Champion Petfoods Holding Inc. v Name Redacted

WIPO Case No. D2024-2233

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Champion Petfoods Holding Inc. v. Name Redacted

Case No. D2024-2233

1. The Parties

The Complainant is Champion Petfoods Holding Inc., Canada, represented by 101domain.com, United

States of America (“United States”).

The Respondent is Name Redacted1, United States

2. The Domain Name and Registrar

The disputed domain name <championpetsfoods.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2024. On connection with the disputed domain name. On June 4, 2024, 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 (Information not available on WHOIS, Redacted for Privacy, Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 5, 2024, 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 June 6, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for

11 The Respondent appears to have used the name of a third-party organization when registering the Disputed Domain Name. In light

of the potential identity theft, the Panel has redacted the Respondent’s organization name from this decision. However, the Panel has
attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the Disputed Domain Name, which includes the
name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this
proceeding and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See
Banco Bradesco S.A. v. FAST 12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.

page 2

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 June 17, 2024. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Parties with the Commencement of Panel Appointment Process on July 9, 2024.

On June 19, 2024, the Center received a communication from a third party corresponding to the company identified by the concerned Registrar as registrant of the disputed domain name, which indicated that it did not own the disputed domain name, that it was unaware of any person named as the registrant name

indicated in the WhoIs of the disputed domain name, and that its company information had been used to

register the disputed domain name without authorization.

The Center appointed Luca Barbero as the sole panelist in this matter on July 18, 2024. 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 Canadian pet food manufacturer founded in 1985 and specialized in the distribution of petfood products.

The Complainant, directly or through its subsidiary Champion Petfoods USA Inc., is the owner of trademark registrations for CHAMPION PETFOODS, including the following, as per trademark registration certificates submitted in annex 3 to the Complaint:

- Canada trademark registration No. TMA795653 for CHAMPION PETFOODS (word mark), filed on

May 7, 2010, and registered on April 14, 2011, in international class 31;

- United States trademark registration No. 4086296 for CHAMPION PETFOODS (word mark), filed on

August 11, 2010, and registered on January 17, 2012, in international class 31;

- European Union trademark registration No. 014017421 for CHAMPION PETFOODS (figurative mark), filed

on April 30, 2015, and registered on August 18, 2015, in class 31.

The Complainant promotes the CHAMPION PETFOODS brand and products online via the website
“ based on the domain name <championpetfoods.com>, which was registered
on February 25, 2000.

The disputed domain name <championpetsfoods.com> was registered on August 9, 2023, and is currently redirected to a registrar parking page indicating that “Whois verification pending”.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

page 3

Notably, the Complainant contends that the disputed domain name <championpetsfoods.com> is confusingly similar to the trademark CHAMPION PETFOODS in which the Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the letter “s” at the end of the word “pet” and the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant underlines that it has been utilizing the CHAMPION PETFOODS trademark consistently and consecutively for over four decades, creating a global name in the petfood industry and submits that the vast majority of the Complainant’s premium petfood products prominently display the CHAMPION PETFOODS trademark, resulting in instant brand recognition and visibility.

With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant
states that the Respondent has in no way been licensed or allowed by the Complainant to use the
CHAMPION PETFOODS trademark and is not commonly known by the disputed domain name.

The Complainant further submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, since it registered the disputed domain name primarily for the purposes of disrupting the Complainant’s business, trading on the Complainant’s goodwill and wrongfully profit from the connection to the Complainant’s trademark, whilst also impeding the Complainant from reflecting its trademark in a corresponding domain name.

The Complainant also states that the Respondent has failed to provide evidence of any bona fide use of, or demonstrable preparations to use, the disputed domain name since the disputed domain name is solely being used to confuse potential customers and garner internet traffic based on the Complainant’s trademark and company recognition.

With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent
purposely registered the disputed domain name to confuse the Complainant’s customers, by associating the
CHAMPION PETFOOD brand with an illegitimate and currently unavailable website.

The Complainant contends that the Respondent also purposely registered the disputed domain name to prevent the Complainant from reflecting its trademark in a corresponding domain name and has done so by adding an “s” to the Complainant’s mark to deceive the Complainant’s customers into believing the disputed domain name may have been somewhat endorsed or authorized by the Complainant and that there may have been a relationship between the Complainant and the Respondent’s infringing website.

The Complainant states that in doing so, the Respondent is deliberately disrupting the Complainant’s business by wrongfully profiting from the Complainant’s online reputation and that, given the lack of a legitimate purpose, the Respondent was clearly acting in bad faith at the time of registering the disputed

domain name.

Lastly, the Complainant indicates that the Respondent also provided inaccurate or incomplete WhoIs information and that further research into the Registrant’s identity, revealed that the Respondent was apparently reported for phishing by a security vendor from a reputable source.

B. Respondent

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

However, as indicated in the Procedural History, a third-party sent a communication to the Center, after notification of the Complaint, indicating that its company name and address had been fraudulently used to register the disputed domain name and that it had no involvement in the registration and use of the disputed domain name.

page 4

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the

following:

(i)        that 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;

(ii)       that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. Indeed, the Complainant has provided evidence of ownership of valid trademark registrations for CHAMPION PETFOODS, registered in the name of the Complainant or its subsidiary company Champion Petfoods USA Inc.

The entirety of the mark is reproduced within the disputed domain name, with the mere addition of a single letter “s”. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, sections 1.7 and 1.9.

Moreover, the TLD in a domain name, such as “.com” here, is viewed as a standard registration requirement and as such can be disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1.

Therefore, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence

page 5

demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the
Policy or otherwise.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark.

Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.

As highlighted above, the disputed domain name is pointed to a parking page of the concerned Registrar displaying the wording “WhoIs verification pending”. The Panel finds that the Respondent’s use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed

domain name without intention to misleadingly divert the consumers or to tarnish the Complainant’s

trademark.

Moreover, the Panel finds that the disputed domain name, being almost identical to Complainant’s carries a risk of implied affiliation with the Complainant. WIPO Overview 3.0, section 2.5.1.

Therefore, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

In the present case, the Panel notes that in light of the prior registration and use of the Complainant’s trademark CHAMPION PETFOODS in connection with the Complainant’s pet food products, considering the widely known character of the trademark and the substantial identity of the disputed domain name with the Complainant’s trademark and its domain name <championpetfoods.com>, from which it differs only by the addition of a single letter, the Respondent very likely registered the disputed domain name having the Complainant’s trademark in mind.

The disputed domain name is redirected to a registrar parking page indicating that WhoIs verification is pending. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the reputation of the Complainant’s trademark, the composition of the disputed domain name and the circumstance that the Respondent appears to have provided false contact details in the WhoIs records using third-party company information to register the disputed domain name, and finds that, in the circumstances of this case, the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

Therefore, the Panel finds that the Complainant has also established the third element of the Policy.

page 6

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 <championpetsfoods.com> be transferred to the Complainant.

/Luca Barbero/
Luca Barbero
Sole Panelist
Date: August 1, 2024