FoodScience Corporation v. Netpets, Inc.

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

FoodScience

Corporation v. Netpets, Inc.

Case No.

D2001-0479

1. The Parties

1.1 The Complainant

is FoodScience Corporation, a Vermont corporation with its principal place

of business at 20 New England Drive, Essex Junction, Vermont, USA.

1.2 The Respondent

is Netpets, Inc., a corporation having a place of business at 2053 Sandalwood

Court, Palo Alto, California, USA.

2. The Domain Name and

Registrar

2.1 The disputed

domain names are <glyco-flex.com> and <glycoflex.com>.

2.2 The registrar

of the disputed domain names is Network Solutions, Inc., a Verisign company

having a corporate administration office located at 505 Huntmar Park Drive,

Herndon, Virginia, USA.

3. Procedural History

3.1 Complainant

initiated the proceeding by filing a complaint, received by the WIPO Arbitration

and Mediation Center ("WIPO") on April 2, 2001.

3.2 On April 12,

2001, all formal requirements for the establishment of the complaint were

checked by WIPO and found to be in compliance with the ICANN 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 Domain Name Dispute Resolution

Policy (the "Supplemental Rules"). The Panel accepts the WIPO

checklist as evidence of proper compliance with the Policy, Rules, and

Supplemental Rules.

3.3 On April 12,

2001, WIPO transmitted Notification of the Complaint and Commencement

of the Administrative Proceedings to Respondent.

3.4 On May 2,

2001, WIPO transmitted notification of Respondent's default to the Respondent.

3.5 On May 9,

2001, WIPO invited the undersigned to serve as panelist in this administrative

proceeding, subject to receipt of an executed Statement of Acceptance

and Declaration of Impartiality and Independence ("Statement and

Declaration"). On May 10, 2001, the undersigned transmitted by facsimile

the executed Statement and Declaration to WIPO.

3.6 On May 11,

2001, Complainant and Respondent were notified by WIPO of the appointment

of the undersigned sole panelist as the Administrative Panel (the "Panel")

in this matter. WIPO notified the Panel that, absent exceptional circumstances

it would be required to forward its decision to WIPO by May 25, 2001.

The Panel has not received

any further requests from Complainant or Respondent regarding further submissions,

waivers or extensions of deadlines, and the Panel has not found it necessary

to request any further information from the parties. The proceedings have

been conducted in English.

4. Factual Background

4.1 Complainant

FoodScience Corporation owns the rights to the registered trademark GLYCO-FLEX

for "veterinary food supplements for dogs," which was registered

August, 26, 1997 as U.S. Reg. No. 2,091,217, with a claimed first use

as early as 1986.

4.2 The Respondent

registered the domain names <glyco-flex.com> and <glycoflex.com>

on May 26, 2000. The domain names are not active.

5. Parties’ Contentions

A. Complaint

Complainant states:

"Complainant

is in the business of, among other things, selling vitamins and nutritional

supplements for animals. Complainant has been using GLYCO-FLEX for

approximately fifteen (15) years to identify veterinary food supplements

for dogs. GLYCO-FLEX has no meaning or significance other than as

a trademark identifying Complainant’s products and distinguishing

them from those of its competitors. As a consequence of product quality

and consumer acceptance, GLYCO-FLEX has acquired substantial goodwill

belonging exclusively to Complainant."

"A search of

the term "glycoflex" on any world wide web search engine

will reveal multiple "hits" containing information regarding

Complainant’s products, which are marketed and sold by Complainant’s

Vetri-Science Laboratories division. Complainant has sales of approximately

Thirty Million Dollars ($30,000,000) for products bearing the GLYCO-FLEX

mark since 1991."

"Complainant

owns a U.S. federal registration for GLYCO-FLEX, a trademark for veterinary

food supplements for dogs. The federal registration number is 2,091,217.

The mark is registered on the Principal Register."

"Complainant

first used GLYCO-FLEX on its products in 1986. Complainant obtained

its federal registration on August 26, 1997. Respondent applied for

and obtained registrations for the domain names at issue on May 26,

2000 – approximately fourteen (14) years after Complainant began using

GLYCO-FLEX and approximately three (3) years after Complainant obtained

its U.S. federal trademark registration."

"Respondent’s

name is "Netpets, Inc.," which leads one to assume that

Respondent is familiar with the veterinary pet industry. Accordingly,

Respondent obtained the domain names at a time when it likely knew

of the fame that GLYCO-FLEX possessed and likely knew that Complainant

owned a U.S. trademark registration for GLYCO-FLEX."

