Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lori Holbein, d/b/a Doggon’ Wheels v. Dawn Hanson, d/b/a P.E.T.S..

Case No. D2003-0190

 

1. The Parties

The Complainant is Lori Holbein, d/b/a Doggon’ Wheels of Livingston, Montana, United States of America, represented by Crowley, Haughey, Hanson, Toole & Dietrich, P.L.L.P. of United States of America.

The Respondent is Dawn Hanson, d/b/a P.E.T.S. of Calgary, Alberta, Canada.

 

2. The Domain Name and Registrar

The disputed domain name, <doggonwheels.com>, is registered with Network Solutions, Inc. of Dulles, Virginia, U.S.A.

 

3. Procedural History

Issuance of Complaint

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 7, 2003. It was also received in hardcopy on March 10, 2003. An Acknowledgement of Receipt of Complaint was sent to the Complainant on March 7, 2003. On March 7, 2003, the Center transmitted by email to Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On March 12, 2003, Network Solutions, Inc. 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.

The Center notified the Complainant on March 14, 2003, that the Complaint required amendment since the name of the Registrar was stated incorrectly. In response, the Complainant filed an Amendment to the Complaint on March 21, 2003.

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").

Notification of Complaint and Commencement of Proceeding

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint on March 27, 2003, and the proceedings commenced on the same date.

Filing of Response

In accordance with the Rules, paragraph 5(a), the due date for Response was April 16, 2003. The Response was filed with the Center via email on April 15, 2003, and was also received by the Center in hard copy on April 17, 2003. An Acknowledgement of Receipt of Response was issued on April 16, 2003.

Appointment of Administrative Panel

The Center appointed David Williams Q.C. as the Sole Panelist in this matter on April 28, 2003. Notification of Appointment of Administrative Panel was transmitted to the Complainant and Respondent on the same date. 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

Complainant’s Activities and Trademarks

In its Complaint, the Complainant asserted the following in relation to its activities and trademarks. The Complainant states that it uses the trademark DOGGON’ WHEELS in connection with the manufacture and sale of wheelchairs for disabled pets and related products. The Complainant’s place of business is Livingston, Montana, U.S.A., and it has been doing business since May 1996.

The Complainant states that it has applied for the registration of the mark DOGGON’ WHEELS (with design) with the U.S. Patent and Trademark Office. The mark has been accepted for publication, thereby acknowledging that this mark is distinctive, that the Complainant owns the mark, and that the Complainant has the exclusive right to use the mark.

The Complainant made its first sale of a pet wheelchair labeled DOGGON’ WHEELS in interstate commerce in the United States on or before June 30, 1998, and in Canada on or before May 6, 1999. The Complainant has sold pet wheelchairs and related products labeled DOGGON’ WHEELS in most if not all of the states in the United States of America, in most if not all of the provinces of Canada and countries throughout the world, including Great Britain, France, Italy, Greece, Japan, Australia, and Costa Rica.

Between 1998 and 2002, the Complainant purchased advertising in which the mark DOGGON’ WHEELS was prominently displayed in such periodicals as Dog Fancy, Dogs U.S.A., Puppies U.S.A., Veterinary Practice News, Dog and Kennel, Pets A Part of the Family, and DVM. To date, the Complainant has spent approximately $50,000 to purchase this advertising. Further, the Complainant has purchased brochures, trading cards, website design and hosting services, and other advertising at a cost of approximately $11,000. In 2001, the Complainant spent approximately $10,000 for marketing services that were specifically directed toward promoting and strengthening its mark DOGGON’ WHEELS.

The Complainant submits that as the result of its substantial investment of money, time, and effort in developing and manufacturing quality products and in advertising and marketing these products under the mark DOGGON’ WHEELS, the Complainant’s business DOGGON’ WHEELS has acquired a reputation for high-quality products and service within the field of pet medical equipment. As an example of this, the Complainant cites sales of pet wheelchairs to veterinary schools throughout the U.S.A.

The Complainant operates a website using the domain name <doggon.com>. The Complainant had originally intended to register the domain <doggonwheels.com> ("the domain name"), but this domain name was unavailable until March 7, 2001, because a former business partner of the Complainant had registered it. On or about April 1, 2001, the Complainant attempted to register the domain name <doggonwheels.com>, after its former partner’s registration had expired. The Complainant was prevented from doing so, however, since the Respondent had registered it on March 7, 2001, the day it became available.

