WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lost Dog Café Corporation v. Brooks Roberts / Lost Dog Pizza Company

Case No. D2013-2012

1. The Parties

Complainant is Lost Dog Café Corporation of Arlington, Virginia, United States of America (“USA”), represented by Driscoll & Seltzer, PLLC, USA.

Respondents are Brooks Roberts / Lost Dog Pizza Company of Indianola, Mississippi, USA, represented by Baggott Law, PLLC, Nashville, Tennessee, USA.

2. The Domain Name and Registrar

The disputed domain name <lostdogpizza.com> 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 November 26, 2013. On November 26, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2013, 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 Respondents and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on November 28, 2013.

The Center verified that the Complaint, together with the amendment to the Complaint/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(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on November 29, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 19, 2013. The Response was filed with the Center on December 20, 2013.

The Center appointed Michael A. Albert as the sole panelist in this matter on December 31, 2013. 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 is Lost Dog Café Corporation, a Virginia-based restaurant and franchise business.

Complainant is owner of the trademark registration for LOST DOG CAFE, a character mark, U.S. Reg. No. 4402647, filed September 28, 2012 and registered on September 17, 2013.¹

Complainant is also the owner of the service mark registrations for LOST DOG CAFE, a character mark, U.S. Reg. No. 2963574 for “Restaurants featuring seated dining, carry-out, and home delivery services, in class 42,” filed September 14, 2000 and registered on June 28, 2005; and for LOST DOG CAFE, a character mark, U.S. Reg. No. 2963562, for “Restaurant franchise services, in class 35,” filed March 18, 1998 and registered on June 28, 2005.²

Complainant is also the owner of the trademark registration for GOURMET PIZZA DELI HOME OF THE LOST DOGCAFE, a design mark, U.S. Reg. No. 2310531, filed on March 18, 1998 and registered on January 25, 2000.

Respondents registered the disputed domain name on July 8, 2007.

5. Parties’ Contentions

A. Complainant

In its Complaint, Complainant alleges:

(i) The disputed domain name is identical or confusingly similar to marks in which Complainant has rights.

(a) Complainant claims ownership of the LOST DOG CAFE trademark, the LOST DOG CAFE service marks, and the GOURMET PIZZA DELI HOME OF THE LOST DOGCAFE trademark. As evidence of ownership, Complainant provides copies of its trademark registrations for each of these marks.

(b) Complainant alleges operating restaurants and franchises since 1994 using its marks.

(d) Complainant contends the disputed domain name is confusingly similar to its marks. Complainant argues the domain name’s incorporation of the words “lost dog,” and its use to advertise restaurants and franchises similar to Complainant’s creates consumer confusion. Complainant also argues the addition of the descriptive word “pizza” to the disputed domain name does not prevent confusing similarity between the domain name and Complainant’s marks.

(ii) Respondents have no rights or legitimate interests in the disputed domain name.

(a) Complainant alleges Respondents operate a pizza restaurant and franchise business called “Lost Pizza Co.,” and therefore have no rights or interests in the disputed domain name which incorporates the word “dog.” In support of its assertion, Complainant provides an article linking Respondents with Lost Pizza Co.; images of the URL “www.lostpizza.com”, the site to which the disputed domain name resolves, which advertises the Lost Pizza Co. and names Respondents as the company’s owners; Lost Pizza Co.’s business registration with the Mississippi Secretary of State; and a copy of the “Lost Pizza Franchise Co. Prequalification Questionnaire” for applicants wishing to open a Lost Pizza Co. franchise, and listing the URL to which the disputed domain name resolves as the site linked to the questionnaire.

(b) Complainant alleges the disputed domain resolves to a website for Lost Pizza Co.

(d) Complainant alleges Respondents are using the disputed domain name illegitimately for commercial gain.

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

(a) Complainant alleges Respondents registered and used the disputed domain name to prevent Complainant acquiring it. Complainant further alleges Respondents sought a minimum of USD 5,000 from Complainant to transfer the disputed domain name. In support of this contention, Complainant provides an email from Respondents’ attorney to this effect. Complainant further contends that the fee sought by Respondents greatly exceeded Respondents’ out-of-pocket costs related to registering the disputed domain name.

(b) Complainant alleges Respondents renewed their registration of the disputed domain name annually, and updated the disputed domain name’s information in 2012, evidencing bad faith.

(d) Complainant alleges Respondents registered and used of the disputed domain name to attract consumers looking for Complainant’s website.

