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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Digital Overture Inc. v. Chris Bradfield / GoPets Ltd.

Case No. D2008-0091

1. The Parties

The Complainant is Digital Overture Inc., Simi Valley, California, of United States of America, represented by Edward Hise, United States of America.

The Respondents are Chris Bradfield, of North Hollywood, California, of United States of America and GoPets Ltd., of Seoul, Republic of Korea, (together referred to as ‘the Respondent’), represented by Proskauer Rose, LLP, United States of America.

2. The Domain Name and Registrar

The disputed domain name <gopets.net> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2008. On January 30, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On January 30, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 6, 2008. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 6, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was set as February 26, 2008. The Response was filed with the Center on February 26, 2008.

The Center appointed James A. Barker, G. Gervaise Davis III and David H. Bernstein as panelists in this matter on April 8, 2008. The Panel finds that it was properly constituted. Each member of 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.

On February 14, 2008, the Respondent filed a supplementary submission with the Center. For the reasons set out further below, that submission was not considered by the Panel.

4. Factual Background

The following do not appear to be contested as facts by the parties.

The Complainant is the registrant of the domain name <gopets.com> (which is not the subject of this dispute). The Complainant registered that domain name on March 22, 1999.

The domain name has not yet been used in connection with an interactive website, although, in March 2007, the Complainant appears to have posted a minimal amount of information on the site. For example, on March 12, 2007, the website contained the Complainant’s logo and the statement “Welcome to goPets.com goAhead – tell your friends that goPets will be coming soon!” On March 13, 2007, Complainant updated the website in minor respects. This evidence is from the Civil Minutes of the United States District Court, Central District of California, preliminary injunction proceedings, referred to further below.

The registrant of the disputed domain name is listed as Chris Bradfield. The Rules provide that the “Respondent” is the “holder of the domain name registration”. However, the holder of the registration in this case is described, by the Respondent, as one of the executives of GoPets Ltd. Because of the evidently close relationship between Mr. Bradfield and GoPets Ltd., the Panel has used references to “the Respondent” as references to both Mr. Bradfield, as the registrant of the disputed domain name, and to GoPets Ltd. for whom the domain name appears to be beneficially held.

The Respondent is the registrant of the service mark GOPETS, registered on the principal register of the United States Patent and Trademark Office. The filing date of that registration is September 30, 2004. As will be seen below, the Complainant challenges the validity of that registration.

5. Parties’ Contentions

A. Complainant

The following is summarized from the Complaint:

The Complainant makes claims against the Respondent, grouped under the heading “[t]he domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.”

The claims which the Complainant makes under that heading are that the disputed domain name is confusingly similar to the Complainant’s domain name <gopets.com>, which was established 5 years before the Respondent’s domain name.

The Complainant, secondly, claims that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant claims that the Respondent lacks such legitimate interests because it was fully aware of the Complainant’s own domain name and has obtained “fraudulent” trademark rights. The Complainant claims that the Respondent, having failed to obtain the Complainant’s <gopets.com> domain name by offering to purchase it, has “devised a plan to TAKE the domain name and use of the term ‘gopets’ from Hise [the Complainant] by whatever means necessary.” Among other things, the Complainant refers to a prior WIPO administrative proceeding (GoPets Ltd. v. Edward Hise, WIPO Case No. D2006-0636), in which the Respondent unsuccessfully challenged the Complainant for ownership of the domain name <gopets.com>.

Finally, for somewhat similar reasons, the Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant alleges that the Respondent knew of the Complainant’s ownership and operation of the <gopets.com> domain name “well before he took any actions to imitate a claim of that exact term.” The Complainant claims that the Respondent registered the disputed domain name to “cover up [its] fraudulent trademark claim.” The Complainant also claims that the Respondent’s registration of the disputed domain name was “hidden by using a foreign country address from which the company actually operates.”

B. Respondent

The following is summarized from the Response.

Pursuant to Rule 18, the Respondent requests that the Panel terminate or, in the alternative, suspend the proceedings pending conclusion of the Civil Action between the parties in the United States District Court, Central District of California.

On the merits, the Respondent notes that there has already been a judgment that the Complainant does not have rights in “the GOPETS mark”. In this connection, as referenced above, the Respondent notes that the parties are also parties to a litigation, pending since March 2007, in the United States District Court, Central District of California. In an interlocutory motion by the Complainant for leave to amend a counterclaim for cancellation of the Respondent’s service mark, the Respondent claims that the District Court found that the Complainant does not have any trademark rights in GOPETS.

The Respondent claims that the Complainant has not made, and does not point to, any actual trademark use of the GOPETS mark.