The Complainant alleges that the Respondent copied the design of its pet wheelchair from the Complainant’s designs. The Complainant points to several of the Respondent’s wheelchair’s design features which it is alleged are copied from that of the Complainant.

In March 2001, the Complainant arranged market research concerning the mark DOGGON’ WHEELS, which established that no other company nationally or internationally was using the name "Doggon’ Wheels" or anything like it. The Complainant submits that the Respondent has never been commonly known by the mark DOGGON’ WHEELS, and it has never requested or obtained a license or permission from the Complainant to use this mark.

The Complainant alleges that the Respondent’s use of <doggonwheels.com> has caused actual confusion with the Complainant’s distinctive mark DOGGON’ WHEELS. In support thereof, the Complainant gives an example of a customer who had accessed the site <doggonwheels.com> in the mistaken belief that it was the Complainant’s website.

Respondent’s Activities

In its Response, the Respondent asserted the following in relation to its activities. The Respondent is an animal rehabilitation therapist who has practiced for 22 years. It is also the President and sole shareholder of P.E.T.S. (Precision Equine Therapy Specialist) Inc.

In or about November 1998, the Respondent thought of using the phrase DOGGONWHEELS – CANINES IN MOTION to market its company’s animal rehabilitative wheelchairs. In deciding to use this phrase to market its products, the Respondent did not rely upon or refer to the name of any third party, and in particular did not rely on the name alleged by the Complainant.

On March 7, 2001, the Respondent registered the domain name <doggonwheels.com> after a search of the domain name database indicated that the name was available. Prior to the registration, the Respondent was unaware that a third party had previously registered the name and forfeited the registration.

In March and April 2001, the Respondent distributed promotional pamphlets, flyers and posters that included the phrase "Doggonwheels" Canines in Motion. The posters included the reference to the website address "www.doggonwheels.com." In April 2001, the Respondent launched the website "www.doggonwheels.com." In addition, the Respondent has also registered the domain names <caninesinmotion.com> and <pets-tm.com>.

In April 2001, the Respondent’s company sold its first animal rehabilitative wheelchair, and, at the time of the sale, provided a document on which the phrase "Doggonwheels" Canines in Motion appeared.

On July 23, 2001, the Respondent registered the trade name "DOGGONWHEELS" CANINES IN MOTION on behalf of its company.

The Canadian Intellectual Property Office, Copyright Office, has issued a copyright registration in the literary and artistic works entitled "Doggonwheels" Canines in Motion to the Respondent. This registration states that the Respondent first published the literary and artistic works on March 30, 2001. The Respondent applied to register this copyright in August 2001.

In October 2001, the Respondent received a cease and desist letter from the Complainant’s counsel.

The Respondent asserts that it relied upon its own experience to design its wheelchair and did not copy the design of the Complainant’s wheelchair. In support of this, the Respondent alleges that there are several features that distinguish the two wheelchairs and that, had the Respondent wanted to copy the design of another, there would have been plenty to choose from similar to that of the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that under paragraph 4(a) of the Policy, the domain name at issue is confusingly similar to the Complainant’s trademark, the Respondent has no rights or legitimate interests in the domain name and that the Respondent has registered and is using the domain name in bad faith.

Identical or Confusingly Similar

In respect of paragraph 4(a)(i) of the Policy, the Complainant contends that the Respondent’s domain name <doggonwheels.com> is identical to the Complainant’s DOGGON’ WHEELS mark, and that this has resulted in actual confusion.

The Complainant contends that its use of the DOGGON’ WHEELS mark and pending registration of the mark in the U.S. Patent and Trademark Office establish that the Complainant owns and has the exclusive right to use this mark. The Complainant alleges that no one else has used this mark or anything like it.

The Complainant submits that the Respondent has incorporated the Complainant’s trademark in its entirety in its domain name <doggonwheels.com>, and alleges that incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the trademark.

