Complainants are Georgia-Pacific Consumer Products LP and Georgia-Pacific LLC of Atlanta, Georgia, United States of America (“USA”), internally represented.
Respondent is Vernon Hogan of Saxapahaw, North Carolina, USA / Registration Private, Domains by Proxy, LLC, DomainsbyP of Scottsdale, Arizona, USA. 2. The Domain Names and the Registrar
The disputed domain names , , , , , , , , , , , , , , and (the “Disputed Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2013; at that time, the Disputed Domain Names included only the following, each of which Complainant identified as being registered by Vernon Hogan: , , , , , and . On August 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with these Disputed Domain Names. On August 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent, Vernon Hogan, is listed as the registrant and providing the contact details. On August 9, 2013, the Complainant filed an amendment to the Complaint with which it added the following domain names to its Complaint each of which Complainants identified as being registered by Registration Private, Domains by Proxy, LLC, DomainsbyP: , , , , , , , and . On August 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the newly added Disputed Domain Names. On August 16, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint; namely, the Respondent was identified as Vernon Hogan, the same registrant as in the original complaint. The Center sent an email communication to Complainants on August 28, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on August 29, 2013.
The Center verified that the Complaint together with the amendments to 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 with the amendments to the Complaint, and the proceedings commenced on September 4, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 24, 2013. The informal Response was filed with the Center on September 24, 2013. On September 26, 2013, each of the Parties filed a Supplemental Filing, which the Panel has in its sole discretion decided to consider in rendering its decision.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on October 4, 2013. 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
Complainants state that they “are one of the world’s leading manufacturers, marketers and sellers of various consumer products, including towels, tissues, dispensers”; that they “have manufactured, marketing and sold products under the Georgia-Pacific® trademark [hereafter, the “GEORGIA-PACIFIC Trademark”] continuously for more than fifty (50) years”; that “Complainants have spent many millions of dollars over the years promoting its [p]roducts and [s]ervices under the Georgia-Pacific® trademark”; that “[i]n 2002, Complainants introduced the enMotion® automated and touchless paper towels and dispenser”; that “Complainants have spent a significant amount of money over the years promoting its products under the Envision® trademark” (hereafter, the “ENMOTION Trademark”); that “[t]he Envision® trademark is a well-known name in the towel industry and is a leading professional towel brand”; and that “Complainants have spent a significant amount of money over the years promoting its products under the Envision® trademark” [hereafter, the “ENVISION Trademark”].
Complainants further state, and provide evidence to support, that “Complainants, or one of its subsidiaries, affiliates, or related companies, currently owns over one hundred eighty (180) trademark registrations and/or pending applications for trademarks incorporating the enMotion® trademark worldwide; owns five (5) trademark registrations and/or pending applications for trademarks incorporating the Envision® trademark worldwide; and owns more than one hundred forty (140) incorporating the Georgia-Pacific® trademark worldwide.”
Complainants state that the Disputed Domain Names were registered “many years after Complainants or Complainants’ predecessor first registered and began using” the GEORGIA-PACIFIC Trademark, the ENMOTION Trademark and the ENVISION Trademark. Complainants state that the Disputed Domain Names “redirect to Respondent’s website at , to sponsored links pages with links to third parties, or parked pages” and that “Respondent does not sell any products under the GP Marks at the website.”
Complainants state that they contacted Respondent about various of the Disputed Domain Names and that Respondent “demanded payment of $5000 per domain name.” 5. Parties’ Contentions
As set forth in more detail below, Respondent has stated that it is “a small business owner” who is “licensed to distribute the complainant's goods and that “this is not a simple ‘cybersquatting’ case and that no malfeasance was intended.” A. Complainant
Complainants contend, in relevant part, as follows:
- Each of the Disputed Domain Names is confusingly similar to a trademark in which Complainants have rights because “[p]rior Panels have recognized that the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to Complainants’ mark”; and “the addition of the generic terms ‘paper towels’, ‘towels’, ‘toilet paper’ and ‘brands’ to the distinctive and well-known [marks owned by Complainants] do not avoid likelihood of confusion, but rather adds to it since Complainants primarily sells these products under the” respective marks.
