Wausau-Mosinee Paper Corporation v.
Domain Deluxe
Claim
Number: FA0406000285145
Complainant is Wausau-Mosinee Paper Corporation (“Complainant”),
represented by Steven M. Anderson of Ruder, Ware & Michler, L.L.S.C., 500 Third Street, Suite 700, P.O. Box 8050, Wausau, WI
54402-8050. Respondent is Domain Deluxe (“Respondent”), GPO 7628,
Central, HK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wausaupaper.com>, registered with The
Registry At Info Avenue d/b/a IA Registry.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically June 9, 2004; the Forum received a hard copy of the Complaint June
14, 2004.
On
June 14, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by
e-mail to the Forum that the domain name <wausaupaper.com> is
registered with The Registry At Info Avenue d/b/a IA Registry and that
Respondent is the current registrant of the name. The Registry At Info Avenue
d/b/a IA Registry verified that Respondent is bound by the The Registry At Info
Avenue d/b/a IA Registry registration agreement and thereby has agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
June 16, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 6, 2004, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@wausaupaper.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
July 12, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the Forum 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 makes the following assertions:
1. The domain name registered by Respondent,
<wausaupaper.com>, is confusingly similar to Complainant’s WAUSAU
PAPERS mark.
2. Respondent has no rights to or legitimate
interests in the <wausaupaper.com> domain name.
3. Respondent registered and used the <wausaupaper.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Wausau-Mosinee Paper Corporation, is in the business of producing and selling
numerous varieties of specialty, printing, writing, and imaging papers as well
as towel and tissue papers.
Complainant’s business consists of three separate business operating
groups, including the Printing & Writing Group, the Specialty Paper Group,
and the Towel & Tissue Group. The
name WAUSAU PAPERS refers to a segment of the Printing & Writing Group
within Complainant’s organization.
Complainant owns the registration with the United States Patent and
Trademark Office for the WAUSAU PAPERS mark (Reg. No. 2,123,454 issued December
23, 1997).
Since 1960,
Complainant has used the WAUSAU PAPERS mark continuously and extensively in
connection with its paper business.
Complainant registered the <wausaupapers.com> domain name July 6,
1995, to advertise and sell its products on a national and international
scale. Complainant also promotes and
sells its products via catalogues.
Respondent
registered the <wausaupaper.com> domain name November 28,
2001. The disputed domain name resolves
to a website that initially features links to numerous websites offering paper
products of Complainant’s competitors.
Respondent’s website also features links to various other categories of
products and services unrelated to Complainant as well as a search engine and
banner advertisements.
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."
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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.
Complainant has
established with extrinsic proof in this proceeding that it has rights in the
WAUSAU PAPERS mark through registration with the United States Patent and
Trademark Office and by continued use of its mark in commerce for the last
forty-four years. See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The <wausaupaper.com>
domain name registered by Respondent is confusingly similar to Complainant’s
WAUSAU PAPERS mark because the domain name incorporates Complainant’s mark,
deviating only by the deletion of the letter “s” at the end of the mark. The mere deletion of a letter from
Complainant’s mark does not negate the confusing similarity of Respondent’s
domain name pursuant to Policy ¶ 4(a)(i).
See Universal City Studios,
Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that
deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not
change the overall impression of the mark and thus made the disputed domain
name confusingly similar to it); see also Compaq Info. Techs. Group,
L.P. v. Seocho, FA 103879 (Nat.
Arb. Forum Feb. 25, 2002) (finding that the domain name
<compq.com> is confusingly similar to Complainant’s COMPAQ mark because
the omission of the letter “a” in the domain name does not significantly change
the overall impression of the mark); see also Victoria’s Secret v.
Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by
misspelling words and adding letters to words, a Respondent does not create a
distinct mark but nevertheless renders the domain name confusingly similar to
Complainant’s marks).
The Panel finds
the Policy ¶ 4(a)(i) has been satisfied.