Further, the Complainant points to four other factors which, it is said, indicate that there is a likelihood of confusion between the Complainant’s mark and the Respondent’s domain name. First, the Respondent’s use of <doggonwheels.com> has caused actual confusion among consumers, which is persuasive proof that <doggonwheels.com> and the mark DOGGON’ WHEELS are confusingly similar. Moreover, confusion is likely because DOGGON’ WHEELS is a strong, distinctive mark. The mark is strong because it is intentionally misspelled to create a play on words. Confusion is likely also because the Complainant and the Respondent sell the same products, namely pet wheelchairs. Finally, the fact that the Respondent intentionally copied the Complainant’s mark proves that confusion may be expected.

For these reasons, the Complainant claims that the Panel should find that there is a likelihood of confusion between the Complainant’s mark DOGGON’ WHEELS and the Respondent’s domain name <doggonwheels.com>.

Rights or Legitimate Interests

In respect of paragraph 4(a)(ii) and (c)(i) of the Policy, the Complainant contends first that the Respondent has never used the domain name in connection with any type of bona fide offering of goods or services. The Complainant submits that before the Respondent registered the domain name <doggonwheels.com>, it knew that its use of the domain name would infringe the Complainant’s trademark DOGGON’ WHEELS, and that the knowing use of someone else’s trademark as a domain name cannot qualify as a bona fide offering of goods or services.

Secondly, under paragraph 4(c)(ii) of the Policy, the Complainant claims that the Respondent is not commonly known by nor has acquired any trademark or service mark rights in the domain name. The Respondent does not use DOGGON’ WHEELS as a trademark. It sells its products under the trademarks P.E.T.S. and CANINES IN MOTION. The Respondent has never requested or acquired a license from the Complainant to use this distinctive mark. The Complainant alleges that the Respondent only uses DOGGON’ WHEELS as a way to divert traffic from the Complainant’s website.

Finally, under paragraph 4(c)(iii) of the Policy, the Complainant submits that Respondent is not making any legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers, or to tarnish the mark. The Respondent is using the domain name <doggonwheels.com> only for commercial gain, it is alleged, and with the intent to misleadingly divert consumers. The Respondent’s use of <doggonwheels.com> is therefore commercial, and it is not fair use.

Bad Faith

In respect of paragraph 4(a)(iii) and (b)(iv) of the Policy, the Complainant contends first that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion as to the source, sponsorship, affiliation, and endorsement of its website and its products or services. The Complainant states that the Respondent does not use DOGGON’ WHEELS as a trademark but the mark appears only in the domain name and the meta tags. The Respondent sells its products under the trademarks P.E.T.S. and CANINES IN MOTION, which are prominently displayed on the pages of its website. Thus the Respondent is using the domain name <doggonwheels.com> for no other reason than to divert traffic from the Complainant’s Internet website.

In the Complainant’s submission, there are additional indicia of bad faith. It is bad faith to register a domain name knowing that it incorporates someone else’s trademark and this is exactly what the Respondent has done, the Complainant alleges. Intentionally causing consumer confusion is another indicator of bad faith. The Respondent has been successful in causing consumers to confuse its website with the Complainant’s, it is alleged.

For these reasons, the Complainant submits that the Panel should find that the Respondent has registered and is using the domain name <doggonwheels.com> in bad faith.

In accordance with paragraph 4(i) of the Policy and for the reasons outlined above, the Complainant requests that the Panel order that the domain name be transferred from the Respondent to the Complainant.

B. Respondent

The Respondent contends that under paragraph 4(a) of the Policy, the domain name at issue is not identical or confusingly similar to the Complainant’s trademark, that the Respondent has rights and legitimate interests in the domain name and that the Respondent did not register or use the domain name in bad faith. Finally, it is submitted that the Complaint constitutes attempted reverse domain name hijacking by the Complainant.

Identical or Confusingly Similar

In respect of paragraph 4(a)(i) of the Policy, the Respondent contends that where the Panel determines that the Complainant has not established rights in the trademark relied upon, the Panel need not consider whether the impugned domain name is identical or confusingly similar to the Complainant’s alleged trademark. In the Respondent’s submission, the evidence before the Panel fails to establish that the Complainant has rights in the registered trademark DOGGON’ WHEELS. The reason for this is that, according to the Respondent, the Complainant only has rights in the DOGGON’ WHEELS, QUALITY PRODUCTS FOR DISABLED PETS mark, and none in the mark DOGGON’ WHEELS.

