b) sets forth the criteria to be considered in
evaluating evidence of registration and use of a domain name in bad faith. These circumstances include:
(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…
The evidence fully supports a finding that Respondent has
acted in bad faith through its pattern of conduct, which specifically includes
the activities enumerated in Policy 4(b)(i).
The facts in this matter demonstrate that through registration and use
of the Infringing Name, Respondent has tried to sell the Infringing
Name to
Complainant for a substantial pecuniary gain.
Moreover, the Respondent has deprived Complainant from holding a domain
name that is identical to its POPULAR PETS Mark, in which Respondent has
acknowledged, per letter of its own counsel, that Complainant owns exclusive
rights
as evidenced by its U.S. federal trademark registrations.
A WIPO panel was presented with the identical issue In
the Matter of British Sky Broad.Ltd. v. Domain Reservations, D2000-0507
(WIPO July 13, 2000). Ruling in favor of Complainant British Sky Broadcasting,
the Panel relied on Respondent’s communication
to Complainant, offering to sell
the domain names <skymovies.com> and <skyboxoffice.com> to
Complainant for £95,000 pounds
sterling apiece as evidence that Respondent
registered 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 trade mark or service mark, for valuable consideration
in
excess of the Respondent’s documented out of pocket costs directly related to the
domain name.” Accordingly, the Panel
found bad faith and ordered both domain names transferred. Likewise, Complainant has documented
communication from both Respondent and its counsel attempting to sell for a
large sum of money
for the Infringing Name. Accordingly, Complainant asks the Panel to find, as did the WIPO
panel in British Sky, that Respondent registered and is
using the Infringing Name in bad faith, under Policy 4(b) and order the
Infringing Name transferred
to Complainant BowTie.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <popularpets.com> domain name be TRANSFERRED from Respondent to
Complainant.
Carlos Rodriguez-Garcia Panelist
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