Complainant is Sealed Air Corporation of Elmwood Park, New Jersey, United States of America (“United States” or “US”), represented by Nelson Mullins Riley & Scarborough, L.L.P., United States.
Respondent is Ruth Stoneking, Vail Resorts Management Company of San Diego, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2016. On November 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 2, 2016 and November 7, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 29, 2016.
The Center appointed Michael A. Albert as the sole panelist in this matter on December 5, 2016. 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 a multi-national company that manufactures products in the field of food safety and security, facility hygiene, and product protection. Complainant has used SEALED AIR internationally in connection with its goods for decades. Complainant owns numerous US and international trademark registrations for SEALED AIR alone, including three US registrations that have become uncontestable under 15 U.S.C. § 1065: SEALED AIR (Registration No. 925912) (registered December 21, 1971); SEALED AIR (Registration No. 1580890) (registered February 6, 1990); and SEALED AIR (Registration No. 2534715) (registered January 29, 2002). The earliest date of Complainant’s US registrations is from 1971.
Complainant has a global market base with over 25,000 employees located in 175 countries, including the United States. Last year, Complainant generated approximately USD 7 billion in sales.
The disputed domain name, , was registered with PDR Ltd. d/b/a PublicDomainR on September 26, 2016. 5. Parties’ Contentions A. Complainant
Complainant alleges that the disputed domain name is identical or confusingly similar to Complainant’s SEALED AIR mark because the disputed domain name incorporates Complainant’s mark in its entirely and merely adds “-corp” to the end of the domain name.
Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name because the disputed domain name, , is not a functioning website but was used by Respondent to generate and cloak scam email addresses intended to deceive recipients into thinking the emails were from Complainant. Complainant further asserts that it has not authorized, licensed, or otherwise permitted Respondent to use its SEALED AIR trademarks or to apply for any domain name incorporating the marks.
Finally, Complainant alleges that Respondent has never been commonly known under the disputed domain name, and is not using the disputed domain name in connection with any bona fide offering of products or services. Complainant asserts that Respondent registered and is using the disputed domain name in a bad faith attempt to operate an email or social engineering scam. Complainant also asserts that Respondent’s registration of a domain name that is confusingly similar to its well-known and incontestable trademarks indicates bad faith by Respondent. Complainant alleges that Respondent’s use of a false address in its WhoIs database registration is evidence of Respondent’s bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In rendering its decision, the Panel must adjudicate the dispute in accordance with paragraph 15(a) of the Rules which provides that: “[The] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 14(b) of the Rules further provides that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.” Paragraph 5(f) of the Rules further provides that: “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”
The failure of Respondent to respond does not automatically result in a favorable decision to Complainant, which is specifically required under paragraph 4(a) of the Policy to establish each of the three elements as provided therein.
The Panel finds that Complainant has met each of the elements required by the Policy. In particular, the disputed domain name is confusingly similar to Complainant’s marks, Respondent has no rights or legitimate interests in the disputed domain name, and Respondent registered and used the disputed domain name in bad faith. Each of the three elements are assessed in detail below. A. Identical or Confusingly Similar
Complainant has demonstrated rights to the SEALED AIR trademark. Complainant has obtained numerous trademark registrations for SEALED AIR in 71 countries, including three incontestable registrations from the United States Patent and Trademark Office, and established a strong presence in the market in the field of food safety and security, facility hygiene, product protection, and related goods under the incorporated entity “Sealed Air Corporation”.
The addition of the weak term “-corp” to Complainant’s trademark is insufficient to distinguish the disputed domain name from Complainant’s mark and its domain name . Moreover, individuals encountering the disputed domain name or receiving emails operated from the disputed domain name are likely to be confused, believing the website is connected with Complainant or a licensee of its mark. See e.g., Celgene Corporation v. Kerry A. Simpson,WIPO Case No. D2016-0757 (disputed domain name “confusingly similar because the disputed domain name incorporates Complainant's CELGENE mark in its entirety, adding only an abbreviation for Complainant's corporate suffix, ‘corp’”). The consensus view, with which the Panel concurs, is that “[n]either the addition of an ordinary descriptive word (either as prefix or suffix) nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark […]”. Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The consensus view, with which the Panel agrees, is that while the overall burden of proof is borne by Complainant, when a complainant is (as here) faced with the impossible task of proving a negative, it need only make out a prima facie case before the burden of production shifts to the respondent. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141.
Here, Complainant first registered its SEALED AIR mark in the United States in 1971. The SEALED AIR mark is associated with the product protection, food safety and security, and hygienic products manufactured and sold by Complainant, and is known in these markets.
Respondent has no rights to or legitimate interests in the disputed domain name. Complainant has not authorized, licensed, or otherwise permitted Respondent to use its SEALED AIR mark or to apply for any domain name incorporating its trademark. Further, Respondent has never been commonly known under the disputed domain name. Nor is Respondent using the disputed domain name in connection with any bona fide offering of products or services. Complainant provided evidence that the sole purpose of the disputed domain name is the creation of confusingly similar email handles to deceive recipients into sending products intended for Complainant to Respondent. Such use demonstrates that Respondent uses the disputed domain name to derive a commercial benefit.
Respondent’s failure to respond, coupled with Complainant’s prima facie case, are indicative that Respondent has no rights or legitimate interests in the disputed domain name. Spencer Douglass, MGA v. Bail Yes Bonding,WIPO Case No. D2004-0261 (absence of authorization of use of trademark constitutes a prima facie showing under paragraph 4(a)(ii) of the Policy).
The Panel finds that Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Complainant’s reputation in its field, extensive international and US trademark registrations for SEALED AIR, and presence on the Internet at suggest a sufficiently widespread footprint such that Respondent can be presumed (absent contrary evidence, of which there is none) to have known of the SEALED AIR mark prior to registering the disputed domain name. Respondent’s registration and use of the disputed domain name to send emails to customers and potential customers, using the name of Complainant’s corporate entity in the signature line, was an attempt to convince recipients that the site is in some way associated with, authorized by, or connected to Complainant. Respondent’s use of the disputed domain name is thus apparently designed to misdirect Complainant’s actual or potential customers. See Caesars World, Inc. v. Forum LLC.,WIPO Case No. D2005-0517. This pattern of conduct demonstrates bad faith on the part of Respondent. See Wikimedia Foundation Inc. v. Kevo Ouz a/k/a Online Marketing Realty,WIPO Case No. D2009-0798; Playboy Enterprises International, Inc. v. Tom Baert,WIPO Case No. D2007-0968.
The Panel finds that Complainant has satisfied paragraph 4(a)(iii) 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.
Michael A. Albert
Sole Panelist
Date: December 15, 2016
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