B. Respondents

In their Response, Respondents allege:

(i) The disputed domain name is not identical or confusingly similar to marks in which Complainant has rights.

(a) Respondents deny Complainant has rights in its marks. Respondents further argues Complainant misrepresents its rights by failing to disclose in the Complaint that the marks don’t grant Complainant exclusive rights in each constituent word comprising the marks, but rather in the combination of the words.

(b) Respondents deny that the disputed domain name is confusingly similar to Complainant’s marks because of the limitations regarding those marks.

(c) Respondents deny the rest of Complainant’s allegations regarding Complainants rights in its marks and confusing similarity between Complainant’s marks and the disputed domain name.

(ii) Respondents have rights and legitimate interests in the disputed domain name.

(a) Respondents deny Complainant’s allegations regarding their lack of rights or legitimate interests in the disputed domain name.

(iii) The disputed domain name was not registered or used in bad faith.

(a) Respondents admit Complainant demanded that Respondents turn over the disputed domain name.

(b) Respondents deny demanding a minimum of USD 5,000 from Complainant to transfer the disputed domain name. Complainant further argues that settlement negotiations do not demonstrate bad faith.

(c) Respondents admit they renewed the disputed domain name annually, but allege this is automatic for domain names registered with the Registrar. Respondents deny changing the disputed domain name registration information in 2012.

(d) Respondents deny the rest of Complainant’s allegations regarding bad faith.

6. Discussion and Findings

A. Standard of Review

Paragraph 15(a) of the Rules instructs this Panel to “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.” Paragraph 4(a) of the Policy requires that Complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondents is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (2) the Respondents have no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.

The parties must support their contentions with affirmative evidence. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 4.7 states, “Conclusory statements unsupported by evidence which merely repeat or paraphrase the criteria or scenarios under paragraphs 4(a), (b), or (c) of the UDRP would typically be insufficient.” Any of Respondents’ denials unsupported by evidence carry no weight in rebutting affirmative evidence proffered by Complainant.

B. Identical or Confusingly Similar

It is well established that registering a mark with a trademark authority is one way to demonstrate rights in the mark under Policy paragraph 4(a)(i). See Metropolitan Life Insurance Company v. Robert Bonds, NAF Claim No. 0873143. Complainant is owner of the LOST DOG CAFE trademark registration, a character mark, U.S. Reg. No. 4402647, filed September 28, 2012 and registered on September 17, 2013; the LOST DOG CAFE service mark registration, U.S. Reg. No. 2963574, a character mark, filed September 14, 2000 and registered on June 28, 2005; the LOST DOG CAFE service mark registration, U.S. Reg. No. 2963562, a character mark, filed March 18, 1998 and registered on June 28, 2005; and the GOURMET PIZZA DELI HOME OF THE LOST DOGCAFE trademark registration, U.S. Reg. No. 2310531, a design mark, filed on March 18, 1998 and registered on January 25, 2000. As such, three of Complainant’s registrations predate Respondents’ July 8, 2007 registration of the disputed domain name. Complainant’s trademark registrations evidence use of all marks since the mid-1990s. See Complainant’s Annex VIII. This use for all four marks predates Respondents’ registration of the disputed domain name.

Respondents’ registration of the disputed domain name prior to Complainant’s registration of one of its LOST DOG CAFE trademark does not remove Complainant’s rights in the mark. See Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Adminstrator, WIPO Case No. D2007-0856 (adopting the consensus panel view that a respondent’s registration of a domain name prior to a complainant’s registration of a mark is relevant to the 4(a)(iii) bad faith inquiry, and not to the 4(a)(i) rights and confusing similarity inquiry). The Panel finds Complainant exhibits rights in all four marks.

The Policy, paragraph 4(a)(i) inquiry now turns to whether the disputed domain name is identical or confusingly similar to Complainant’s marks. The disputed domain name <lostdogpizza.com> incorporates three elements (1) the words “lost dog” which also appear in each of Complainant’s marks, (2) the additional word “pizza,” and (3) the generic top-level domain (“gTLD”) “.com.” The disputed domain name is not identical to Complainant’s marks due to the absence of the word “café” and presence of the word “pizza.”

The disputed domain name’s incorporation of the words “lost” and “dog” may still render it confusingly similar to Complainant’s character marks. The test for confusing similarity begins with a comparison of the domain name and the mark “[i]n terms of sight and sound.” Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698. This test does not question whether the goods or services offered under the marks are similar or different from those offered at the site to which the disputed domain resolves. Id. (“The use to which the site is put has no bearing upon the issue whether the domain name is confusingly similar to the trademark”).

