Hill's Pet Nutrition, Inc. v Rodriguez Timmy

WIPO Case No. D2025-1310

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Hill’s Pet Nutrition, Inc. v. Rodriguez Timmy

Case No. D2025-1310

1. The Parties

Complainant is Hill’s Pet Nutrition, Inc., United States of America (“United States”), represented by Fross

Zelnick Lehrman & Zissu, PC, United States.

Respondent is Rodriguez Timmy, United States.

2. The Domain Name and Registrar

The disputed domain name <hillspharmapets-fr.com> is registered with Gname.com Pte. Ltd. (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2025. On April 1, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 2, 2025, 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 (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to Complainant on April 2, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 2, 2025.

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
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 Respondent of the Complaint,
and the proceedings commenced on April 28, 2025. In accordance with the Rules, paragraph 5, the due
date for Response was April 28, 2025. Respondent did not submit any response. Accordingly, the Center
notified Respondent’s default on May 1, 2025.

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The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on May 8, 2025. 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 Hill’s Pet Nutrition, Inc. makes and sells more than 50 therapeutic pet foods formulated for many lifestages and special needs of healthy pets.

Complainant is the owner, via assignment, of United States Trademark Registration Nos. 955,342; in 1937. The HILL’S trademark is also registered by Complainant in other countries around the world.

1,417,169; and 2,060,554 for the HILL’S trademark. These registrations were issued on March 13, 1973,
Complainant also owns registrations for the domain names <hillspet.com> and <hillspet.fr>.

The disputed domain name, <hillspharmapets-fr.com>, was registered on February 28, 2025. The disputed domain name reverted to a website that has little contact information, merely listing a mailing address, hours of operation, and a “Contact Us” form. The website previously used many of Complainant’s product images to purportedly sell Complainant’s products. Currently, the disputed domain name resolves to an inactive

website.

5. Parties’ Contentions

A. Complainant

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

Notably, Complainant contends that the disputed domain name is confusingly similar to the HILL’S trademark. It points out that the disputed domain name incorporates the HILL’S mark in its entirety and that the fact that the disputed domain name does not contain an apostrophe is irrelevant “since it is impossible to include an apostrophe in a domain name given ICANN limitations”. Complainant further contends that the addition of the descriptive terms “pets” and “pharma” and of the common abbreviation for France, “fr”, in the disputed domain name do not avoid a finding of confusing similarity. According to Complainant, “given the reputation and renown of Complainant’s HILL’S trademarks, particularly in the pet care sector, it is probable that a majority of Internet users who see the Domain Name will immediately recognize Complainant’s Mark and mistakenly assume that the Domain Name is owned, controlled or endorsed by Complainant, particularly given the content of the website currently and formerly associated with the Domain Name”.

Complainant asserts that Respondent cannot demonstrate or establish any legitimate interests in the disputed domain name. It indicates that no relationship exists between the Parties that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name. Complainant further argues that Respondent is not commonly known by the disputed domain name and that Respondent’s websites “unquestionably trade on the fame of the HILL’S mark and as such could not constitute a bona fide use”. Complainant explains that even if the goods sold at Respondent’s website were genuine HILL’S merchandise (and there is no evidence such is the case), such use may not be considered “bona fide” since the disputed website fails to disclose the lack of relationship between the Parties.

With respect to the issue of “bad faith” registration and use, Complainant alleges that Respondent’s adoption and use of the famous HILL’S trademark in the disputed domain name and in connection with the previous

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website “that so obviously traded on the goodwill of Complainant’s HILL’S brand shows both Respondent’s familiarity with Complainant’s HILL’S mark and Respondent’s recognition of the fame of the mark. There is no reason for Respondent to have chosen the Domain Name unless Respondent was seeking to create an association with Complainant. Since Respondent has no connection with Complainant and has never been authorized by Complainant to use or register the Domain Name, the very fact that Respondent has

registered the Domain Name establishes opportunistic bad faith use and registration”.

Complainant further asserts that, given that the disputed domain name is confusingly similar to the famous associated with Complainant, which will result in confusion with Complainant.

Complainant also relies on the fact that the disputed domain name was being used in connection with a website that mimics Complainant’s own site and used Complainant’s own product images to support a determination of bad faith registration and use. “Indeed, Respondent’s activity is in direct violation of Paragraph 4(b)(iv) of the Policy, which prohibits use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site.”

Finally, Complainant notes that Respondent lists different addresses at the website and in WhoIs records. registration and use.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

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
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.

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.

The Panel finds the HILL’S mark is recognizable within the disputed domain name. Accordingly, the
disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0,
section 1.7.

Although the addition of other terms, here, “pharma”, “pets”, and “fr”, may bear on the assessment of the second and third elements, the Panel finds the addition of such descriptive terms does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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 Respondent may demonstrate rights or legitimate interests in a disputed domain name.

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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 Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating

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

The available record indicates that the disputed domain name previously directed to a website featuring Complainant’s product images, presumably for purposes of sale of Complainant’s products, and that such site failed to disclose the lack of relationship between the Parties. The disputed domain name directed to a site that merely lists a mailing address, hours of operation, and a “Contact Us” form.

Based thereon, it may not be found that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of the disputed domain name. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. There also is no evidence that Respondent is commonly known by the disputed domain name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that the disputed domain name currently resolves to an inactive website. 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 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. In particular, the Panel finds that Complainant’s HILL’S mark is the
subject of longstanding use around the world. The Panel also observes that Respondent failed to file a
response and provided false and incomplete WhoIs information. Further, the Panel is unable to discern any
plausible good faith use to which the disputed domain name may be used. See WIPO Overview 3.0, section
3.3.

The Panel is also mindful of Respondent’s previous use of the disputed domain name in connection with a website that includes photos of Complainant’s products, presumably in an effort to sell such products to the public. The fact that the disputed domain name, in addition to incorporating Complainant’s HILL’S mark in

full also includes terms, i.e., “pharma” and “pets”, associated with the products – therapeutic pet foods - sold under the mark, is another factor supporting a finding of the requisite bad faith. The inclusion of such terms in the disputed domain name increases the potential for consumer confusion as to the source, sponsorship, endorsement, or affiliation of the products previously offered for sale on Respondent’s website.

The Panel finds that Complainant has established the third element of the Policy.

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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 <hillspharmapets-fr.com> be transferred to Complainant.

/Jeffrey M. Samuels/
Jeffrey M. Samuels
Sole Panelist
Date: May 22, 2025