WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PetMed Express, Inc. v. Brian Schiffman, Inc.

Case No. D2012-0326

1. The Parties

The Complainant is PetMed Express, Inc. of Pompano Beach, Florida, United States of America, represented by Herron Jacobs Ortiz, P.A., United States of America.

The Respondent is Brian Schiffman, Inc. of Los Angeles, California, United States of America, represented by Law Office of Michael J. Ryan, United States of America.

2. The Domain Name and Registrar

The disputed domain name <petmedsnmore.com> (“the Domain Name”) is registered with GoDaddy.com, LLC (“the Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2012. On February 16, 2012, the Center transmitted by email to the Registrar request for registrar verification in connection with the Domain Name. On the same date, 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.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2012. The Response was filed with the Center on March 12, 2012.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 20, 2012. 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 Complainant is a publicly traded Florida corporation that sells prescription and non-prescription medications and health products for dogs, cats, and horses, as well as other pet supplies, through its website at “www.1800petmeds.com”, a telephone call center, and a mail order catalog. As reported in its 2011 Annual Report, in fiscal year 2011 the Complainant had sales of more than USD 231 million. The Complainant, with a current staff of some 200 employees, has been in operation since 1996 and asserts that it has expended approximately USD 200 million in advertising over the past ten years. Its website attracted roughly 16 million visits during the 2011 fiscal year.

The Complainant holds several trademarks in the United States of America, Canada, and the European Union, including the following United States trademarks:

The Domain Name was created on May 11, 2008. The Respondent is a privately held California business corporation established in 2008 to sell pet medications and pet supplies online, through the website associated with the Domain Name. The Respondent employs three pharmacists and ten pharmacy technicians, as well as support staff, and is licensed to prescribe medications in 40 states of the United States. The Respondent states that its sales in February 2012 exceeded USD 460,000 and that the company spends USD 75,000 monthly for online advertising with search engines and shopping websites. Like the Complainant, the Respondent has Vet-VIPPS certification from the National Association of Boards of Pharmacy.

It appears from a comparison of the Complainant’s and the Respondent’s respective websites that the Respondent offers a smaller range of products, many of which are also offered by the Complainant. It is undisputed that the Complainant and the Respondent are competitors in the United States market for pet medications, pet health products, and pet supplies.

From correspondence attached to the Complaint and the Response, it is evident that the parties have a long, if sporadic, history of communications over the Complainant’s trademark claims. As early as 2004, before the Respondent was incorporated, the Complainant’s counsel sent cease-and-desist letters to the Respondent’s principal, then operating a business under the name PetMedClub.com. It does not appear from the record, however, that the Complainant has ever brought a legal action for trademark infringement against that company or the Respondent.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to its PETMEDS marks.

The Complainant contends further that the Respondent has no rights or legitimate interests in the Domain Name, observing that the Respondent is not known by that name and has not applied to register it as a trademark. The Complainant argues that the Respondent had actual and constructive notice of the Complainant’s marks before registering the Domain Name, and that using the marks in the Domain Name cannot be considered use in connection with a bona fide offering of goods or services.

The Complainant also argues that the Respondent’s prior knowledge of the Complainant’s marks indicates bad faith in registering the Domain Name and using it to sell competing products. The Complainant states that “it seems obvious that Respondent chose the Disputed Domain Name to capitalize on that well-established reputation which the Complainant has developed.” The Complainant infers that the Respondent intended to prevent the Complainant from using the Domain Name and sought to mislead Internet users for commercial gain.

B. Respondent

The Respondent contends that “pet med” and “pet meds” are descriptive terms used by many retailers, and that there is no likelihood of confusion with the Complainant.

The Respondent claims a legitimate interest in using a generic term, “pet meds”, in the Domain Name, as it accurately describes many of the Respondents’ products, while the remainder of the Domain Name, “nmore”, accurately indicates that the Respondent sells other pet products as well.

The Respondent points to evidence of numerous online retailers using the term “pet meds” in a generic sense, and the Respondent denies any intention to mislead by suggesting an affiliation with the Complainant.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that, in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules:

“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Identical or Confusingly Similar

The Complainant indisputably holds registered trademarks incorporating a portion or variation of its corporate name, of which the most relevant for present purposes is the standard-character mark PETMEDS. This is incorporated in its entirety in the Domain Name, which simply adds “nmore”.¹ This addition suggests the words “and more”, as “n” is often used colloquially in place of “and” in slogans and signage in the United States. This generic addition does not eliminate the likelihood of confusion with the distinctive portion of the Domain Name, which is identical to the Complainant’s registered mark.

The Panel finds that the Domain Name is confusingly similar to the PETMEDS mark for purposes of the first element of the Complaint, which is essentially a “low-threshold” standing requirement. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2, and cases cited therein.