The first two words of the disputed domain name are also the first two words of the character marks. Their order in the disputed domain name is the same as in the marks. The disputed domain name does not include the word “café,” which forms the third and final word in the character marks. Confusing similarity can still result between a mark and a domain name incorporating only a portion of the mark. The relevant question is whether the portion of the mark present in the domain name constitutes the “definitive word[s]” of the mark. Jumeirah International LLC, Jumeirah Beach Resort LLC v. Vertical Axis, Inc., Domain Administrator / Jumeira.com, WIPO Case No. D2009-0203; see also Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318 (finding confusing similarity between <zermatt.com> and the marks ZERMATT MATTERHORN and ZERMATT ALPINE MONUMENT, since “‘Zermatt’ is the dominant, distinctive element of both trademark registrations”).

In seeing what portions of a mark are definitive, panels inquire “whether an Internet user would confuse [the portion of the mark included in the domain name] with ... any of the Complainants’ trademarks.” Jumeirah International LLC, Jumeirah Beach Resort LLC v. Vertical Axis, Inc., Domain Administrator / Jumeira.com, WIPO Case No. D2009-0203; see also EthnicGrocer.com, Inc. v. Latin Grocer.com, NAF Claim No. 0094384 (finding confusing similarity between the marks ETHNIC GROCER.COM and QUERICO.COM and the domain names <ethnicgrocery.com>, <ethnicgroceries.com>, <querica.com>, <quesrico.com>, <quericogrocer.com>, <quericogrocers.com>, <quericogrocery.com> and <quericogroceries.com>, because “The terms “ETHNICGROCER” and “QUERICO” are the most significant and dominant terms of the marks, [and] [t]he changes that the Respondent has made to the Complainant’s marks are minor”).

In the matter sub judice, an Internet user would be likely to confuse “lost dog” standing alone with Complainant’s LOST DOG CAFE marks, just as Internet users would confuse “Zermatt” with ZERMATT MATTERHORN or ZERMATT ALPINE MONUMENT, or “querico” with QUERICO.COM, or “ethnicgrocer” with ETHNICGROCER.COM. As such, this term forms the most definitive part of Complainant’s mark under the Jumerirah standard.

The word “café” is merely descriptive. As such, the Panel finds it cannot form the definitive term of Complainant’s marks any more than the terms “alpine,” “mountain,” and “monument” formed the definitive terms in Commune of Zermatt, supra. Of significance, Complainant’s character mark registrations disclaim exclusive use of the word “café.” The registrations include no such disclaimers to exclusive use of the words “lost” and “dog,” suggesting those words are definitive. See Commune of Zermatt and Zermatt Tourismus v. Activelifestyle Travel Network, WIPO Case No. D2007-1318. Thus, two thirds of Respondents’ disputed domain name is identical in sight and sound to the definitive two-thirds of Complainant’s marks.

The additional word “pizza” in the disputed domain name fails to aid Respondents, even as a replacement for the word “cafe.”³ The word “pizza” is merely descriptive, if not generic, and as such cannot overcome the claim of confusing similarity. See Fitness Anywhere, Inc. v. Simon Onil, NAF Claim No. 1372345 (finding confusing similarity between the domain name <trxsuspensionsale.com> and the complainant’s TRX and SUSPENSION TRAINING marks, even though the domain name added the generic word “sale” and removed the word “training”); Philip Morris USA Inc. v. Jesse Beck, WIPO Case No. D2013-1087 (finding confusing similarity between the domain name <teammarlboro.com> and the complainant’s MARLBORO mark, even though the domain name added the “generic descriptive” word “team”); Tommy Bahama Group, Inc. v. Private Whois tommybahamaoutlet.com, WIPO Case No. D2012-0197 (finding confusing similarity between the domain name <tommybahamaoutlet.com> and the complainant’s TOMMY BAHAMA mark, even though the domain name added the descriptive word “outlet”).

The addition of the gTLD “.com” does not detract from the similarity between the marks and the disputed domain name. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451 (finding the domain name <all-about-tamiflu> confusingly similar to the “Tamiflu” mark, despite the addition of a gTLD and descriptive words).

For the foregoing reasons, the Panel finds the disputed domain name is confusingly similar to the marks in which Complainant has rights.

