Georgia-Pacific LLC v. Above.com Domain Privacy
Claim Number: FA1210001467384
Complainant is Georgia-Pacific LLC (“Complainant”), represented by Larry Tronco of Holland & Hart LLP, Colorado, USA. Respondent is Above.com Domain Privacy (“Respondent”), Victoria, Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <georgepacific.com>, registered with Above.com Pty Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2012; the National Arbitration Forum received payment on October 15, 2012.
On October 16, 2012, Above.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <georgepacific.com> domain name is registered with Above.com Pty Ltd and that Respondent is the current registrant of the name. Above.com Pty Ltd has verified that Respondent is bound by the Above.com Pty Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@georgepacific.com. Also on October 17, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GEORGIA-PACIFIC marks. Respondent’s domain name is confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <georgepacific.com> domain name, and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted 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 must 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant, Georgia-Pacific LLC, contends that it is one of the world’s leading manufacturers, marketers and sellers of various consumer products, pulp, cellulose, papers, packaging, building products and related chemicals. Complainant further contends that its products are sold under some of the most famous and well-known brands throughout the world, and include cups, plates, bowls, cutlery, etc. Complainant states that it owns several trademark registrations with the USPTO for the GEORGIA-PACIFIC marks (e.g., Reg. No. 994,319, registered October 1, 1974). Complainant also contends that it owns several GEORGIA-PACIFIC trademarks with IP Australia (e.g., Reg. No. A516245). Therefore, the Panel determines that Complainant’s trademark registrations with the USPTO and other agencies are sufficient to establish rights in the GEORGIA-PACIFIC marks under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant argues that Respondent’s <georgepacific.com> domain name is confusingly similar to Complainant’s GEORGIA-PACIFIC marks, as merely changing GEORGIA to “George” and removing the hyphen does not distinguish Respondent’s domain name from Complainant’s mark. Complainant also asserts that the addition of the gTLD “.com” to its mark is irrelevant under a Policy ¶ 4(a)(i) analysis. Such changes and additions to a complainant’s mark are not sufficient to distinguish the domain name at issue from the mark. See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Therefore, the Panel concludes that there is confusing similarity between Respondent’s <georgepacific.com> domain name and Complainant’s GEORGIA-PACIFIC mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent has not been commonly known by the disputed domain name because the WHOIS information identifies “Above.com Domain Privacy” as the registrant. Complainant further asserts that Respondent has never been affiliated with Complainant and Complainant has never authorized Respondent to use the GEORGIA-PACIFIC mark. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant further argues that Respondent is using the disputed domain name to display links to websites featuring Complainant’s products and Complainant’s competitors’ products. Complainant contends that Respondent’s website features a link to Complainant’s website and also links for “Dispenser Paper Towel”, “Recycled Paper Supplies”, and “Georgia Pacific Paper,” and others. Complainant contends that Respondent is presumably receiving “pay per click” fees for every misdirected Internet user. Prior panels have found that similar usage of confusingly similar domain names does not amount to a bona fide offerings of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). Therefore, the Panel finds that Respondent is not using the <georgepacific.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the disputed domain name to disrupt Complainant’s business. Complainant argues that Respondent has registered the disputed domain name with the purpose of diverting potential consumers away from Complainant’s website, therefore disrupting Complainant’s business. Complainant contends that Internet users are diverted to Respondent’s website which features links to Complainant’s website and competing links. The Panel finds that Respondent is disrupting Complainant’s business, and that such disruption is evidence of bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant argues that Respondent is using the disputed domain name to attract Internet users to Respondent’s website, for its own commercial gain, by creating a likelihood of confusion with the Complainant’s marks. Complainant asserts that Respondent is receiving “click through” fees through the advertising links located on Respondent’s website. Complainant has argued that Respondent is using the disputed domain name to display third-party links to Complainant’s competitors. The collection of “click through” fees, through the use of a confusingly similar disputed domain name and a pay-per-click website featuring links to Complainant’s competitors, constitutes bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Complainant asserts that Respondent, at the time that it registered the <georgepacific.com> domain name, had actual notice and/or constructive notice of Complainant’s rights in the GEORGIA-PACIFIC marks. Complainant asserts that, due to its extensive list of trademark registrations, Respondent must have had actual knowledge of Complainant's rights in the GEORGIA-PACIFIC marks when Respondent registered the disputed domain name. The Panel finds that Respondent had actual knowledge of Complainant and its rights in the GEORGIA-PACIFIC mark. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <georgepacific.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 3, 2012
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