The Respondent also claims that it has rights or legitimate interests in the disputed domain name. It has a registered trademark for GOPETS and has used the disputed domain name in connection with a bona fide offering of goods and services. This is described as the development of “the GOPETS game – an online virtual community game consisting of interactive 3D pets that roam across the Internet, visiting the desktops of community members to socialize, play games and create friendships.”

In response to a claim by the Complainant that the Respondent is “hiding behind” the registrant (Chris Bradfield) of the disputed domain name, the Respondent states that Chris Bradfield is an executive of GoPets Ltd. The Respondent claims that the registration in his name is only a matter of convenience, not an attempt to deceive anyone.

Finally, the Respondent denies that it has registered and used the disputed domain name in bad faith. The Respondent claims that this issue has already been decided by the District Court. The Court found that the Complainant had not sufficiently alleged either that it had established rights in the mark or that the Respondent had knowledge of those rights. The Respondent claims that the Complainant is trying to disrupt the Respondent’s business.

The Respondent requests a finding of reverse domain name hijacking against the Complainant.

6. Discussion and Findings

As an initial matter, the Panel has considered the Respondent’s request under Rule 18 to terminate or suspend the proceeding pending final judgment by the District Court on the Respondent’s claims. Although the Panel notes that the proceedings involve similar and, to some extent, overlapping subject matter, the remedies sought by the Respondent in the District Court are not the same as those sought by the Complainant here. In particular, in the District Court, the Respondent seeks, inter alia, the transfer of the Complainant’s domain name <gopets.com>, while in this proceeding, the Complainant seeks transfer or cancellation of the domain name <gopets.net>.

On the unique facts and procedural history of this case, the Panel exercises its discretion under Rule 18(a) and proceeds to a decision on the merits. See, e.g., Cognigen Networks, Inc. v. Pharmaceutical Outcomes Research a/k/a Cognigen Corp., WIPO Case No. D2001-1094 (panel proceeded to decision on the merits because concurrent federal district court proceeding did not “specifically include the relief sought through this proceeding; namely, cancellation of the contested domain name”); Sonatel Multimйdia SA v. Universal Computer Associates SUARL/Mamadou Kйbй, WIPO Case No. D2005-0009 (“The Panel observes that, while both proceedings deal with the disputed domain names, the nature of the demands presented to the Senegalese Court by each party does not prevent the Panel from proceeding to a decision under the UDRP on the issue of whether such domain names shall be transferred or not to the Complainant.”)

Accordingly, the Panel proceeds to the merits of the case.

Under paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

These issues are discussed as follows, immediately after a consideration of the Respondent’s supplemental filing.

A. Supplemental Filing

On April 14, 2008, the Respondent sought to file further information in connection with this case.

Neither the Policy nor the Rules explicitly provide for supplemental filings to be made by either party. A Panel has the discretion to admit or invite further filings under paragraphs 10(a), (b), (d), and 12 of the Rules. The Panel considers that such filings should not be admitted as a general rule, and there was no showing of good cause for accepting a supplemental submission in this case (especially given the voluminous nature of the parties’ initial submissions). See, e.g., Dreamgirls, Inc. v. Dreamgirls Entertainment, WIPO Case No. D2006-0609. The Panel considered that the Complaint and Response contained sufficient argument and evidence for the Panel to proceed to an informed decision. Accordingly, the Panel did not consider the further filing.

B. Identical or Confusingly Similar

The Complainant’s case proceeds from an apparent misunderstanding of the Policy. As a first step, under paragraph 4(a)(i) of the Policy, the Complainant must establish that it “has rights” in a trademark. The Complainant provides no evidence of having registered trademark rights. Neither does it provide the kinds of evidence that might support a showing of common law (i.e. unregistered) trademark rights.

As the term suggests, a “trademark” is, at the very least, a mark which a complainant has used in ‘trade’. But the Complainant provides no evidence of having used a mark in trade.

The Complainant provides evidence of registering <gopets.com> in 1999, and developing a ‘marketing plan’ in connection with it, as part of a marketing class then attended by the Complainant. The marketing plan (attached to the Complaint) describes the domain name <gopets.com> as intended to be “a pet owner resource covering health, safety, nutrition, animal behavior, training, competition, abuse, pets and children, free advice from veterinarians, and the pet industry.” The Complainant also attached a deposition, in the form of a transcript, of Edward Hise (the President and CEO of the Complainant), taken on December 9, 2007. In it, Mr. Hise refers to numerous “development tasks” concerning the intended website. Those preparatory activities included, for example, undertaking classes in building a business online; visiting pet and animal-related websites; and putting some material up on the website from time to time on, e.g., insurance for pets, and guide dogs for the blind. Mr. Hise also refers to advice and input provided by Kim Hise, which he states was based on her experience working in vet clinics.