C. Rights or Legitimate Interests

Complainant must make a prima facie case that Respondents lack rights and legitimate interests in the disputed domain name under Policy paragraph 4(a)(ii). The burden then shifts to Respondents to show they have rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, NAF Claim No. 0741828. Complainant’s burden is not high, “[b]ecause it is difficult to produce evidence to support a negative statement.” Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.

Under Policy paragraph 4(c), Respondents may demonstrate rights or legitimate interests in the disputed domain name by showing that: (i) before any notice of this dispute, Respondents used, or demonstrably prepared to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondents have been commonly known by the disputed domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondents are making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.

Regarding the requirements of 4(c)(i), the circumstantial evidence on record suggests that Respondents began using the disputed domain name well before the dispute began. However, where a respondent uses a domain to link to a site that offers goods and services similar to those offered by a complainant, the respondent may not be making bona fide offerings through the domain name. See Global Rental Co., Inc. v. Truck Sales, NAF Claim No. 1498509 (finding a domain using the complainant’s mark to advertise the same type of trucks as the complainant was not being put to bona fide use); Computerized Security Systems, Inc. d.b.a. SAFLOK v. Bennie Hu, NAF Claim No. 0157321 (finding a domain name confusingly similar to complainant’s that sold electronic locks similar to those offered by the complainant was not making bona fide offerings under Policy, paragraph 4(c)(i)).

Complainant claims the disputed domain name resolves to a site that advertises restaurants and franchises, which are the same type of goods and services Complainant offers under its marks. The Center’s review of the Complaint and website pursuant to its obligations under paragraphs 4(a) and 2(a)(ii)(c) of the Rules shows the disputed domain name resolves to the URL “www.lostpizza.com”. Screenshots of that site confirm it advertises a franchise chain of pizza restaurants. See Complainant’s Annex V.

Complainant claims to primarily function as a restaurant and franchise business. Complainant’s service marks cover “restaurants featuring seated dining, carry-out and home delivery services.” See Complainant’s Annex VIII. Complainant’s design mark is titled GOURMET PIZZA DELI HOME OF THE LOST DOGCAFE” See Id. Since Respondents use the disputed domain name to advertise goods and services similar to those offered by Complainant, Respondents are not making bona fide offerings through their site. As such, Respondents have no rights or legitimate interests under Policy, paragraph 4(c)(i).

Regarding the requirements of paragraph 4(c)(ii) of the Policy, the WhoIs registration lookup shows the disputed domain name is registered to “Lost Dog Pizza Company.” Complainant claims Respondents have never done business under that name, and that no such entity with that name exists. Complainant also claims Respondents are not authorized to use its marks. Complainant claims Respondents do business under the name “Lost Pizza Co,” pointing to the site to which the disputed domain name resolves and the fact that one of Respondents is listed as the registrant of the disputed domain name. The evidence on record fails to demonstrate the existence of any company bearing the name “Lost Dog Pizza Company.” The evidence establishes that Respondents do operate as “Lost Pizza Co.” That name may provide them the right to use the words “lost pizza,” in domain names. It does not provide them any right to use “lost dog” in a domain name. The Panel concludes Respondents have no rights or legitimate interests under paragraph 4(c)(ii) of the Policy.

Regarding the requirements of paragraph 4(c)(iii) of the Policy, Complainant demonstrates Respondents use the disputed domain name to advertise their for-profit business. See Complainant’s Annex III. Respondents do not proffer evidence they are using the disputed domain name for non-profit purposes. As such, the Panel finds Respondents are not using the disputed domain name for legitimate noncommercial purposes under paragraph 4(c)(iii) of the Policy.

Many panels have held that a domain name used to compete with a complainant’s business fails as both bona fide use, as well as fair use. See Getty Images (US), Inc. and its subsidiary Istockphoto LP v. Above.com Domain Privacy, NAF Claim No. 1489476; H-D Michigan Inc. v. Buell, NAF Claim No. 1106640; Expedia, Inc. v. Compaid, NAF Claim No. 0520654. Since the Panel previously found that Respondents are using their site to compete with Complainant, the Panel concludes Respondents are not making legitimate fair use of the disputed domain name under paragraph 4(c)(iii) of the Policy.