Further, the Respondent claims that the existence of common law trademark rights, which may exist in the absence of rights in a registered mark, have not been established. In support of this contention, the Respondent alleges that the advertising expenditures and promotion in Canada by the Complainant are insufficient to engender common law rights.

In the event that the Panel holds that the Complainant does have rights in the DOGGON’ WHEELS mark, the Respondent alleges that several features distinguish the Complainant’s trademark from the domain name of the Respondent. These are the space between the words "doggon" and "wheels," the apostrophe at the end of the word "doggon," the words "quality products for disabled pets" and the design components of the Complainant’s trademark registration.

The Respondent rejects the assertions made by the Complainant that the Respondent intentionally copied the Complainant’s trademark to divert customers away from the Complainant’s website. Further, the Respondent states that it did not copy the Complainant’s wheelchair design and came to use the phrase "Doggonwheels" Canines in Motion independently and without relying on or referring to the Complainant’s name.

In the Respondent’s submission, the Complainant has thus failed to establish that the Respondent’s domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

Rights or Legitimate Interests

In respect of paragraph 4(a)(ii) of the Policy, the Respondent contends that it has rights and a legitimate interest in the domain name. In doing so, it relies on paragraph 4(c)(i) of the Policy, which states that a party can demonstrate its rights to and legitimate interest in a domain name if it can prove that, before it had notice of the dispute, it used or made 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.

The Respondent alleges that it has used or made demonstrable preparations to use a trademark corresponding with the domain name. In support of this, the Respondent points to several events which the Respondent claims occurred in advance of being notified of the dispute. The Respondent claims that it received actual notice of the dispute in October 2001. It claims that in March and April 2001, it sold its first wheelchair and distributed flyers, posters and other promotional material on which the phrase "Doggonwheels" Canines in Motion and/or the domain name <doggonwheels.com> appeared prominently. Further, it is alleged, it had used the domain name by October 2001, since it launched the site in April 2001. Furthermore, the Respondent had registered copyright in the work "Doggonwheels" Canines in Motion and registered the trade name "DOGGONWHEELS" CANINES IN MOTION in the Province of Alberta.

The Respondent alleges that the market research undertaken at the Complainant’s request in March 2001, to establish whether the Complainant was the sole user of the DOGGON’ WHEELS brand, occurred before the Respondent had made demonstrable preparations to use the trademark corresponding to the domain name.

The Respondent contends that if the Complainant’s action of registering the trademark amounts to constructive notice of the dispute, such notice was given on December 31, 2002, long after the Respondent’s said use and preparations to use.

Further, it is contended that the Respondent came to use the phrase "Doggonwheels" Canines in Motion independently. The Respondent claims that at the time of registering the domain name had no knowledge that a third party had previously registered and forfeited the domain name, and that the name was registered to capitalize on the Respondent’s promotional efforts, rather than to divert customers from the Complainant’s website. It is therefore submitted that the Respondent has demonstrated its rights to and legitimate interests in the domain name.

Bad Faith

In respect of paragraph 4(a)(iii) of the Policy, the Respondent contends that it did not register or use the domain name in bad faith, and that pursuant to paragraph 4(b)(iv) of the Policy, the Complainant has failed to establish that the Respondent registered the domain name with any malicious intent. The Respondent submits that it arrived at the name independently and was unaware of the previous registration and forfeiture of the name.

Further, the Respondent claims that it began using the word "Doggonwheels" as part of its promotional activities since it was a catchy phrase that was suggestive of its products. Therefore, the Respondent alleges, the registration and use is not in bad faith.

Reverse Domain Name Hijacking

Finally, with regard to the reverse domain name hijacking claim, the Respondent submits that the Complainant has used the Policy in bad faith to attempt to deprive the Respondent of the domain name. Alleged instances of bad faith are the Complainant’s representation to the Panel that it has applied to register the trademark DOGGON’ WHEELS (with design), whereas the actual application is for the mark DOGGON’ WHEELS, QUALITY PRODUCTS FOR DISABLED PETS (with design).

