Paperless Inc. v. Balticsea LLC
Claim Number: FA1410001583766
Complainant is Paperless Inc. (“Complainant”), represented by Daniel Greenberg of Lexsynergy Limited, United Kingdom. Respondent is Balticsea LLC (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwpaperlesspost.com>, registered with Tucows Domains Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 8, 2014; the National Arbitration Forum received payment on October 8, 2014.
On October 9, 2014, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <wwwpaperlesspost.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. 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 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2014 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@wwwpaperlesspost.com. Also on October 10, 2014, 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 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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
1. Complainant has rights in the PAPERLESS POST mark in association with its online and printed stationary. Complainant’s business allows customers to create their own online or paper stationary through customizable designs.
2. Complainant has rights in the PAPERLESS POST mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,730,236 registered December 22, 2009).
3. Respondent’s <wwwpaperlesspost.com> domain name is confusingly similar to Complainant’s PAPERLESS POST mark.
a. Respondent adds the common prefix “www” to Complainant’s mark.
4. Respondent has no rights or legitimate interests in the <wwwpaperlesspost.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has never authorized Respondent to use the PAPERLESS POST mark in any way. There is no other evidence on the record indicating that Respondent has a relation to the disputed domain name.
b. Respondent uses the disputed domain name to attract Internet users to respondent’s resolving website and confuse them as to Complainant’s affiliation with the content on the website.
c. Respondent has engaged in typosquatting behavior.
5. Respondent registered and is using the <wwwpaperlesspost.com> domain name in bad faith.
a. Respondent has placed the disputed domain name for sale with the auction service, Sedo.com. Respondent’s minimum offering price is listed as $250, which is in excess of Respondent’s out-of-pocket expenses.
b. Respondent has a pattern of bad faith registrations, including over 10 prior UDRP cases decided against it. See Complainant’s Annex 13, pages 4-7.
c. Respondent uses the disputed domain name to attract Internet users to its resolving website for the purpose of confusing Internet users as to Complainant affiliation with the website, and financially profiting from their confusion.
d. Respondent had actual knowledge of Complainant and Complainant’s mark when Respondent registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant Paperless Inc. of New York, NY, USA, is the owner of domestic and international registrations for the mark PAPERLESS POST. Complainant has continuously used the mark since at least as early as 2007 in connection with the provision of goods and services related to the creation and printing of online customized stationary.
Respondent is Balticsea LLC of Kaliningrad, Russia. Respondent’s registrar’s address is listed as Ontario, Canada. Respondent registered the <wwwpaperlesspost.com> domain name on or about June 27, 2010.
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 states that it has rights in the PAPERLESS POST mark in association with its online and printed stationary. Complainant explains that its business allows customers to create their own online or paper stationary through customizable designs. Complainant asserts that it has rights in the PAPERLESS POST mark through its registration with the USPTO (Reg. No. 3,730,236 registered December 22, 2009), as well as through its extensive use since November 20, 2008. Complainant further points out that it registered the <paperlesspost.com> domain name on September 8, 2007. Prior panels have found that evidence of a registration with the USPTO for a given mark indicates rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Additionally, it is irrelevant whether Complainant registered the domain name in the location of Respondent. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction) . The Panel here finds that Complainant has rights in the PAPERLESS POST mark in accordance with Policy ¶ 4(a)(i).
