Complainant is Georgia-Pacific Consumer Products LP, Atlanta, Georgia, United States of America, internally represented.
Respondent is Whois Privacy Services Pty Ltd. of Fortitude Valley, Queensland, Australia / Domain Hostmaster of Berlin, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with F (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 16, 2013. On August 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 20, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 23, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an Amendment to the original Complaint on August 23, 2013.
The Center verified that the Complaint together with the amendment 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, and the proceedings commenced on August 28, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 19, 2013.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 2, 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
The Complainant is a leading manufacturer and marketer of tissue, packaging, paper, pulp, building products, and related chemicals. The Complainant is the owner of numerous registrations in the United States and elsewhere for the trademark BRAWNY, used primarily for paper towels and related products. The Complainant has used the BRAWNY trademark since at least 1977, and the trademark has become a widely recognized consumer brand for the Complainant.
It appears from the record before the Panel that the disputed domain name was registered on February 12, 2004.
The disputed domain name resolves to a parked website containing advertising links to other websites relating to paper towels and similar products, including not only the Complainant’s BRAWNY products but also the products of a number of the Complainant’s competitors. 5. Parties’ Contentions A. Complainant
The Complainant maintains that the disputed domain name is identical to its BRAWNY mark, in which the Complainant asserts rights both through registration and through continuous use since at least 1977.
According to the Complainant, the BRAWNY mark is well known in the business service and product industry and well recognized publicly, such that it is unlikely that the Respondent would not have been aware of the BRAWNY mark when registering the disputed domain name. In addition adding the terms “paper towels” to the disputed domain name does not avoid the likelihood of confusion, but rather adds to it since Complainant sells BRAWNY paper towels.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. Respondent has no relationship with Complainant and Complainant has not authorized the Respondent to use the trademark in the disputed domain name.
There is no evidence that the Respondent owns trademark registrations for BRAWNY, the term “Brawny” does not serve as the Respondent’s trade name or business identity, and Respondent is not licensed or authorized to use the Complainant’s marks or sell Complainant’s products.
Further, according to Complainant, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but instead registered and is using a domain name identical to the Complainant’s well-known mark in order to drive Internet traffic to a website with pay-per-click links to third party websites providing goods or services competitive with Complainant’s goods or services.
In view of the foregoing, Complainant contends that Respondent registered and is using the disputed domain name in bad faith by intentionally attempting for commercial gain to attract Internet users to Respondent’s website by causing confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.
In addition, Respondent is using the disputed domain name with embedded Complainant trademark as metatag. Such use of Complainant’s trademark demonstrates an effort to divert Internet traffic away from Complainant in violation of paragraph 4(b)(iv) of the Policy.
Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant provided evidence that it has prior registered rights in the trademark BRAWNY in at least the United States and Europe.
The words “paper” and “towels” are used within the disputed domain name. Previous UDRP panels have held that adding common terms to a registered trademark and registering the result as a domain name does not mitigate the confusing similarity between a domain name and a trademark.
Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) Before receiving any notice of the dispute, Respondent used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent has been commonly known by the disputed domain name; or
(iii) Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
Based on Respondent’s default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has not licensed nor authorized the use of its trademark to Respondent, and there is no indication that Respondent is commonly known by the disputed domain name.
The present record provides no evidence to demonstrate Respondent’s intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the webpage that is published at the disputed domain name constitutes use in bad faith of the disputed domain names as explained in the next section of this Decision.
Consequently, the Panel is satisfied that Respondent has no rights or legitimate interests in the disputed domain name, and Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) Circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location
It is the view of the Panel that the Respondent knew of the Complainant at the time of registering the disputed domain name. The Respondent registered a domain name composed of the trademark BRAWNY and the generic terms “paper” and “towels”. Both generic terms have an obvious connection with Complainant because they describe the products that Complainant sells under the trademark BRAWNY.
Thus, it is the view of the Panel that this is clear and direct evidence of bad faith registration of the disputed domain name.
The disputed domain name resolves to a parked website containing advertising links to other websites relating to paper towels and similar products, including not only Complainant’s BRAWNY products but also the products a number of Complainant’s competitors
It is the view of the Panel that in doing so, Respondent intentionally attempts to attract, for commercial gain, Complainant’s costumers to its website and creates a likelihood of confusion with Complainant’s mark as to the source of its website.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying 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 name be transferred to Complainant.
Pablo A. Palazzi
Sole Panelist
Date: October 21, 2013
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