WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Valpak Direct Marketing Systems, Inc. v. Brandon Kelly Case No. D2008-1866 1. The Parties
Complainant is Valpak Direct Marketing Systems, Inc., Largo, Florida, United States of America, represented by DLA Piper US LLP, United States of America.
Respondent is Brandon Kelly, Califon, New Jersey, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2008. On December 4, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the Domain Name. On December 4, 2008, GoD, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 11, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 31, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 5, 2009.
The Center appointed Kevin C. Trock as the sole panelist in this matter on January 22, 2009. 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 is the owner of the VALPAK house mark, trademark and company name, as well as the domain name . Complainant has obtained trademark registrations for the VALPAK mark in the United States and other countries. Complainant registered the domain name on June 22, 1994.
Respondent registered the Domain Name with the registrar GoD, Inc. on February 5, 2002. Respondent did not file a response to the Complaint and is in default. 5. Parties' Contentions A. Complainant
For over forty years, Complainant's primary corporate name, primary trademark and house mark has been VALPAK. Complainant has used and continues to use the VALPAK mark in connection with its promotion, design and distribution services. For example, in 2002 when Respondent registered the Domain Name, Complainant's advertising expenditures were USD 6.7 million and in 2007 Complainant's advertising expenditures were USD 10 million. Complainant mailed almost 20 billion advertisements/coupons for others in over 520 million VALPAK envelopes. Each month, nearly 21.5 million people view coupons on Complainant's website at “www.”.
Complainant did not authorize Respondent to register the Domain Name , nor does Complainant maintain any licensing relationship with Respondent. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Respondent's Domain Name is confusingly similar to Complainant's VALPAK mark. Respondent's Domain Name incorporates, in its entirety, Complainant's VALPAK mark. The only difference between the Domain Name and Complainant's VALPAK mark is the addition of the generic top-level domain (gTLD) “.com” and the generic prefix “www”.
First, the addition of the gTLD is “completely without legal significance.” See PepsiCo, Inc. v. PEPSI, SRL a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY, (a/ka/ EMS),WIPO Case No. D2003-0696 (finding Respondent's addition of a gTLD such as “.com” to domain names incorporating the term ‘PEPSI' insufficient to distinguish respondent's domain names from Complainant's mark PEPSI).
Second, the prefix “www” is “the well-known acronym for ‘world wide web' and thus has no distinguishing capacity in a domain name context.” See CSC Holdings, Inc. v. Elbridge Gagne,WIPO Case No. D2003-0273 (finding the addition of the prefix “www” to the domain name insufficient to distinguish it from Complainant's AMCTV mark).
Accordingly, Respondent's addition of the gLTD “.com” and the generic prefix “www” does nothing to distinguish the Domain Name from Complainant's VALPAK mark. As such, Internet users are likely to be confused as to whether an association exists between the Domain Name and Complainant.
The Panel concludes that the Domain Name is identical or confusingly similar to Complainant's registered VALPAK trade mark. B. Rights or Legitimate Interests
Respondent (Brandon Kelly) is not commonly known by the name “wwwvalpak” and, therefore, cannot claim a right to or legitimate interest in the Domain Name under Paragraph 4(c)(ii) of the Policy.
Use of a domain name as a portal to a complainant's competitor's website does not constitute a bona fide offering of goods or services. See Humana, Inc. v. Henry Tsung,WIPO Case No. D2005-0221 (finding that the use of a website as a portal linking to competitors' websites is not a bona fide offering of goods or services); Humana, Inc. v. Domain Deluxe,WIPO Case No. D2005-0231.
In this case, Respondent's only use of the Domain Name is to divert consumers, by click-through links, to third-party websites. The owners of these third-party websites are various entities that market and distribute coupons and advertising materials for others. Consumers looking for Complainant and its coupons are being diverted to the websites of other entities offering coupons. Thus, Respondent has not made a legitimate use of the Domain Name in connection with a bona fide offering of goods or services.
The Panel concludes that the Respondent has no rights or legitimate interest in the Domain Name. C. Registered and Used in Bad Faith
Respondent is intentionally attempting to attract users to its website by creating a likelihood of confusion with Complainant's VALPAK mark. UDRP paragraph 4(b) (iv). By providing links to third-party websites, Respondent has registered and is using the Domain Name in bad faith by intentionally attempting to attract users to its website by creating a likelihood of confusion with Complainant's VALPAK Mark. See Eastman Chemical Company v. Manila Industries, Inc. (NAF Claim No. FA450806)); Pioneer Hi-Bred International, Inc. v. Manila Industries, Inc. (NAF Claim No. FA444468). 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.
Kevin C. Trock
Sole Panelist
Dated: February 5, 2009
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