Complainant next asserts that Respondent’s <wwwpaperlesspost.com> domain name is confusingly similar to Complainant’s PAPERLESS POST mark. Complainant claims that Respondent adds the common prefix “www” to Complainant’s mark. Prior panels have concluded that the addition of the prefix “www,” the popular abbreviation for “world wide web”, does not differentiate a disputed domain name from a given mark. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar). The Panel also notes that Respondent removes the space in Complainant’s PAPERLESS POST mark and adds the generic top-level domain (“gTLD”) “.com.” The panel in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) concluded that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The Panel here finds that Respondent’s <wwwpaperlesspost.com> domain name is confusingly similar to Complainant’s PAPERLESS POST mark pursuant to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in the <wwwpaperlesspost.com> domain name. Complainant states that Respondent is not commonly known by the disputed domain name, and Complainant has never authorized Respondent to use the PAPERLESS POST mark in any way. Complainant asserts there is no evidence on record indicating that Respondent has a relation to the disputed domain name. Complainant highlights the fact that the WHOIS information for the disputed domain name lists “Balticsea LLC” as the registrant. Given Respondent’s failure to refute Complainant’s contentions, the Panel finds that Respondent is not commonly known by the <wwwpaperlesspost.com> domain name for purposes of Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant further alleges that Respondent uses the disputed domain name to attract Internet users to Respondent’s resolving website and confuse them as to Complainant’s affiliation with the content on the website. The panel notes that Respondent’s website resolves to a page displaying links such as “Party Invitations,” “Invitations Cards,” “Invite Templates,” and various other links relating to stationary. Prior panels have concluded that using a confusingly similar domain name to resolve to a website displaying links that compete with complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. see United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). The Panel here finds that Respondent’s use of the disputed domain name does not convey rights or legitimate interests in the <wwwpaperlesspost.com> domain name under Policy ¶¶ 4(c)(i) or (iii).
Complainant also claims that Respondent has engaged in typosquatting behavior by registering the <wwwpaperlesspost.com> domain name. The Panel in Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) found no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint. Similarly here, Respondent merely adds the “www” prefix in an attempt to divert Internet users to Respondent’s resolving website. The Panel here finds that Respondent’s registration of the <wwwpaperlesspost.com> domain name does not support a finding of typosquatting.
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent registered and is using the <wwwpaperlesspost.com> domain name in bad faith under Policy ¶ 4(b)(i). Complainant alleges that Respondent has placed the disputed domain name for sale with the auction service, Sedo.com. Complainant points out that Respondent’s minimum offering price is listed as $250, which is in excess of Respondent’s out-of-pocket expenses. Prior panels have found that offering to sell an infringing domain name for an excessive cost, indicates bad faith use and registration. See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). The Panel here finds that Respondent’s offer to sell the disputed domain name for $250 supports a conclusion the Respondent’s action equate to bad faith activity pursuant to Policy ¶ 4(b)(i) if that amount exceeds the costs expended by Respondent in securing the mark.
Next, Complainant alleges that Respondent has a pattern of bad faith registrations, including over 10 prior UDRP cases decided against it. The Panel notes such cases include; The Toronto-Dominion Bank v. Balticsea LLC, FA 1576651 (Nat. Arb. Forum October 3, 2014); see also Indep. Ins. Agents & Brokers of Am. Inc. v. Balticsea LLC, FA 1560424 (Nat. Arb. Forum June 27, 2014). Prior decisions holding adversely against a respondent have generally been an indication of bad faith use and registration under Policy 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel here finds that Respondent’s prior record of bad faith registrations indicate that Respondent registered and is using the <wwwpaperlesspost.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant claims that Respondent’s use of the disputed domain name competes with Complainant’s business in bad faith and thereby disrupts Complainant’s business. The Panel again notes that Respondent’s resolving website displays links that advertise for others products that are in the same genre as Complainant’s products. The Panel concludes that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith and disrupting Complainant’s business. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant also argues that Respondent uses the disputed domain name to attract Internet users to its resolving website for the purpose of confusing Internet users as to Complainant affiliation with the website, and financially profiting from their confusion. Prior panels have held that a respondent presumably collects revenue from the presence of third-party links displayed on a website resolving from an infringing domain name. Additionally, panels have concluded that when these links compete with a complainant, it amounts to bad faith use and registration under Policy 4(b)(iv) because it is evident that respondent’s intent is to attract Internet users to the resolving website in hopes they will confuse the website with a complainant’s legitimate business. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). The Panel here finds that Respondent’s registration and use indicates bad faith under Policy ¶ 4(b)(iv).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwpaperlesspost.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: November 24, 2014
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