For the foregoing reasons, the Panel finds Respondents do not have rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Whether a domain name is registered and used in bad faith may be determined by evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

As an initial matter, the Panel considers the fact that Respondents registered the disputed domain name before Complainant registered one of its character trademarks. This sequence of events can prevent a finding of bad faith when there is no evidence the “[r]espondent knew or should have known that the [c]omplainant was intending to use or register any potential mark.” Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM, WIPO Case No. D2008-0641. In the case at bar, the requisite circumstances are not present. Complainant had previously registered before the registration of the disputed domain name two character service marks identical to the trademark, putting Respondent on notice that Complainant could take additional steps to protect the mark.

Regarding the requirements of paragraph 4(b)(i) of the Policy, Complainant proffers evidence that Respondents’ attorney offered to transfer the disputed domain name for a fee. See Complainant’s Annex IX. On July 22, 2013, Respondents’ attorney wrote to Complainant’s attorney, “Cutting to the chase, how much money is your client willing to pay for the assignment of the domain? A WIPO action will cost them at least $5,000. So, I assume that it’s more than that. So that you know, I don’t have any authority to accept any offer, but this information will be helpful when discussing the matter with my client.” The email was apparently in response to Complainant’s demand that Respondents transfer the disputed domain name.

Respondents argue the email was part of a settlement negotiation. However, WIPO Overview 2.0 paragraph 3.6 states: “Evidence of offers to sell the domain name are generally admissible under the UDRP, and is often used to show bad faith … and panels are competent to decide whether settlement discussions represent a good faith effort to compromise or a bad faith effort to extort.” See also CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243 (finding that Rule 408 of the Federal Rules of Evidence barring admission of settlement documents is inapplicable under the Policy because admitting the correspondence does not automatically prove liability, but is necessary to discuss bad faith). The language of the email, while ambiguous, could be read as an effort to extort more than it does an intent to negotiate. Accordingly, the Panel accepts Complainant’s Annex IX as admissible.

Policy paragraph 4(b)(i) specifically cites evidence of bad faith flowing from offers of “selling … domain name registration … for valuable consideration in excess of [a respondent’s] documented out-of-pocket costs related to the domain name … .” While the record does not contain evidence of Respondents’ out-of-pocket costs to purchase the disputed domain name, prices quoted in Complainant’s Annex 1 suggest the similar domain names ran under USD 12. The Panel finds Respondents’ demand for “more than” USD 5,000 to transfer the domain evidences bad faith in light of this circumstantial evidence.

Additionally, previous panels have found bad faith based on an offer price without direct proof of out-of-pocket expenses. See Lockheed Martin Corporation v. Grassroots fitness project, NAF Claim No. 1504539 (“Respondent’s offer to sell the Disputed Domain Name to Complainant for $5,000, without explanation, would appear to constitute bad faith”); Save On Energy, LLC v. Joseph Crono, NAF Claim No. 1496896 (an offer to sell for USD 3,000 “clearly exceed[ed] Respondent’s out of pocket costs to register the disputed domain name”); The Emily Program, P.C., The Emily Program Foundation v. Dahlia Colangelo, NAF Claim No. 1500084 (“Respondent offered to sell the disputed domain name for $2,500. The Panel infers that this offer price is in excess of Respondent’s out-of-pocket costs in registering the domain name”); G&N Works, Inc. (Owners George Gordon, Carolyn Garrido) v. Nate Keyser Claim Number, NAF Claim No. 1506135 (“Respondent offered to sell the domain name to Complainant for $10,000.00. The Panel concludes that Respondent’s registration and use of the domain name for purposes of reselling the domain name to the mark-holder at a premium fee is an example of bad faith” even though no evidence suggested the respondents’ out-of-pocket costs”).

Respondents’ asking price is within a price range previously found to be unreasonable by the panels cited above. In suggesting the USD 5,000 figure, Respondents’ attorney cited what it claimed a UDRP dispute would cost, but that is not the correct barometer to use when negotiating a transfer in good faith. The Panel finds Respondents’ USD 5,000 transfer offer constitutes bad faith use of the disputed domain name under paragraph 4(b)(i) of the Policy. However, since the correspondence occurred years after Respondents registered the disputed domain name, the Panel concludes the evidence on record is insufficient to prove bad faith registration under paragraph 4(b)(i) of the Policy.⁴

Regarding the requirements of paragraph 4(b)(ii) of the Policy, Complainant does not offer evidence that Respondents have engaged in a pattern of domain name registrations. The Panel therefore finds no evidence proving bad faith use or registration under paragraph 4(b)(ii) of the Policy.

