ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
Under the ICANN Uniform Domain Name Dispute Resolution Policy
1. Parties and Contested Domain Name
Complainant, Good Dog! Inc. (“Complainant” or “GDI”) brings this action against Respondent, Envision Group (a.k.a. Mr. Paul Ashcraft) (“Respondent” or “Envision”), pursuant to ICANN's Uniform Dispute Resolution Policy (the "Policy") seeking transfer of the registration of the domain name gooddog.com (the "Domain Name"). The Domain Name was registered through the domain name registrar Network Solutions, Inc. (the "Registrar").
2. Procedural history
The electronic version of the Complaint form was filed online on May 24, 2001. The hardcopy of the Complaint Form and annexes were received by eResolution’s Clerk (the “Clerk”) on May 29, 200.
Upon receiving all the required information, the Clerk made the inquiries necessary to confirm that (1) the Registrar is Network Solutions, Inc.; (2) the Whois database contains all the required contact information for the parties; (3) the contested Domain Name resolves to an inactive Web page; and, (4) the Complaint is administratively compliant.
The Clerk fulfilled all its responsibilities under Paragraph 2(a) of the Policy by forwarding the Complaint to Respondent, notifying Complainant, the concerned Registrar and ICANN regarding this action on May 29, 2001.This date is the official commencement date of the administrative proceeding.
The Clerk sent the Complaint, official notification and all the annexes to Respondent via registered mail with proof of service. According to the Canada Post tracking system, the documents were successfully delivered by mail. The Clerk also sent the foregoing documents to the Respondent via e-mail. Only the emails to Respondent’s administrative contact were returned as “undeliverable”.
Respondent did not submit a Response to the Complaint, either electronically through the eResolution Internet site or by mail by June 17, 2001, the final date on which to send in his Response. On June 22, 2001, a person claiming to represent the Respondent requested an extension to file the Response. The Clerk’s Office informed this person that his request would be submitted to the panel for consideration once appointed.
On June 28, 2001, the Clerk contacted the undersigned and requested that he act as the sole panelist in this case. The same day, the undersigned accepted the request and filed the necessary Declaration of Independence and Impartiality. On June 29, 2001, the parties were notified of the appointment and informed that a decision was to be, save exceptional circumstances, handed down on July 12, 2001.
On July 9, 2001, the Clerk forwarded to the undersigned a letter from Respondent’s “Representative” stating the reasons for filing its late-filed Response together with the Response.
3. Factual Backgrounds
Complainant alleges that it is the owner of the U.S. Registered Trademark GOOD DOG! for International Class 016, US Class 038 Goods & Services: newspapers, magazines and books dealing with dogs. Complainant alleges that its first use of the trademark was May 10, 1988 and that its first use in commerce was May 14, 1988. Complaint alleges that its trademark was registered on December 22, 1992 and that its Registration Number on Principal Register is 1741244.
Complainant also claims that it applied for a U.S. Registered Trademark for GOOD DOG for Computer services, namely information and advisory services provided on-line by means of a global computer network in the field of pets, pet care, pet products, and pet food. Complainant further asserts that it intends to use the mark GOOD DOG on dog food and dog treats, as well as other dog care products, claiming that a GOOD DOG dog treat and a nutritional supplement will be marketed beginning June 1, 2001.
Complainant states that its printed GOOD DOG
publications have been distributed throughout the U.S., Canada, Europe, Asia,
and South America, and also alleges that the company is well-known for providing
independent consumer information about dogs and dog products.
Complainant asserts that it conducts business exclusively under the GOOD DOG trademark and makes substantial investments each year in advertising in order to promote the GOOD DOG trademark throughout the world. According to Complainant, such advertising includes advertising on various websites, banner ads, direct mail to new prospects, stuffers with product shipments, card deck mailings, sampling at dog shows and other promotional efforts.
Respondent does not dispute Complainant’s GOOD DOG trademark rights or its use of the mark as alleged in the Complaint. Although he produced no evidence to support his suspicion, Respondent questions whether the GOOD DOG mark is, in fact, familiar to consumers.Respondent alleges that he registered the gooddog.com domain name in 1996 to be used as the primary URL for his planned online Internet marketing and advertising venture, Good Dog Marketing. Respondent states that he is a well-respected professional marketing executive with over 20 years of international experience in both client side and agency side marketing executions. Respondent asserts that the corporate responsibilities inherent in his current employment, as well as a recent downturn in the overall health of the “dotcom” sector, have forced a postponement in the launch of Good Dog Marketing. Respondent asserts, however, that he hopes to launch the business in the future and plans to seek trademark protection for Good Dog Marketing.
4. Parties' Contentions
A. Identical or confusingly similar
Complainant contends that the domain name "gooddog.com" is confusingly similar to the trademark GOOD DOG and that this is not affected by the addition of the suffix “.com.” Accordingly, Complainant contends that there is a high risk of confusion, as the consumer may think that this domain directly refers to the Complainant’s products.
In his Response, Respondent “acknowledges” “on a superficial level,” the “similarity” between his domain name, gooddog.com, and Complainant’s Registered Trademark, GOOD DOG. Nevertheless, Respondent contends that there is absolutely no similarity or risk of confusion between his industry (marketing) and Complainant’s industry (pet care). Accordingly, he contends that in the future, Good Dog Marketing’s use of the mark GOOD DOG will not constitute and infringement on Complainant’s trademark.