For the purpose of this dispute, the Panel accepts this evidence as true. However, the evidence presented by the Complainant still does not advance its case. The Complainant’s preparatory plans and research do not show that it has used a mark ‘in trade’. It merely indicates an intention to do so. But such an intention does not show that it has actually been done, and it is well established that the mere registration of a domain name does not create any trademark rights.

In addition to the lack of evidence supporting the Complainant’s rights in a mark, there has also been a judicial finding against the Complainant, involving similar arguments to those presented here. The United States District Court, Central District of California, Case No. 07-1870 (December 17, 2007), granted a preliminary injunction against the Complainant, on the grounds that the Respondent would be “likely to succeed on the merits of its service mark infringement claim….” Further, the observation by the District Court concerning the evidence of the Complainant’s domain name is equally applicable in this case: “However sincere [the Complainant’s] sense of injustice may be, the law is clear that ownership of a domain name alone does not confer any rights to a trademark in the same name.”

The standard of proof in that preliminary proceeding is not dissimilar to the usual standard of proof in an administrative proceeding under the Policy. As noted in the Court proceeding, the burden of proof on the Respondent was to establish “a likelihood of success on the merits.” In an administrative proceeding under the Policy, the Panel may generally make findings on the balance of probabilities. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No. D2003-0185. Panels have consistently applied such a “balance of probabilities” test in relation to burdens of proof under the Policy. For relatively recent applications of this principle see, e.g. Whitstrand Investments Limited T/A DataDirection v. Direction Research Group Limited, WIPO Case No. D2005-0101; Deutsche Post AG v. NJDomains, WIPO Case No. D2006-0001.

The finding by the District Court therefore strongly supports the Panel’s finding, on this first ground under the Policy, that the Complainant has not demonstrated that it has rights in the mark GOPETS.

The Complainant makes a number of other allegations, including that the Respondent’s trademark is invalid and was obtained by some form of deception. Again, even if this were true (or even if the Respondent had no trademark at all), it would not help the Complainant establish its own rights in a mark. Nevertheless, since the Respondent’s mark is registered on the principal register of the United States Patent and Trademark Office, it is entitled to a presumption of validity. The Complainant has not submitted compelling evidence of invalidity to rebut that presumption. Electronic Commerce Media, Inc. v. Taos Mountain, NAF File No. FA0008000095344.

For these reasons, the Panel finds that the Complainant has not established its case under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests, Bad Faith

Because of the Panel’s findings above, it is not necessary for it to consider in detail the Complainant’s arguments under either paragraph 4(a)(ii) (in relation to the Respondent’s rights or legitimate interests) or paragraph 4(a)(iii) (in relation to bad faith). As noted above, the Policy requires the Complainant to establish all three grounds under paragraph 4 of the Policy. Having failed on the first of those grounds, the Complaint cannot succeed. However, because it is relevant to the request for a finding of reverse domain name hijacking, the Panel briefly notes that Respondent does appear to have shown a legitimate interest in the domain name (including by virtue of its use of <gopets.net> and its registration of GOPETS as a federal trademark) and that the Complainant does not appear to have established bad faith registration or bad faith use by the Respondent.

D. Reverse Domain Name Hijacking

The Respondent asks for a finding that the Complaint was brought in bad faith.

On balance, two of the Panelists support such a finding. The Complainant should have known its case was fatally weak. The District Court findings, in relation to similar evidence presented here, should have given the Complainant notice that the Complainant lacks trademark rights in the GOPETS name. It seems plain that the Complainant, had it properly understood what was required, would have understood that it could not make its case. It is also notable that the Center provides a substantial amount of information on its website, to fully inform parties about conducting disputes under the Policy. This includes a model Complaint, which the Complainant in this case has used. The notes embedded in that model Complaint relevantly instruct a complainant to “specify the trademark(s) or service mark(s) on which the Complaint is based and, for each mark, describe the goods or services, if any, in connection with which the mark is used.” This was evidently a part of that template which the Complainant ignored.

The Complainant’s case was similarly fatally weak with respect to the second and third elements of the Policy. In particular, the Respondent’s ownership of a federal trademark registration is powerful evidence of the Respondent’s legitimate interest in the domain name, and the Complainant lacked any credible evidence of bad faith registration and use of the domain name.

For these reasons, two of the Panelists would make a finding of reverse domain name hijacking against the Complainant. There is sufficient evidence that the Complainant brought the Complaint either deliberately knowing of its flaws, or that it should have been aware of them.

One Panelist, however, considers that the Complainant should be given the benefit of the doubt on this point, since it is unrepresented by counsel. On this alternative, it is possible that the Complainant simply misunderstood the scope of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel unanimously rules that the Complaint is denied and, based on a majority, finds that the Complaint was brought in bad faith and thus constitutes reverse domain name hijacking.