B. Rights or Legitimate Interests

It is undisputed that the Complainant has not authorized the Respondent to use the PETMEDS mark. The Policy, paragraph 4(c), lists other circumstances demonstrating rights or legitimate interests in a domain name, including the following:

“(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 or service mark rights . . .”

The Respondent claims an interest in using “pet meds” in its generic sense as referring to pet medications, for a website selling pet medications. There is ample evidence in the record that many retailers use the term in this descriptive manner. It could not be considered use in connection with a bona fide offering within the meaning of the Policy, however, if the Respondent selected the Domain Name with the aim of trading on the Complainant’s reputation. That conclusion depends on the same facts discussed below in connection with the bad faith element of the Complaint, where the issue is developed more fully.

C. Registered and Used in Bad Faith

The Policy’s non-exhaustive list of instances of bad faith in paragraph 4(b) includes the following:

“(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

It is undisputed that the Respondent was aware of the Complainant and its PETMEDS marks when the Respondent registered the Domain Name. But there is not sufficient evidence in the record to find that the Respondent sought “primarily” to disrupt the Complainant’s business or prevent the Complainant from using its mark in a corresponding domain name, as the Complainant infers. The Domain Name is not identical to the Complainant’s mark, and the Domain Name does, in fact, describe the Respondent’s business. The registration of the Domain Name did not prevent the Complainant from registering a domain name identical to its mark, and the Complainant did so. A WhoIs search shows that the Complainant owns the domain name <petmeds.com>, and the Complainant uses it to redirect Internet users to its website at “www.1800petmeds.com”.

The bad faith argument, then, comes down to this: Does the record establish the probability that the Respondent, despite its protestations to the contrary, registered and used the Domain Name in an effort to create “initial interest confusion” and thereby divert consumers seeking the Complainant’s website?

If the Complainant’s mark were highly distinctive or famous, that conclusion would be nearly unavoidable. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (“’VEUVECLICQUOT.ORG’ is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.”); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“the word <TELSTRA> appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the Complainant”).

But that is not the case here. “Pet meds,” referring to pet medications, appears to be widely used as a descriptive term, and it is found in numerous domain names, including <directpetmeds.com>, <discount-pet-meds.net>, <discountpetmeds.info>, <royalpetmeds.com>, <petmedssupplies.com>, <petmedsreviews.com>, <all-pet-meds.com>, <pet-med.biz>, <petmedsonline.info>, <nationalpetmeds.com>, <petmedsonline.org>, <onlinepetmeds.info>, <petmedstore.net>, <petmedstore.com>, <dogspetmeds.com>, <petmedsonline.org>, <petmedoutlet.com>, and <petmedshop.net>. This suggests that many retailers of pet medications find the term useful for its descriptive value rather than its trademark value.

Indeed, evidence of such generic use of “pet meds” factored largely in a ruling against the same Complainant in PetMed Express Inc. v. JLB a/k/a Joseph Brinton, WIPO Case No. D2009-0179.

As the panel in that proceeding observed, “the Complainant’s ‘petmeds’-formative United States trademark registrations were obtained under Section 2(f) of the Lanham Act, an indication that the marks were descriptive of the essence of the Complainant’s business and required secondary meaning for purposes of registration on the USPTO’s principal register.” While registration on this basis affords the Complainant protections under trademark law, it is not dispositive in establishing the requisite bad faith of the Respondent in a Policy proceeding. This Panel agrees with the conclusion in PetMed Express Inc. v. JLB a/k/a Joseph Brinton, supra, that “[t]he Policy was not intended to permit a party who elects to register or use a common or descriptive term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.”

The Complainant has the burden of proof on this point, as with each of the elements of the Complaint. Given the Respondent’s sworn and plausible statements, the descriptive nature of the Complainant’s marks, and the Respondent’s consistent use of the Domain Name for purposes relevant to its generic sense, the Panel concludes that the Complainant has not established the probability of bad faith in the registration and use of the Domain Name. The Panel’s findings on these same facts also compel the conclusion that the second element of the Complaint, the asserted lack of rights or legitimate interests in the Domain Name, fails as does the third element.

7. Decision

For all the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist
Dated: April 4, 2012

¹ The “www” and “.com” portions of the Domain Name required for URL addresses in the Domain Name System are not considered material for trademark or Policy purposes. See, e.g., United States Patent and Trademark Office, Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL ('http://www.') nor the TLD [top-level domain name, such as ‘.com’] have any source-indicating significance”); see also Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456 (“the relevant comparison to be made is with the second-level portion of each of the Domain Names only ... , as it is well-established that the top-level domain names ... should be disregarded for this purpose”).