Complainant further contends that Respondent has no rights or legitimate interests in respect of the contested domain name because the disputed domain name is not the corporate name of Respondent and because Respondent has not used the domain name in a noncommercial manner.
Respondent contends that GOOD DOG is part of his planned business name and that only economic circumstances beyond his control have forced the postponement of the launch of his legitimate planned business venture. He further contends that he expects to launch his business in the future.
C. Bad faith
Finally, Complainant contends that the disputed domain name has been registered in bad faith arguing that Respondent should have known of Complainant’s long standing use of the GOOD DOG trademark. Additionally, Claimant contends that Respondent has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, who is the owner of the trademark. In support of this allegation, Complainant alleges that when it contacted Respondent regarding a sale, Respondent replied that “he'd be willing to sell.”Respondent contends that he did not seek Complainant’s permission to use the GOOD DOG trademark as part of his domain name because he was unaware of its existence. Furthermore, Respondent alleges that it is not in the business of selling domain names and that the offer to purchase the gooddog.com site was originated by Complainant, which presented Respondent with a “lowball” offer in order to create a record for this proceeding.
5. Discussions and Findings
A. Policy Standards
1. Elements Required to Transfer Domain Name
Section 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove each of the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has 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.
2. Evidence of Legitimate Interest in Domain Name
Section 4(c) of the Policy provides that a respondent can show a legitimate interest in a domain name, thereby rebutting an element of the Complainant’s case, by demonstrating one of the following circumstances:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue.
3. Evidence of Bad Faith Registration of a Domain Name
Section 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
This list of bad faith factors is not exclusive. A Panel may determine that other circumstances not set forth in subsections (i)-(iv), above, demonstrate a respondent’s bad faith.
4. Failure to Timely Respond to Complaint
The ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) Section 5(a) provide that “within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider.” Section 5(e) of the Rules provides: "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."
1.Identical or confusingly similar
Complainant alleges and Respondent does not dispute that the second level of the Domain Name at issue here is identical to Complainant’s registered trademark and corporate name. Moreover, Respondent concedes that his domain name is “superficially” similar to Complainant’s mark. Finally, Complainant alleges and Respondent does not dispute that Complainant uses the GOOD DOG mark in commerce both on the Internet and generally. Accordingly, the Panel finds that Complainant has demonstrated that the Domain Name is identical or confusingly similar to the trademark in which it has rights.
2. Respondent's Interest in Domain Name
Complainant alleges and Respondent does not dispute that Respondent currently does not have an active Internet site associated with the Domain Name or that Respondent has ever engaged in such activity. Notwithstanding Respondent’s claim that he has a “very real vision of the future” for his business, there are no particularized factual statements or any evidence in the record to demonstrate that Respondent is using or preparing to use the Domain Name in connection with a bona fide offering of goods or services; or that Respondent has been commonly known by the domain name; or that Respondent is making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. Accordingly, the Panel finds that Complainant has demonstrated that the respondent has no rights or legitimate interests with respect to the Domain Name.
3. Bad Faith
Claimant contends that Respondent registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, who is the owner of the trademark. Complainant alleged and Respondent conceded that Respondent offered to sell the Domain Name to Complainant. Indeed, Respondent characterized the offer of Complainant, the rightful trademark owner of GOOD DOG, to have been a “lowball” offer.
Respondent argues that he did not act in bad faith because he was unaware of Complainant’s trademark rights in the GOOD DOG mark when he registered the Domain Name. But Respondent does not disclose whether he made any effort to determine if the GOOD DOG mark belonged to another person before registering the Domain Name. Additionally, Respondent does not claim that he has ever possessed any valid right to use the GOOD DOG mark. Respondent also argues that his offer to sell the Domain Name should not be considered evidence of his bad faith because Complainant approached him regarding the sale. Complainant’s approach, however, should not be considered remarkable. The mere fact that a trademark owner offers to pay for an infringing domain name rather than pursue time-consuming and costly litigation or arbitration does not in anyway constitute a waiver of that person’s rights to the mark. Finally, Respondent argues that Complainant’s offer to give him another domain name in trade for the Domain Name somehow shows unclean hands on Complainant’s part. But Respondent has not shown that any of the proffered domain names were improperly obtained or maintained by Complainant. Again, the mere fact that Complainant sought to resolve the matter short of judicial intervention does not diminish Complaint’s rights to its trademark. Respondent’s arguments in response to Complainant’s showing are unavailing.
Accordingly, the Panel finds that the Domain Name has been registered and is being used in bad faith.
Respondent’s Response was not timely filed pursuant to Section 5(a) of the Rules. Thus, in the absence of exceptional circumstances, the Panel is required to decide this matter based solely on the allegations set forth in the Complaint.
Here, Respondent did attempt to excuse his untimely Response in a letter to the Panel. Respondent claimed that the mail service copy of the Complaint was mailed to Respondent’s old business address “and that administrative delays were regrettably encountered in forwarding these documents to the proper individuals within the new corporate structure.” Respondent further claimed that at the time these documents were received, Respondent was on a business trip in Seoul, Korea.
Unless additional facts involving Respondent’s business relocation or his business trip were adduced, neither event in itself can be considered “exceptional.” Thus, Respondent’s failure to comply with Section 5(a) of the Rules provides an additional and independent ground for granting Complainant the relief sought in its Complaint.
Based on the foregoing, the Panel orders that the domain name gooddog.com be transferred to the Complainant forthwith.