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Names because, inter alia, “Respondent has no relationship with Complainants and Complainants ha[ve] not authorized Respondent to use” any of the relevant trademarks; the WhoIs records “do not bear any indication whatsoever that Respondent is commonly known by the [Disputed] Domain Names”; and Respondent has not attempted to demonstrate that it “is making a legitimate noncommercial or fair use of the [Disputed] Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
- Respondent registered and is using the Disputed Domain Names in bad faith because, inter alia, “Respondent must have known of the Complainants’ mark and chose the disputed domain name[s] in order to benefit from the mark’s well-known reputation”; and Respondent has “misappropriate[d] the goodwill of the Complainants and redirect[ed] [I]nternet traffic intended for the Complainants for its own purposes” via “sponsored links pages.” B. Respondent
In an e-mail to the Center on September 24, 2013, Respondent stated, “I will not be filing a formal rebuttal to the above UDRP complaint…. I understand that this means I will lose the complaint and the domains that I purchased will be forfeited and handed over to the complainant.” The e-mail further stated: “I intended no malfeasance. I am simply a small business owner who is licensed to distribute the complainants [sic] goods and has [sic] been doing so for over 10 years. I have spent the better part of two years, and a size-able [sic] amount of money, creating a business plan to develop these websites in a way that is absolutely in line with UDRP 4(c) paragraphs (i) and (iii).”
In an e-mail to the Center on September 26, 2013, Respondent stated: “I am licensed to distribute the complainant's goods through Lagasse Inc., a master distributor and customer of the complainants. I have confirmed through their licensing office that this is the case. I never said, written, or inferred in any communication that I was a customer of the complainant's directly…. I have no interest in selling the complainant's goods ever again. I simply wanted to show for the record that this is not a simple "cybersquatting" case and that no malfeasance was intended.” 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) each of the Disputed Domain Names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) each of the Disputed Domain Name has been registered and is being used in bad faith. (Policy, paragraph 4(a)). A. Identical or Confusingly Similar
Many of the certificates of trademark registration provided by Complainants identified entities other than Georgia-Pacific Consumer Products LP and Georgia-Pacific LLC as the owners. However, exercising its authority under paragraph 10 of the Rules,1 the Panel has visited the website of the United States Patent and Trademark Office and is satisfied that Complainants have rights in and to the GEORGIA-PACIFIC Trademark, the ENMOTION Trademark and the ENVISION Trademark.
As to whether the Disputed Domain Names are identical or confusingly similar to the GEORGIA-PACIFIC Trademark, the ENMOTION Trademark or the ENVISION Trademark, the relevant comparison to be made is with the second-level portion of the domain names only, as it is well-established that the generic top-level domain (i.e., “.com”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2 (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
The Panel agrees with Complainants that the addition of certain words, as here, can increase confusing similarity. See, e.g. Yellow Corporation v. MIC,WIPO Case No. D2003-0748 (“when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity”). Here, because the words “paper towels”, “towel”, “towel dispenser”, “toilet paper”, “lumber” and “plywood” are associated with Complainants’ activity, these words increase the confusing similarity between the relevant Disputed Domain Names and Complainants’ trademarks. See, e.g. Gateway Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY Marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”). Further, use of the word “brands” in two of the Disputed Domain Names does nothing to reduce confusing similarity. See, e.g., LEGO Juris A/S v. Phoenix Productions,WIPO Case No. D2010-0798 (transfer of and ).
Accordingly, the Panel finds that Complainants have proven the first element of the Policy. B. Rights or Legitimate Interests
Under the Policy, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview 2.0, paragraph 2.1.
Complainants have argued that, inter alia, “Respondent has no relationship with Complainants and Complainants ha[ve] not authorized Respondent to use” any of the relevant trademarks; the WhoIs records “do not bear any indication whatsoever that Respondent is commonly known by the [Disputed] Domain Names”; and Respondent has not attempted to demonstrate that it “is making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Here, despite two e-mails from Respondent to the Center stating that it “is licensed to distribute” Complainants’ products, Respondent has provided no evidence of such license and has not disputed any of Complainants’ arguments. Further, to the extent that Respondent may be a reseller of Complainants’ products, Respondent has not addressed any of the well-established factors set forth in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No.D2001-0903. See also paragraph 2.3 of the WIPO Overview 2.0:
Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.
Accordingly, as a result of Complainants’ allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainants have proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
Here, Complainants specifically argue that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy. Among other things, Complainants have argued that Respondent’s use of the Disputed Domain Names in connection with web pages that contain sponsored links creates bad faith. Numerous UDRP panels repeatedly have agreed with this argument. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
Accordingly, the Panel finds that Complainants have proven the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names , , , , , , , , , , , , , , and be transferred to the Complainant.
Douglas M. Isenberg
Sole Panelist
Date: October 17, 2013
1 See also paragraph 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”): “A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include… discretionary referencing of trademark online databases.”
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