Complainant has
established that it has rights to and legitimate interests in its protected
mark and has alleged that Respondent has no such rights to or legitimate
interests in the <wausaupaper.com> domain name. Due to Respondent’s failure to respond to
the Complaint, the Panel is permitted to assume that Respondent lacks rights
and legitimate interests in the disputed domain name because the burden shifts
to Respondent to show rights to or legitimate interests in the domain name once
Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where
Complainant has asserted that Respondent has no rights or legitimate interests
with respect to the domain name it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that once Complainant asserts that Respondent has no rights or
legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names).
Furthermore,
where Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. See 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”); see also Vertical
Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum
July 31, 2000) (holding that Respondent’s failure to respond allows all
reasonable inferences of fact in the allegations of Complainant to be deemed
true).
Respondent is
using the <wausaupaper.com> domain name to redirect Internet users
to a website that features banner advertisements and links to a variety of
websites including those offering products in direct competition with the
products and services offered by Complainant under its WAUSAU PAPERS mark. Respondent’s use of a domain name that is
confusingly similar to Complainant’s WAUSAU PAPERS mark to redirect Internet
users interested in Complainant’s paper products to a commercial website that
features links to a variety of websites offering competing paper products and
numerous other products and services unrelated to Complainant is not in
connection with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Disney Enters., Inc. v. Dot
Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s
diversionary use of Complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names).
Finally,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <wausaupaper.com> domain
name. Furthermore, Complainant has not
authorized or licensed Respondent to use its WAUSAU PAPERS mark. Thus, Respondent has not established rights
or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered the <wausaupaper.com> domain name that
contains a confusingly similar version of Complainant’s well-known WAUSAU
PAPERS mark for Respondent’s commercial gain.
Respondent’s domain name diverts Internet users who seek Complainant’s
WAUSAU PAPERS mark to Respondent’s commercial website through the use of a
domain name that is confusingly similar to Complainant’s mark. Furthermore, Respondent is unfairly and
opportunistically benefiting from the goodwill associated with Complainant’s
WAUSAU PAPERS mark and using the website, in part, to provide products and
services similar to those of Complainant.
Respondent’s practice of diversion, motivated by commercial gain,
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29,
2000) (finding bad faith where the domain name in question is obviously
connected with Complainant’s well-known marks, thus creating a likelihood of
confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent
directed Internet users seeking Complainant’s site to its own website for
commercial gain).
Additionally,
the Panel is permitted to infer that because Respondent had notice of
Complainant’s rights in its marks, Respondent’s use suggests that Respondent
registered the <wausaupaper.com> domain name for the primary
purpose of disrupting Complainant’s business by redirecting Internet traffic
intended for Complainant to Respondent’s website that directly competed with
Complainant by providing links to competitors’ similar products. Registration of a domain name for the
primary purpose of disrupting the business of a competitor is evidence of bad
faith use and registration pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that Respondent has diverted business from Complainant to a competitor’s
website in violation of Policy 4(b)(iii)); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22,
2000) (finding that Respondent registered and used the domain name primarily
for the purpose of disrupting the business of Complainant by offering personal
e-mail accounts under the domain name <openmail.com> which is identical
to Complainant’s services under the OPENMAIL mark).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of a domain name, additional factors
can also be used to support findings of bad faith registration and use. The Panel looks to the totality of the
circumstances.. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in
Paragraph 4(b) are intended to be illustrative, rather than exclusive”).
Further, the
fact that the domain name deviates from Complainant’s mark only with the
deletion of the letter “s,” is additional proof that Respondent knew of Complainant’s
rights in the WAUSAU PAPERS mark. The
disputed domain name links to a website that provides links to websites
offering goods and services of Complainant’s competitors. The Panel finds that Respondent chose the <wausaupaper.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark and therefore Respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). See
Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Orange Glo Int’l v. Blume, FA 118313
(Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr.
24, 2002) (finding that because the link between Complainant’s mark and the
content advertised on Respondent’s website was obvious, Respondent “must have
known about the Complainant’s mark when it registered the subject domain
name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wausaupaper.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 26, 2004
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