WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Hill’s Pet Nutrition, Inc. v. JG/Josh Green

Case No. D2004-0819

1. The Parties

The Complainant is Hill’s Pet Nutrition, Inc., Topeka, Kansas, United States of America, represented by Dorsey & Whitney LLP, of New York, New York, United States of America.

The Respondent is JG/Josh Green, New York, New York, United States of America.

2. The Domain Name and Registrar

Upon information and belief, the disputed domain name <hillsperscriptiondiet.com> (the “Domain Name”) was registered utilizing the services of Unifiednames Inc., d/b/a RegisterFly.com, of West Orange, New Jersey. Upon further information, RegisterFly was said to be a domain name registration service reseller for eNom, Inc. eNom, of Bellevue, Washington, United States of America is the current registrar for the Domain Name.

3. Procedural History

The Complaint was received by e-mail at the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2004, and in hard copy on October 11, 2004. On October 7, 2004, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On October 7, 2004, eNom transmitted by email to the Center its verification response confirming that the respondent was listed as the registrant and providing the contact details for the administrative, billing and technical content of the domain name in issue.

On October 12, 2004, the Center verified that the Complainant 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 October 12, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2004.

The Center appointed James G. Fogo as the Sole Panelist in this matter on November 11, 2004. 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.

The language of the proceeding is English.

4. Factual Background

The Complainant, its predecessors in interests and its related companies, have used and registered the trademark HILL’S, as well as the trademark PRESCRIPTION DIET and the combination of these two as a combination HILL’S PRESCRIPTION DIET. Each of these trademarks have been used in many countries through the world offering a number of goods including pet foods, dietary substances for animals, and veterinary preparations. The following disclose examples of trademarks registered in the United States in respect of such wares set out in the following table:

The Complainant has secured registration of its trademarks in many countries of the world, a listing of which is annexed in Complainant’s Exhibits 3 and 4.

The Complainant is a subsidiary of Colgate-Palmolive Company, a leading consumer products company, which has marketed its products and its subsidiaries’ products throughout the world. As a result the Complainant’s products and trademarks have been widely circulated, making it one of the world’s leading producer and marketer of specialty pet foods and therapeutic products.

Each of the Complainant’s registered trademarks in the table set out above, antedates by years the Respondent’s act of registering the Domain Name on June 17, 2004.

The Respondent did not file a response and in its absence, the only information relating to the respondent is the filing date from the Registrar and any information obtained by the Complainant.

At the date when the proceedings commenced in October 2004, the Respondent was identified as JG/Josh Green of New York. Before that at a date which is not identified, the Domain Name holder was said to be one Tom Kane of New York. Upon information and belief, it was suggested that the Respondent and the prior registrant of the Domain Name were either identical persons or persons working in concert with one another. Neither party could be reached and the panel does not draw any conclusion on the basis of present knowledge.

5. Parties’ Contentions

A. Complainant

The Complainant seeks to have the domain name <hillsperscriptiondiet.com> transferred to it.

The Complainant has prior rights in the trademarks HILL’S and PRESCRIPTION DIET in issue, as well as the marks when they have been used together at dates earlier than the Domain Name.

The Complainant asserts that the Respondent’s Domain Name is essentially identical, and certainly confusingly similar, to the Complainant’s trademarks. The Domain Name incorporates two of the Complainant’s trademarks of long standing. The only difference is a misspelling of the word “prescription” as “perscription” and the absence of an apostrophe in the word HILL’S. Neither is a variation of significance. The Complainant asserts that a member of the public viewing the Domain Name would not likely be misled.

The Complainant notes that each of the two marks has been used for at least 50 years, and are well known.

Both marks have been combined in HILL’S PRESCRIPTION DIET as a single design trademark registered in the United States on March 27, 2001, more than two years before the Domain Name was registered.

No Rights or Legitimate Interests

The Complainant has prior rights in the trademark HILL’S, the trademark PRESCRIPTION DIET and the trademark HILL’S PRESCRIPTION DIET & DESIGN over the Respondent’s Domain Name.