Regarding the requirements of paragraphs 4(b)(iii) and (iv) of the Policy, Respondents registered the disputed domain name to the “Lost Dog Pizza Company.” See Complainant’s Annex I. There is no evidence any such entity exists. Respondents use the disputed domain name to resolve to a site for “Lost Pizza Co.,” the company Respondents actually own and operate. See Complainants’ Annexes II, III and IV, respectively. Respondents’ registration of the disputed domain name to a presumably fake organization provides evidence in support of bad faith. See Hunton & Williams v. American Distribution Systems, Inc. et al., WIPO Case No. D2000-0501 (finding registration under false trade names evidences bad faith).

Further, “when a domain name is so obviously connected with a Complainant’s mark then it suggests opportunistic bad faith.” Iconix Brand Group, Inc. v. Staple Design c/o Jeff Ng, NAF Claim No. 1446843 (citing Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221). The Panel already concluded that Complainant’s rights vest most strongly in the “lost dog” term of its marks. Respondents show no right to the term. They link the disputed domain name to their own site, which does not use the word “dog,” suggesting opportunistic bad faith under paragraph 4(b)(iii) of the Policy for incorporating the word in the disputed domain name.

Respondents link the disputed domain name to a site advertising goods and services that compete with those offered by Complainant. This, too, demonstrates bad faith registration and use under paragraph 4(b)(iii) of the Policy. See Disney Enters., Inc. v. Nicolas Noel, NAF Claim No. 198805 (finding it proper to infer registration and use of a site for the bad faith purpose of harming a complainant’s business where the domain name linked to the site of one of the complainant’s competitors).

This evidence also suggests that Respondents registered and used the disputed domain name to confuse consumers as to their affiliation with Complainant in order to make commercial gain, demonstrating bad faith under paragraph 4(b)(iv) of the Policy. See Jardine Motors Group Holdings Limited v. Zung Fu Kuen, WIPO Case No. D2004-0168 (finding a domain name incorporating the complainant’s mark, but which redirected to the URL of a competitor evidenced bad faith under paragraph 4(b)(iv) of the Policy); State Farm Mutual Automobile Insurance Company v. Douglas LaFaive, NAF Claim No. 95407 (“[d]iverting Internet users, for commercial gain, to another web site by creating a likelihood of confusion with the [c]omplainant’s mark is evidence of registration and use in bad faith”); Luck's Music Library v. Stellar Artist Management., NAF Claim No. 95650 (finding bad faith where the respondent used a domain to advertise music services similar to those offered by the complainant). Respondents’ disputed domain name creates a likelihood of confusion, in part because it incorporates Complainants’ mark, and in part because the goods and services advertised with it are similar to those offered by Complainant. Therefore, Respondents evidence bad faith under paragraph 4(b)(iv) of the Policy.

For the foregoing reasons, the Panel finds Respondent registered and used the disputed domain name 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 <lostdogpizza.com> be transferred to Complainant.

Michael A. Albert
Sole Panelist
Date: January 15, 2014

¹ The following geographical limitations apply to the mark: the mark is exclusive except in Maine, New Hampshire, Vermont, Massachusetts, Rhode Island, Connecticut, New York, New Jersey, Pennsylvania, Florida and Illinois, wherein it is registered concurrently with Reg. Nos. 2963563, 2963564 and 2384660.

² Both marks are exclusive except in the states listed in footnote no. 1, wherein they are registered concurrently with Reg. No. 2384660 and Application Serial Nos. 75644722, 75524391and 75524388.

³ Complainant’s inclusion of the word “pizza” in its design mark does not afford Complainant rights in that word. Complainants only have rights in design mark words that are “clearly the dominant component[s] of th[e] mark.” Civic Non-Partisan Association a/k/a the Vancouver Civic Non-Partisan Association and the "NPA" v. Ken Charko, NAF Claim No. 1489087. Complainant’s design mark registration disclaims the term “gourmet pizza deli,” effectively disclaiming the word “pizza” in isolation, as well. The design mark additionally contains the words “lost dog,” which the Panel finds are the definitive terms.

⁴ Notwithstanding the holding in Big 5 Corp. v. EyeAim.com/Roy Fang, NAF Claim No. 1513704, cited by Complainant, the general panel consensus holds, and this Panel agrees, that renewals - even where the renewals evidence bad faith - do not count as registrations under the Policy. See PAA Laboratories GmbH v. Printing Arts America, WIPO Case No. D2004-0338 (where the panel “reluctantly” found that extensive precedent established bad faith renewals did not amount to bad faith registrations). In any event, the Panel finds evidence of bad faith registration on other grounds.