Secondly, waiting to file the Complaint until the registration of the Complainant’s mark has been issued. Thirdly, filing the Complaint after being informed that the Respondent is using the domain name <doggonwheels.com> legitimately. Finally, failing to inform the Panel that the Complainant has a trademark registration, so as to avoid an allegation of reverse domain name hijacking. These features, it is said, amount to an attempt at "reverse domain name hijacking" by the Complainant.

For these reasons the Respondent submits that the Complainant has failed to establish any of the assertions it has made under paragraph 4(a) of the Policy. Accordingly, the Respondent requests that the Panel should conclude that the domain name should not be transferred from the Respondent to the Complainant.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that in the administrative proceeding, the Complainant must prove that each of the three elements set out at subparagraphs (i), (ii) and (iii) are present. These are reproduced below.

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

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

(iii) your domain name has been registered and is being used in bad faith."

These elements are discussed below.

A. Identical or Confusingly Similar

Where a Complainant has established statutory and/or common law rights to a particular trademark through continuous and exclusive use of the mark, the subsequent apposite inquiry is whether the domain name is identical or confusingly similar to that trademark.

The Respondent alleges that the Complainant has not established statutory or common law rights in the trademark DOGGON’ WHEELS, since the only mark which the Complainant has registered is the DOGGON’ WHEELS, QUALITY PRODUCTS FOR DISABLED PETS mark. The Panel is of the view that, to the extent that other words are added to the DOGGON’ WHEELS mark, the trademark should be given a broad and unrestrictive interpretation. The additional words "quality products for disabled pets" are purely descriptive and are not the essence of the trademark. As such, the Panel finds that through its continuous and exclusive use of the DOGGON’ WHEELS mark in relation to the promotion of its pet wheelchairs, the Complainant has established a right to that trademark. This finding is supported by evidence adduced by the Complainant which shows that in its advertising and promotional material, the primary focus has been on the "doggon’ wheels" component of the trademark (see affidavit of Lori Holbein, Exhibit A). In some of the evidence presented to the Panel by the Complainant, the featured mark was simply DOGGON’ WHEELS, and in other instances it was the complete DOGGON’ WHEELS, QUALITY PRODUCTS FOR DISABLED PETS mark. However, in the latter case, the "quality products for disabled pets" phrase was of a subsidiary nature.

Even if the Panel were of the view that no such rights existed, the Panel would have concluded that the Complainant’s activities suffice to establish its common law trademark right to the mark DOGGON’ WHEELS. (see Infodev Electronic Designers International, Inc v. Infodev, WIPO Case No. D2002-0565). Previous cases have established that a common law trademark will suffice for the purposes of paragraph 4(a)(i) (see Antony Beevor v. Old Barn Studios Ltd, WIPO Case No. D2001-0123 and Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235). To give rise to a common law right in the mark, the Complainant must have an extensive reputation associated with the mark and use of the mark (Louis De Bernieres v. Old Barn Studios Ltd, WIPO Case No. D2001-0122).

Evidence in support of the stance with regard to the common law rights includes the Complainant’s investment into and relatively long history of selling animal wheelchair products under the DOGGON’ WHEELS motif and examples of the Complainant’s products in numerous periodicals which feature the DOGGON’ WHEELS mark prominently (see affidavit of Lori Holbein, Exhibit A). Further, the evidence of sales worldwide of the Complainant’s products under the DOGGON’ WHEELS brand strengthen this finding.

As the Complainant has established rights in the DOGGON’ WHEELS mark, the question for the Panel is whether the domain name <doggonwheels.com> is identical or confusingly similar to the Complainant’s trademark. The two are not identical, as the Complainant asserts, but rather are very similar. The obvious differences are the use of the apostrophe and the gap between the words "doggon" and "wheels" in the trademark.

Confusion is likely because DOGGON’ WHEELS is a strong, distinctive mark. The mark is strong because it is intentionally misspelled to create a play on words. Confusion is likely also because the Complainant and the Respondent sell the same products, pet wheelchairs. The Panel finds that the degree of differentiation between the domain name and the trademark is minimal and that there is a real possibility that consumers would confuse the two.

