WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Central Garden & Pet Company v. Ryan G Foo, PPA Media Services / Domain Admin / Whois Privacy Corp.

Case No. D2015-2268

1. The Parties

The Complainant is Central Garden & Pet Company of California, United States of America, represented by CSC Digital Brand Services AB, Sweden.

The Respondent is Ryan G Foo, PPA Media Services of Santiago, Chile; Domain Admin / Whois Privacy Corp. of Nassau, New Providence, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <coralife.com> is registered with Internet.bs Corp. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2015. On December 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 17, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 18, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 21, 2015.

The Center verified that the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 23, 2015. In accordance with the Rules, paragraph 5, the due date for Response was January 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2016.

The Center appointed Alessandra Ferreri as the sole panelist in this matter on January 26, 2016. 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 leading US company that manufactures and commercializes quality branded products for consumer and professional use in the lawn and garden and pet supplies market.

The Complainant is the largest domestic producer in the field of the production of aquariums and terrariums for the Aquatic and Reptile hobbyist as well as the leading supplier of high-end aquatics consumables including sophisticated lighting systems, high-end water conditioners and supplements and other premium supplies.

Under the brand Coralife, founded in 1987, in the last three years the Complainant has sold in excess of half a million product units each year, including aquarium lighting, filtration products, marine salt mix and more. In addition, through its main website <coralifeproducts.com> the Complainant has captured 1.4 million page views from about 300,000 users.

Listed on the NASDAQ (CENT and CENTA) the Complainant reported consolidated net sales of USD 1.6 billion in 2014; of which, the Pet segment accounted for approximately USD 846 million.

The Complainant owns numerous CORALIFE trademark registrations across various jurisdictions, and in particular, it is the owner of the following trademark registration:

- US trademark CORALIFE, no. 2459471 registered on June 12, 2001, duly renewed for the goods in International Classes 1, 11, 31.

The disputed domain name was registered on November 16, 2002 and it resolves to a parking page with different commercial links to Complainant’s competitors or generally related to aquarium products and supplies.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the CORALIFE trademark is well known, used by the Complainant since 1990.

The Complainant contends that the disputed domain name <coralife.com> is identical to the Complainant’s CORALIFE trademark because it contains the Complainant’s trademark CORALIFE in its entirety. The mere addition of the generic Top-Level Domain (“gTLD”) “.com” does not alter such identity.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Respondent is not sponsored by or affiliated with the Complainant in any way.

The Respondent was not permitted by the Complainant to use the CORALIFE mark in any manner, nor to apply for any domain name incorporating it.

The Respondent is not commonly known by the disputed domain name and is not making any legitimate noncommercial or fair use of the domain name, since it is probably used to generate click-through fees and such use cannot be considered a bona fide offering of goods or services.

The Complainant contends that the disputed domain name <coralife.com> has been registered and is being used in bad faith.

The Complainant contends that the Respondent knew, or at least should have known of the existence of the Complainant’s trademark, when it registered the disputed domain name. Indeed, the CORALIFE trademark is well known internationally, as it results from a simple search on the Internet (Annex 9 of the Complaint) and from the Complainant’s websites, including “www.coralifeproducts.com”, as well as its Coralife Facebook page (Annex 5 and Annex 6 of the Complaint).

The Complainant contends that the Respondent’s bad faith use of the disputed domain name is evidenced by the fact that the disputed domain name was connected to a parking website and is for sale. Consequently, the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s well known trademarks.

Moreover, the Respondent is taking undue advantage of the Complainant’s trademark to generate profits. Indeed the Respondent was using the disputed domain name to direct Internet users to a webpage displaying pay-per-click links which are likely to generate revenues for it.

Furthermore the Complainant contends that the Respondent has engaged in a bad faith pattern of “cybersquatting”, since he has previously been involved in over 60 UDRP proceedings (Annex 10 of the Complaint).

Moreover the Complainant contends (prior to the filing of the Complaint) that the Respondent was offering to sell the disputed domain name at Sedo.com for valuable consideration in excess of his out-of-pocket expenses (Annex 4 of the Complaint) and also this circumstance constitutes a finding of Respondent’s bad faith.

The Complainant contends that the Respondent’s bad faith registration is also evidenced by the fact that the Respondent originally failed to identify itself by choosing to conceal its name, address and contact information by using an identity protection service in connection with the disputed domain name. Such use of concealed contact information is further evidence of bad faith.

Finally, the fact that the Respondent did not reply to the Complainant’s cease and desist letter and did not try to defend his rights or interests in the registration of the disputed domain name is also an indication of bad faith.

B. Respondent

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

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the disputed domain name registered by the Respondent 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 has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is identical to the Complainant’s trademark CORALIFE; the only difference is the adjunction of the suffix “.com”.

With regards to the gTLD suffix “.com” (which indicates that the domain name is registered in the “.com” gTLD), as it was established in many previous decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade ARBIFT v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447 and Crédit Industrile et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457) it does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; indeed the suffix is a necessary component of the domain name and does not give any distinctiveness.

Therefore, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Respondent did not reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence by the Complainant.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the disputed domain name, such as:

(i) use or preparation to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) being commonly known by the disputed domain name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

There is no evidence in the record that the Respondent has any rights or legitimate interests in the disputed domain name.

