Paper Denim & Cloth, LLC v. Pete Helvey
Claim Number: FA1201001425020
Complainant is Paper Denim & Cloth, LLC (“Complainant”), represented by Gary H. Fechter of McCarter & English, LLP, New York, USA. Respondent is Pete Helvey (“Respondent”), represented by Kendall Thiessen of Transideation, P.C., Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paperdenimcloth.com> (“the Domain Name”), registered with 1&1 Internet, 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.
Alan L. Limbury as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2012, naming Onenandone, Private Registration 1&1 Internet, Inc. as Respondent. The National Arbitration Forum received payment on January 17, 2012.
On January 20, 2012, 1&1 Internet, Inc. confirmed by e-mail to the National Arbitration Forum that the Domain Name is registered with 1&1 Internet, Inc. and that, because its customer had chosen to make use of the Private Registration feature, 1&1 Internet, Inc had appeared in the public WHOIS database as the holder of the Domain Name. 1&1 Internet, Inc. stated that it had now updated its data to reflect the current owner, namely Pete Helvey, as the current registrant of the Domain Name. 1&1 Internet, Inc. verified that Pete Helvey is bound by the 1&1 Internet, 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 January 26, 2012 Complainant submitted electronically to the National Arbitration Forum an Amended Complaint, naming Pete Helvey as Respondent.
On January 27, 2012, the Forum served the Amended Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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@paperdenimcloth.com. Also on January 27, 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.
On February 16, 2012, a timely Response was received and determined to be complete. This named as Respondent LightWeight LLC of Seattle and Onenandone, Private Registration 1&1 Internet, Inc. Despite incorrectly naming Respondent in this way, the Panel has taken the Response to have been submitted on behalf of the person in whose name the Domain Name is registered according to the Registrar’s verification, namely Respondent Pete Helvey.
The Response requested assignment of a new, neutral Forum Administrator and Arbitrator, claiming that, in addition to material relevant to this case, the Administrator had forwarded to Respondent unnecessary and unrelated documentation, such as proceedings concerning the domain names <awb.com> and <deanwitter.mobi>, severely hampering Respondent’s ability to respond promptly. On February 21, 2012 the Forum’s Director of Internet and IP Services informed Respondent that the cases to which he referred are final decisions in other cases and that they had been submitted as evidence by Complainant in this case. Since the Forum is required to serve the entire Complaint, including exhibits, the case coordinator had discharged that duty. The Forum accordingly did not assign a different Forum Administrator. At that stage, no Arbitrator had been appointed.
An untimely Additional Submission was received from Complainant on January 22, 2012. The Panel has nevertheless had regard to it.
On February 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant says it has been using the trademark PAPER DENIM & CLOTH since at least August 2000 and that it has numerous registrations and pending applications in different countries for that mark, including United States Federal registration No. 2,553,907 dated March 26, 2002 in International Class 25 (disclaiming “DENIM & CLOTH” otherwise than in the entire mark) for jeans, sweaters, jackets, coats, shirts, t-shirts, skirts, vests and tank tops.
Complainant says the Domain Name is confusingly similar to its PAPER DENIM & CLOTH mark and that Respondent has no rights or legitimate interests in the Domain Name, which was registered by Respondent on or about October 27, 2011 and is being used in bad faith.
As to legitimacy, Complainant says Respondent is not making a legitimate or fair use of the Domain Name, since it resolves to a “Server Default Page” generated by Parallels Holdings Ltd. Respondent has never been known by or generated a business under the PAPER DENIM CLOTH mark or the Domain Name. Respondent has no affiliation or ties with Complainant, which has never authorized Respondent to use its mark.
As to bad faith, to Complainant’s knowledge, Respondent, having registered the Domain Name in October, 2011, has never actively used it, since it resolves to a parked page. This is evidence of bad faith registration and use: Morgan Stanley v. Guerilla Freedom Fighter c/c Bethesda Properties LLC, FA 1061232 (Nat. Arb. Forum Oct. 2, 2007); DCI SA v. Link Commercial Corp, D2000-1232 (WIPO Dec. 7, 2000); and Caravan Club v. Mgrsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000).
Complainant relies on Reader’s Digest Assoc. Inc. v. TravelVideoStore.com c/o Donald E. Wyatt, FA 1204913 (Nat. Arb. Forum July 31, 2008) for the proposition: “Registration of a domain name that is confusingly similar to a registered mark is evidence of bad faith registration”.
Citing DaimlerChrysler AG v. Enigma a/k/a Enigma Advocacy Group, FA 535460 (Nat. Arb. Forum Oct. 11, 2005) and Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002), Complainant says that since its mark is registered on the Principal Register of the USPTO, Respondent had constructive knowledge of it and that constructive knowledge indicates bad faith registration.
B. Respondent
Respondent says the Response was prepared in haste because he was out of the country between January 27, 2012 and February 15, 2012.
Respondent accepts that Complainant owns the trademark PAPER DENIM & CLOTH but seeks proof that Complainant has used PAPER DENIM CLOTH (sans ampersand) as a mark prior to Respondent’s registration of the Domain Name.
Respondent registered the Domain Name after it had expired and was made available to the general public for registration via the website <www.expireddomains.net>. Complainant is seeking to penalize a well-intentioned small business for its own negligence in failing itself to register the Domain Name.
Respondent is willing to sign an affidavit to the effect that at the time of
registration, he was unaware of Complainant’s business, products or marketing as Complainant has no retail outlet in the general vicinity of Respondent. Respondent has no interest in infringing Complainant’s trademark or taking any benefit from any similarity. Respondent has no intention of “cybersquatting” the domain or attempting to solicit the sale of the rights to the Complainant or any other party.