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name, never having licensed or authorized the Respondent to use any of the trademarks together or individually. The Respondent is using the Domain Name for commercial gain to divert customers misleadingly to its own website. The Domain Name resolves to the website “www.hillsperscriptiondiet.com” which further redirects the consumer to a website at “www.prescriptions.org”. This website is an on line pharmacy that upon information and belief, sells prescription drugs without prior written prescriptions from doctors.

Thus the Respondent is not making any legitimate commercial or fair use of the Domain Name and no rights or legitimate interests by the Respondent are disclosed.

Registered and Used in Bad Faith

The Respondent has registered the Domain Name without any bona fide basis for such registration but is seeking to unfairly capitalize on the well known reputation of the Complainant. Prior Panels have held that bad faith is found if it were unlikely that the respondent would have selected the domain name without knowing the reputation of the trademark. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

In the present case, the Respondent was obviously aware of the Complainant’s trademarks and products and selected the Domain Name with the intention of causing confusion and by adoption of a closely similar website through which the Respondent could sell drug products.

Clearly, the Respondent has registered the Domain Name in bad faith and used the Domain Name in bad faith.

B. Respondent

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

6. Discussion and Findings

Under Paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exception circumstances, the panel shall decide the dispute based on the Complaint. No exceptional circumstances have been brought to the panel’s attention and it will proceed to make the findings below based upon material set forth in the Complaint.

In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the 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 domain name in question; and

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

A. Identical or Confusingly Similar

The Complainant has provided plain and undisputed evidence of its ownership with the trademarks “HILL’S” and “PRESCRIPTION DIET” used for at least 50 years each being well known worldwide. A further trademark was created when the two marks were combined as a single design mark “HILL’S PRESCRIPTION DIET”, registered in the United States on March 27, 2001.

The Domain Name in dispute <hillsperscriptiondiet.com> is comprised of the same two trademarks of the Complainant in combination. The Respondent has omitted of the apostrophe and created a misspelling by reversing the second and third letter, changing prescription to perscription. Neither is a significant variation. Therefore, the Domain Name is confusingly similar to Complainant’s marks.

The gTLD “com”, is required for registration of the domain name and has no part in the considering the content of the consideration as to variations.

Every one of the trademarks referred to, antedates the Respondent’s Domain Name.

B. Rights or Legitimate Interests

Under this heading, the Complainant is required to prove a negative, that the Respondent has no rights or legitimate interests in respect of the domain name. Proving a negative is difficult when the Respondent has not replied and where there is little known of the other party.

Where this is the case, it has been sufficient for the Complainant to make out a prima facie case.

In the present case, the Complainant has produced evidence that each of the trademarks selected by the Respondent and inserted in the domain name, was shown to be in use over 50 years or more. The trademarks are and were well known worldwide. There can be no doubt that the Respondent selected the Domain Name with full awareness of the Complainant’s trademarks and the products associated with the wares.

The Respondent chose not to file a Response disclosing its rights and interests in the Domain Name.

It follows that the Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

When registering the domain name, the Respondent was aware of the existence of the Complainant’s trademarks. In linking the Domain Name to a website so similar to the Complainant’s trademarks, the Respondent demonstrated bad faith and most likely caused consumer confusion. The Respondent’s objective might well be to free ride on the extensive goodwill associated with the Complainant’s trademarks.

The Respondent was not making a legitimate non-commercial or fair use of the Domain Name without intent of commercial gain. To the contrary, the Complainant determined that the Respondent used the Domain Name to direct customers and potential customers of the Complainant to a website.

The Domain Name resolves to “www.hillsperscriptiondiet.com”, but is then directed to a website “www.prescriptions.org”. The latter website is an online pharmacy that upon information and belief, was thought to sell prescription drugs to treat disorders without prior written prescriptions from doctors. Such use is a commercial use and does not constitute fair use.

Section 4(b)(iv) of the Policy sets out certain factors which if found by the Panel to be present, shall be evidence of the registration and use in bad faith. The subsection reads in part “ 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, or endorsement of your website or location or of a product or service on website or location”.

The Panel finds that the domain name was registered and was being used in bad faith within the meaning of Paragraph 4(b)(iv) 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 orders that the domain name be transferred to the Complainant.

James G. Fogo
Sole Panelist

Dated: November 26, 2004