The Complainant is Domtar Inc. of Quebec, Canada, represented by Moore & Van Allen, PLLC, United States of America.
The Respondent is Vietnam Domain Privacy Services of Ho Chi Minh, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with April Sea Information Technology Corporation (“Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on July 30, 2018. On August 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 21, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 22, 2018, the Center notified the Parties in both English and Vietnamese that the language of the Registration Agreement for the Disputed Domain Name was Vietnamese. On August 22, 2018, the Complainant sent a response, reiterating their request for English to be the language of the proceeding. The Respondent did not reply.
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 the Respondent of the Complaint, and the proceedings commenced on September 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2018.
The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on October 2, 2018. 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 Domtar Inc., a Canada-based corporation. The trademark DOMTAR has been used by the Complainant since 1963 in connection with its paper-related products. The Complainant has registered the DOMTAR trademark for the paper-related goods and services under United States of America (“U.S.”) federal Registration Nos. 0797669, No. 0877808 and No. 4108905 since as early as October 19, 1965.
The Complainant, in connection with the operation of its business, operates a website at the domain name, which was registered on August 10, 1995.
The Respondent registered the Disputed Domain Name on May 23, 2006. The Disputed Domain Name used to resolve to a parking page containing Pay-Per-Click (“PPC”) links to paper-related products/ websites. As of the date of this Decision, the Disputed Domain Name is inactive.
The Complainant sent a cease and desist letter to the Respondent on March 15, 2018 by email and courier, requesting the transfer of the Disputed Domain Name free of charge. However, the Respondent did not respond to the cease and desist letter. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:
(i) The Disputed Domain Name is confusingly similar to the trademark in which the Complainant has rights.
Firstly, the Complainant contends that the Complainant’s DOMTAR trademark has been used in commerce since 1963 and registered under U.S. federal Registration Nos. 0797669, No. 0877808 and No. 4108905 for paper-related products since as early as October 19, 1965. In addition, the Complainant owns the domain name , which was registered on August 10, 1995.
Secondly, the Complainant contends that the Disputed Domain Name is confusingly similar to mark owned by the Complainant since the Disputed Domain Name reproduces entirely the registered trademark DOMTAR, and the addition of the descriptive term “paper” could not dispel any likelihood of confusion.
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that the elements set forth in Policy, paragraph 4(c) are not fulfilled.
First, the Respondent is neither a licensee of the Complainant, nor otherwise authorized to use the Complainant’s DOMTAR trademark.
Second, the Complainant contends that the Respondent has not made use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The Respondent had employed Sedo Domain Parking (“S”) for its website parking services. When accessing the Disputed Domain Name, Internet users were presented with a website unaffiliated with the Complainant that advertised the links to paper-related products unaffiliated with the Complainant.
Third, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. To the contrary, the Respondent used the Disputed Domain Name with the DOMTAR trademark without the Complainant’s authorization to provide sponsored links to paper-related websites. The improper association established between the Complainant, whose DOMTAR trademark is used in commerce for paper-related products, and the unrelated links advertising paper-related products of other manufacturers, also diluted and tarnished the DOMTAR trademark of the Complainant.
Further, the Complainant argues that there is no indication that the Respondent has been commonly known by the Disputed Domain Name.
Finally, the Respondent did not respond to the cease and desist letter sent on behalf of the Complainant to indicate if it had rights or legitimate interests in the Disputed Domain Name.
(iii) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant submits that the Respondent has registered and used the Disputed Domain Name in bad faith because the Disputed Domain Name is identical and/or confusingly similar to the Complainant’s DOMTAR trademark.
By the registration and use of the Disputed Domain Name, the Respondent intentionally attempts to attract Internet users, who intend to visit the Complainant’s website, but then are diverted to the parking page bearing links advertising paper-related products unaffiliated with the Complainant. The purpose of the registration and use of the Disputed Domain Name is to create confusion as to the source, sponsorship, affiliation, and/or endorsement of the Disputed Domain Name with that of the Complainant, with the intent to exploit Complaint’s goodwill in its DOMTAR trademark.
The Complainant contends that the Respondent is on notice of the Complainant’s rights to the DOMTAR trademark as the links in the parking page are advertising for paper-related products of the Complainant’s competitors.
Further use of the Disputed Domain Name will likely continue to improperly divert Internet users from the Complainant’s official website. Additionally, sale of the Disputed Domain Name by the Respondent to another would continue to cause a likelihood of confusion for Internet users who are interested in information from or about the Complainant and its products sold under the DOMTAR trademark.