"Complainant

first contacted Respondent by sending a letter to Respondent on October

25, 2000. A copy of the letter, and the confirmation of receipt executed

by Respondent, is attached as Annex 4. The letter asked Respondent

to contact counsel for Complainant to discuss the transfer of the

domain names. At that time, Complainant had no reason to believe that

Respondent was acting in "bad faith," as such term is defined

in the Policy or the Anti-Cybersquatting Act, 15 U.S.C. Section 1125(d).

Respondent did not reply to the October 25, 2000 letter."

"On December

18, 2000, a second letter was sent to Respondent. This letter asked

the Respondent to contact counsel for the Complainant as soon as possible

to discuss the domain names."

"On December

21, 2000, Respondent replied to the December 18, 2000 letter.

A copy of the reply is attached as Annex 6. The reply indicates that

Respondent was willing to transfer the domain names to Complainant,

but at a cost per domain name of $4,100.00 each."

"On January 22,

2001, Complaint sent a third letter to Respondent. This letter advised

that Complaint was willing to cover Respondent’s legitimate out-of-pocket

costs in obtaining the domain names, but would not permit Respondent

to profit from the transfers."

"The January

22, 2001 letter asked the Respondent to reply to Complainant by January

26, 2001. Respondent did not reply to the letter."

"On February

5, 2001, Complainant sent a fourth letter to Respondent. This letter

asked the Respondent to immediately contact counsel for the Complainant

if Respondent had any interest in avoiding litigation. A copy of this

letter, and its facsimile confirmation report, is attached as Annex

8. Respondent did not reply to the February 5, 2001 letter."

"To date, and

to Complainant’s knowledge, Respondent has not used the domain names.

At a minimum, there is no web site that can be accessed through either

domain name."

"The only actual

differences between the domain names and the trademark are the "www",

".com" and a hyphen (lack thereof) in one of the domain

names. These are trivial differences. Accordingly, both domain names

should be considered identical to GLYCO-FLEX for purposes of this

proceeding."

"The dominant

portion of each domain name is "glycoflex," which is identical

to the federally registered trademark GLYCO-FLEX. Accordingly, both

domain names and the trademark are confusingly similar in terms of

sight and sound."

"Complainant

owns a federal registration for GLYCO-FLEX to identify veterinary

food supplements for dogs. Moreover, Complainant has used that mark

to identify those goods for over fifteen (15) years."

"Respondent has

no license rights under Complainant’s common law rights to GLYCO-FLEX,

or under Complainant’s federal trademark registration for GLYCO-FLEX.

In short, Complainant has never granted any permission or consent

to Respondent to use GLYCO-FLEX in any way, shape or form."

"Further, there

is no evidence showing that Respondent has ever used the domain names.

And, a search on the United States Patent and Trademark Office Database

reveals no records of any pending application or registration of Respondent

for any trademark or service mark similar or akin to GLYCO-FLEX."

"Complainant

submits that Respondent acquired the domain names primarily for the

purpose of selling, renting, or otherwise transferring them to Complainant,

for valuable consideration in excess of its out-of-pocket costs directly

related to the domain names."

"Complainant

estimates that Respondent’s actual out-of-pocket costs in obtaining

the domain names was less than $50.00 per domain name (the current

fee for a .com domain name is only $35 from Network Solutions, see

Annex 9: the fee may have been nominally higher when the domain names

were first registered in May, 2000). Yet, Respondent demanded more

than $4,000 for each domain name from Complainant. It seems quite

clear that Respondent intended to make a significant profit from selling

the domain names to Complainant. For this reason, Complainant submits

that Respondent has acted in bad faith."

"In the alternative,

Complainant submits that Respondent registered the domains names primarily

for the purposes of disrupting Complainant’s business. Respondent’s

name is "Netpets, Inc.," making it a reasonable assumption

that Respondent either already does or intends to compete with Complainant’s

business. In light of Respondent’s persistent refusals to timely respond

to Complainant’s letters, and Respondent’s unwillingness to sell the

domain names for its actual out-of-pocket costs, it is a reasonable

conclusion that Respondent simply desires to prevent Complainant from

being able to use the domain names in furtherance of its business."

"Further, there is

no evidence:

(1) of Respondent’s

use of, or demonstrable preparations to use, the domain names in

connection with any bona fide offering of goods or services;

(2) that

Respondent has been commonly known by either of the domain names;

or

(3) that

Respondent is making any legitimate non-commercial or fair use of

the domain names."

B. Response

Respondent did not

file a Response to the Complaint.

6. Discussion and

Findings

6.1 The Uniform

Domain Name Dispute Resolution Policy (the "Policy"), adopted

by the Internet Corporation for Assigned Names and Numbers (ICANN) on

August 26, 1999, (with implementing documents approved on October

24, 1999), is addressed to resolving disputes concerning allegations of

abusive domain name registration. The Panel will confine itself to making

determinations necessary to resolve this administrative proceeding.