The words “paper”, “denim” and “cloth” are all words in common use and should not represent a trademark when used descriptively. Respondent’s intention with the Domain Name is to open an affiliate/e-commerce site specializing in textile sales for crafters including non-tear, recycled paper cloth, recycled denim cloth, fair-trade cotton cloth, and other sustainably-sourced textiles.
Respondent has owned rights to the Domain Name only for several months and is still in the process of developing the site. As it is Respondent’s business to procure publicly-available domain names that relate to the actual tangible products Respondent intends to sell or affiliate with, Respondent has many projects going at once and should not have to publish a web site on the Complainant’s schedule, considering that the keywords (paper, denim, cloth) describe Respondent’s intended product offerings more accurately than Complainant’s products.
C. Additional Submissions
Complainant’s Additional Submission is largely repetitive of the Complaint. In addition, Complainant says that after the Complaint was submitted, the website to which the Domain Name resolves was changed to a password-protected website. Due to its timing, it may be inferred that Respondent made this change “in an attempt to evade the current UDRP proceedings”: Google, Inc. v. Star Co. Ltd., FA 1245134 (Nat. Arb. Forum Mar. 25, 2009); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (stating that respondent must show a legitimate use existed “before any notice to [Respondent] of the dispute”).
Complainant says Respondent admits that it has passively held the Domain Name since its registration without any instance of active use. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2008): “Passive holding of a domain name permits an inference of registration and use in bad faith”. Respondent’s excuse for its inaction, that it has only owned the domain name since October 2011, is not a panacea. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant has failed to establish all the elements entitling it to relief.
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.
Although Complainant’s mark comprises three ordinary dictionary words and an ampersand (factors to be considered in relation to the second and third elements), Complainant clearly has rights in many countries in its registered trademark PAPER DENIM & CLOTH. The Domain Name differs only in having no ampersand and the additional inconsequential gTLD “.com”, which is to be disregarded: Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO Jan. 29, 2001).
Accordingly the Panel finds that the Domain Name is confusingly similar to Complainant’s mark.
Complainant has established this element of its case.
Despite Complainant’s trademark registrations, there is no evidence before the Panel that Complainant’s PAPER DENIM & CLOTH mark is well known.
The Panel is not persuaded by early decisions under the Policy that passive holding of itself demonstrates absence of rights or legitimate interests on the part of Respondent. See Indofil Chemicals Company v. Amar Vakil, D2006-0792 (WIPO Aug. 14, 2006): “The significance of passive holding of a domain name is more commonly considered in the context of the third element of the Policy, where the prevailing view is that passive holding is not evidence of either good or bad faith, but must be interpreted in the context of all of the circumstances of the case. Similar reasoning applies with respect to the significance of passive holding to the Respondent’s legitimate interests in the disputed domain name”.
Nevertheless, Complainant’s other assertions are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in the Domain Name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that he does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) and the cases there cited.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate his rights to or legitimate interests in the Domain Name for purposes of paragraph 4(a)(ii) of the Policy, i.e.,
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the Domain Name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Respondent does not claim to be or to have been commonly known by the Domain Name. He asserts that he intends to open an affiliate/e-commerce site specializing in textile sales for crafters including non-tear, recycled paper cloth, recycled denim cloth, fair-trade cotton cloth, and other sustainably-sourced textiles. He says his business is to procure publicly-available domain names that relate to the actual tangible products he intends to sell or affiliate with. Respondent provides no evidence in support of these assertions. Evidence that he has previously procured domain names relating to actual tangible products might have enabled the inference to be drawn that he had that intention in the present case when registering the Domain Name. Respondent’s mere assertions fail to demonstrate that he has rights or legitimate interests in the Domain Name.
It is unnecessary to decide whether the change in the resolution of the Domain Name following initiation of the Complaint is of significance in relation to this element.
Complainant has established this element of its case.
Despite some Panel decisions to the contrary, there is no place for the concept of constructive knowledge under the Policy, the essence of the complaint being bad faith targeted at the complainant, necessarily involving the cybersquatter having actual knowledge of the existence of the complainant, the trade mark owner: Way Int’l Inc. v. Peters, D2003-0264 (WIPO May 29, 2003).
The Domain Name comprises three common dictionary words. Complainant has provided no evidence that its mark, although registered on the Principal Register of the USPTO, is sufficiently well-known as to enable the inference to be drawn that Respondent must have had that mark in mind when he registered the Domain Name. Nor is there any other evidence from which the Panel can conclude that Respondent had Complainant or its trademark in mind when he registered the Domain Name.
Complainant relies on Respondent’s non-use as giving rise to an inference of bad faith. However, a respondent’s failure to develop a site is not as such evidence of bad faith registration: Consitex S.A. v. Mr. Christopher C. GramlyD2004-0416 (WIPO July 21, 2004). Further, “Non-use of a domain name does not on its own constitute bad faith. Other factors must be involved. An important element is that the complainant’s mark is sufficiently well known such that a registrant might reasonably be inferred to have registered an identical or confusingly similar domain name in the expectation of taking advantage of the trademark holder”: Barlow Lyde & Gilbert v. The Business Law Group, D2005-0493 (WIPO June 24, 2005).
Even assuming that Respondent’s failure to use the Domain Name to resolve to an active website constitutes lack of bona fide use, “where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith”: Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001.
In light of these considerations, the Panel is not satisfied, on the balance of probabilities, that Respondent registered and has used the Domain Name in bad faith. Respondent’s redirection of the Domain Name to a password-protected website after the initiation of the Complaint does not alter this conclusion.
Complainant has failed to establish this element of its case.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <paperdenimcloth.com> domain name REMAIN WITH Respondent.
Alan L Limbury, Panelist
Dated: March 5, 2012.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page