Therefore, the Panel concludes that the domain name <doggonwheels.com> is confusingly similar to the Complainant’s trademark DOGGON’ WHEELS.

B. Rights or Legitimate Interests

The Respondent has alleged that paragraph 4(c)(i) of the Policy, which states that a party can demonstrate its rights to and legitimate interests in a domain name if it can prove that, before it had notice of the dispute, it used or made 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, applies to the Respondent. In support thereof, the Respondent points to several items of evidence which allegedly evince that it used or made 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 before receiving notice of the dispute.

On this point, the Complainant submits that the knowing use of someone else’s trademark as a domain name cannot establish legitimate rights in the domain name. The Complainant cites several authorities in support of this proposition, and the Panel does not doubt the correctness of the assertion. The Complainant asserts that the Respondent must have known about the Complainant’s trademark and products, and must have known that its use of the "doggonwheels" domain name would infringe the trademark of the Complainant.

The Panel is of the view that the weight of the evidence points to the fact that the Respondent knew of the Complainant’s trademark and its pet wheelchairs before it registered the domain name, and that the Respondent did not arrive at the "doggonwheels" term independently, as it claims to have done. The Respondent registered the domain name on the exact same date upon which it became available, March 7, 2001. The Respondent did not seek to explain this fact in its Response, other than to assert that it arrived at the domain name in dispute without reference to the Complainant’s trademark. It seems unlikely that the Respondent independently arrived at the domain name, with the same deliberate misspelling, and simply happened to register it on the day upon which it became available. It is more likely, as the Complainant asserts, that the Respondent knew of the previous registration of the "doggonwheels" domain name and seized the name when the opportunity presented itself. The Panel finds that this fact, coupled with the other evidence adduced by the Complainant, suffices to establish the fact that the Respondent knew of the Complainant and its products, and knew that the domain name was practically identical to the trademark. Accordingly, the Respondent has knowingly used the Complainant’s trademark as a domain name and this cannot qualify as a bona fide offering of goods or services.

The Respondent has not attempted to bring itself within paragraph 4(c)(ii) or (iii) and, in the view of the Panel, it would not succeed in doing so.

The result is that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Bad Faith

To prove its claim under paragraph 4(a)(iii) of the Policy, the Claimant must establish that the Respondent both registered and is using the domain name in bad faith. The Complainant seeks to do so by relying on paragraph 4(b)(iv) of the Policy, which states that the following shall be evidence of registration and use in bad faith;

"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of your website or location or of a product or service on your website or location."

The Complainant alleges that Respondent does not use DOGGON’ WHEELS as a trademark, but rather that it sells her products under the trademarks P.E.T.S. and CANINES IN MOTION and that these two marks are prominently displayed on the pages of the Respondent’s website, but DOGGON’ WHEELS appears only as the domain name and in the meta tags. Thus, it is said, the Respondent is using <doggonwheels.com> for no other reason than to divert traffic from the Complainant’s website. In addition, the Complainant points to several other facts which it is said are indicative of bad faith.

The Panel finds that the Respondent was using the "doggonwheels" mark primarily for the purpose of confusing customers and diverting Internet traffic away from the Complainant’s website to its own. The registration of the domain name was for this purpose also. As such, the Panel finds that the Respondent has registered and is using the domain name in bad faith.

D. Reverse Domain Name Hijacking

This point may be disposed of quickly. The Panel finds no substance in the allegations made by the Respondent regarding the reverse domain name hijacking. The Complainant has brought a bona fide claim in the Uniform Domain Name Dispute Resolution forum, to redress what it perceived as a wrongful registration of a domain name by the Respondent. The alleged instances of bad faith are without foundation.

 

7. Decision

The Complainant has established that the domain name is confusingly similar to a trademark in which the Complainant has rights. Further, it has shown to the satisfaction of the Panel that the Respondent has no rights or interests in respect of the domain name and that the domain name has been registered in bad faith and is being used in bad faith. Accordingly, the Panel finds in favour of the Complainant and orders that the domain name <doggonwheels.com> be transferred from the Respondent to the Complainant.

 

---

 

David Williams QC
Sole Panelist

Dated: May 11, 2003