There is no evidence of the Respondent’s use, or demonstrable preparation to use, the disputed domain name in connection with a bona fide offering of goods.

The Respondent has not been and is not commonly known by the disputed domain name or has acquired any trademark or service mark rights in it. The Respondent’s name does not coincide with the disputed domain name.

The Complainant states that the Respondent is not linked to the Complainant in any way, through a business or legal relationship or authorized by the Complainant to register the disputed domain name <coralife.com>.

Furthermore, the use of the disputed domain name cannot be considered a bona fide offering of goods or services. As a matter of fact, by registering the disputed domain name the Respondent clearly intended to profit from the use of a domain name which is confusingly similar to the Complainant’s trademark CORALIFE, diverting Internet users to a website where pay-per-click links exist and generate income for the Respondent.

Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the disputed domain name may also be inferred by the fact that no response was filed by the Respondent. According to earlier UDRP decisions “non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights” (see Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 and GA Modefine S.A. and Giorgio Armani v. Yoon-Min Yang, WIPO Case No. D2005-0090).

Therefore, based on the evidence, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the disputed domain name was registered and is being used in bad faith.

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include:

(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.

In light of the evidence submitted by the Complainant, the Complainant’s registered CORALIFE trademark predate the registration of the disputed domain name <coralife.com> and in the Panel’s belief, the Respondent must have known about the Complainant’s existence and rights at the time of the registration of the disputed domain name. The Respondent’s website offered links to services that compete with those offered by the Complainant, including links directly refer to the Complainant and/or to the Complainant’s competitors. The Respondent does not provide, nor is it apparent to the Panel, any reason why the disputed domain name was registered or acquired other than by reference to the Complainant. The registration of the disputed domain name in awareness of the Complainant’s activities and rights, in the absence of rights or legitimate interests, amounts to registration in bad faith.

Moreover, the Complainant has proven that the Respondent was involved in several domain name dispute resolution proceedings that it all lost and in which it never submitted a Response (see Annex 10 of the Complaint).

Further, a search in the publicly available UDRP decisions, reveals other forty-two recent UDRP decisions made against the Respondent covering a broad range of domain names, suggesting that the Respondent is, in this Panel’s opinion, a serial cybersquatter and that consequently his behaviour leads to an inference of bad faith (see Regency Homes, L.C. v. RegencyHomes.com, WIPO Case No. D2004-0412 and CBOCS Properties Inc v. WhoIs Privacy Protection Service, Inc. / ICS INC., WIPO Case No. D2013-0700: “Taking all the above circumstances into account and also the list of cases where the Respondent was found by other panels to have registered third party trade marks as domain names with the intention of exploiting, in one form or another, the goodwill associated with these trade marks, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith”).

Furthermore, the Respondent put the disputed domain name up for sale at Sedo.com. Subsequently, the Complainant offered an amount of USD 90, but said offer was considered too low and the Complainant was asked to submit a minimum bid threshold of 500 USD (see Annex 4 of the Complaint).

According to previous UDRP decisions (see DHL Operations B.V. v. Karel Salovsky, WIPO Case No. D2006-0520 and AstraZeneca AB v. Alvaro Collazo, WIPO Case No. D2005-0367) and without evidence from the Respondent on the point, the Panel infers that this amount is a valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name. Therefore, in the light of the above submitted evidence, in this Panel’s view it is clear that the disputed domain name was registered or acquired primarily for the purpose of selling or transferring the same to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name.

Concerning the use of the disputed domain name, the Complainant has proven that it resolved to a website where sponsored links exist, offering products from the Complainant and competitors of the Complainant.

In the Panel’s opinion the Respondent, by such use, intentionally attempted to attract Internet users, expecting to reach the website corresponding to the Complainant’s products and to obtain information about the Complainant’s activity to its own website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on a website.

Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith, according to numerous previous decisions (see Philip Morris Inc. v. Alex Tsypkin, WIPO Case No. D2002-0946; Credit Industriel et Commercial S.A v. Maison Tropicale SA, WIPO Case No. D2007-0955 MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325; and Giorgio Armani S.p.A. v. Daulet Tussunbayev, WIPO Case No. D2011-2082).

Furthermore, according with the Complainant’s view, the Panel finds that the use of a proxy registration service to avoid disclosing the name and contact details of the real owner of the disputed domain name, is also consistent with an inference of bad faith in registering and using the disputed domain name (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, and Dr. Ing. h.c. F. Porsche AG v. Domains by Proxy, Inc. and Vladimir Putinov, WIPO Case No. D2004-0311).

Finally, as referred to by the Complainant, the Respondent did not reply to the Complainant’s cease and desist letter of August 25, 2015 and to the subsequent reminders. According to previous UDRP decisions, this Panel also finds that “the failure of the Respondent to respond to the letter of demand from the Complainant further supports an inference of bad faith”, (besides RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 cited by the Complainant, see also Bayerische Motoren Werke AG v. This Domain is For Sale/Joshuathan Investments Inc, WIPO Case No. D2002-0787; News Group Newspapers Ltd and News Network Ltd v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598).

In light of all the above circumstances, the Panel is satisfied that the third element is met and that the disputed domain name <coralife.com> was registered and is being used in bad faith.

7. Decision

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

Alessandra Ferreri
Sole Panelist
Date: February 9, 2016