6.2 It is essential

to dispute resolution proceedings that fundamental due process requirements

be met. Such requirements include that a Respondent have notice of proceedings

that may substantially affect its rights. The Policy, and the Rules for

Uniform Domain Name Dispute Resolution Policy (the "Rules"),

establish procedures intended to assure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity

to respond (see, e.g., paragraph 2(a) of the Rules).

6.3 WIPO forwarded

Notification of the Complaint to the Respondent via post/courier and email

in accordance with the contact details found in the appropriate WHOIS

database. WIPO also forwarded Notification of Default to the Respondent

via email.

6.4 Based on the

methods employed to provide the Respondent with notice of the Complaint

and default the Panel is satisfied that WIPO took all steps reasonably

necessary to notify the Respondent of the filing of the Complaint and

initiation of these proceedings. The Panel also finds that the failure

of the Respondent to furnish a reply is not due to any omission by WIPO.

6.5 Paragraph

4(a) of the Policy sets forth three elements that must be established

by a Complainant to merit a finding that a Respondent has engaged in abusive

domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s

domain name is identical or confusingly similar to a trademark or

service mark in which the complainant has rights; and

(ii) Respondent

has no rights or legitimate interests in respect of the domain name;

and

(iii) Respondent’s

domain name has been registered and is being used in bad faith.

In the administrative

proceeding, the Complainant must prove that each of these three elements

are present.

6.6 As the Respondent has

failed to submit a Response to the Complaint, the Panel may accept as true all

of the allegations of the Complaint. Talk

City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, February 29,

2000.

6.7 Based upon

the registered trademark for GLYCO-FLEX and the continuous use of the

mark, the Complainant clearly has rights in the mark.

6.8 Complainant

asserts that the domain names <glyco-flex.com> and <glycoflex.com>

are identical to the trademark GLYCO-FLEX.

6.9 The Panel

agrees with the Complainant that the only actual differences between the

domain names and the trademark are the "www", ".com" and the lack of a

hyphen, which are trivial.

6.10 The Panel

finds the <glyco-flex.com> and <glycoflex.com> domain names

are identical to the registered trademark GLYCO-FLEX, and that the Complainant

has established it has rights in the mark GLYCO-FLEX, pursuant to paragraph

4(a)(i) of the Policy.

6.11 Paragraph

4(c) of the Policy lists several circumstances, without limitation, that

if found by the Panel shall demonstrate the Respondent's rights or legitimate

interests to the domain name for purposes of paragraph 4(a)(ii). In particular,

paragraph 4(c) states:

(i) before

any notice to you [Respondent] 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; or

(iii) you

are 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 or service mark at issue.

6.12 There is

no evidence in the record that would indicate that Respondent has any

rights or legitimate interests in respect of the domain names <glyco-flex.com>

and <glycoflex.com>.

6.13 The Panel

finds that the Respondent has no rights or legitimate interests in respect

of the domain names <glyco-flex.com> and <glycoflex.com>,

pursuant to paragraph 4(a)(ii) of the Policy.

6.14 Paragraph

4(b) of the Policy lists several factors, without limitation, that if

found by the Panel to be present, shall be evidence of the registration

and use of a domain name in bad faith. In particular, paragraph 4(b)(i)

states:

(i) circumstances

indicating that you have registered or you have 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 your documented out-of-pocket

costs directly related to the domain name.

6.15 In responding

to counsel for the Complainant, the Respondent sent a letter dated December

21, 2000, which stated only the following:

"We are willing

to transfer the domains in question to you if the associated charges

for registration and handling are reimbursed to us. We have estimated

these to be $4100 per domain. If this is acceptable please forward

$8200 and all documents for domain transfer to us. We will then complete

these documents and return them to you."

6.16 In the absence

of contrary evidence, Respondent’s offer to sell the domain names at issue

to the Complainant for $4,100.00 each is clearly evidence of registration

and use of the domain names in bad faith.

6.17 The Panel

finds that the Respondent's offer to sell the domain names for $4,100.00

each is also clearly in excess of any reasonable out-of-pocket costs that

could have been associated with each domain name.

6.18 The Panel

finds the Complainant has established that the Respondent registered and

used the domain names <glyco-flex.com> and <glycoflex.com>

in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.

7. Decision

As the Complainant,

FoodScience Corporation, has established that the Respondent, Netpets, Inc.,

has engaged in abusive registration of the domain names <glyco-flex.com>

and <glycoflex.com> within the meaning of paragraph 4(a) of the Policy,

the Panel orders that the domain names <glyco-flex.com> and <glycoflex.com>

be transferred to the Complainant.

R. Eric

Gaum

Sole Panelist

Dated: May

25, 2001