As the three elements specified in paragraph 4(a) of the Policy are satisfied, the Complainant requests that the Disputed Domain Name be transferred to the Complainant. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Preliminary Matter: Language of Proceedings
The Complaint was filed in English on July 30, 2018. On August 21, 2018, the Registrar informed that the language of the Registration Agreement is Vietnamese, and the Center invited the Complainant to submit either (i) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English, or (ii) a translation of the Complaint in Vietnamese, or (iii) a substantiated request for English to be the language of the proceeding; and invited the Respondent to comment on the language of the proceeding.
On August 22, 2018, the Complainant sent the Center an email requesting for English to be the language of the proceeding in the Complaint. The Respondent did not give any comments on this issue.
>According to paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
Similar to previous UDRP decisions, the Panel finds that the spirit of paragraph 11(a) of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfortability with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors (see, e.g., Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679).
In the present case, in consideration of the above circumstances of the proceeding, including, but not limited to:
(i) the fact that the Complainant, a Canadian business entity, does not appear to be able to communicate in Vietnamese, and therefore, if the Complainant was required to have the documents translated into Vietnamese, the proceeding would be unduly delayed, and the Complainant would have to incur substantial expenses for translation; and
(ii) the English language is quite popular in Viet Nam, where the Respondent is located, the Disputed Domain Name is composed of English words and the website under the Disputed Domain Name contains English contents; these suggest that the Respondent has ample knowledge of the English language and be able to communicate quite well in English.
For the purpose of easy comprehension of the Complainant (the only party actively taking part in the proceeding) of the Panel’s decision without any necessity of translations, and in the interest of fairness to both Parties as well as the Panel’s obligation under paragraph 10(c) of the Rules, which provides that “the Panel shall ensure that the administrative proceeding takes place with due expedition”, the Panel hereby decides, under paragraph 11(a) of the Rules, that the language of the proceeding shall be English and shall render its decision in English. 6.2. Substantive Matters A. Identical or Confusingly Similar
First, the Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to DOMTAR. Also, the Complainant has sufficiently demonstrated and evidenced that it has a continuous use of its trademark for its commercial activities, and in particular to offer paper-related products bearing the mark DOMTAR in particular.
Second, the Disputed Domain Name comprises the Complainant’s DOMTAR trademark, in which the Complainant has exclusive rights. The difference between the Disputed Domain Name and the Complainant’s trademark is the addition of the suffix “paper”, which is a generic term for products under DOMTAR trademark. As such, the Panel finds that DOMTAR remains the dominant element in the Disputed Domain Name. It is well established that the addition of a generic term (such as “paper”) to a trademark does not prevent a finding of confusing similarity, as it was found in previous UDRP decisions (see, e.g., Compagnie Générale des Etablissements Michelin v. Balticsea LLC,WIPO Case No. D2017‑0308; Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyP / Yogesh Bhardwaj,WIPO Case No. D2017-1225).
Third, the Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (“gTLD”) “.com” to the Disputed Domain Name does not constitute an element that may help avoid confusing similarity (see, e.g., Volkswagen AG v. Privacy Protection Services,WIPO Case No. D2012-2066; The Coca-Cola Company v. David Jurkiewicz,WIPO Case No. DME2010-0008).
On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s DOMTAR trademark, and the first element under paragraph 4(a) of the Policy is established. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:
“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization of any kind to use the Complainant’s trademark has been granted to the Respondent and there is no evidence that the Respondent holds such rights. Thus, the Respondent has no rights in the trademark DOMTAR.
The Panel further finds that the Respondent was using the Disputed Domain Name for a parked page comprising Pay-Per-Click (“PPC”) links to paper-related products. Similar to previous UDRP decisions, the Panel is of the view that running a PPC page to capitalize on the reputation and goodwill of the Complainant’s DOMTAR trademark, cannot be considered a bona fide offering, especially where the PPC links refer to products of the Complainant’s competitors (see, e.g., Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyG / George Ring, DN Capital Inc.,WIPO Case No. D2017-0302; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao,WIPO Case No. D2016-2302).
Moreover, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name.
The Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge of the trademark and had an intention to gain profit by riding on the good reputation of the Complainant.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The second element under paragraph 4(a) of the Policy is established. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith”.
The Panel finds that the Complainant has put forth evidence that the Respondent has registered and used the Disputed Domain Name in bad faith. The Respondent did not reply to the Complainant’s contentions and, therefore, has not refuted the Complainant’s contentions.
The Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s DOMTAR trademark has been registered and used in commerce for quite a long period of time. Besides functioning as a trademark, DOMTAR is also being used in the Complainant’s domain name . The Complainant’s DOMTAR trademark and domain name well predate the registration of the Disputed Domain Name.
The Disputed Domain Name comprises the DOMTAR trademark in its entirety, adding only the generic term “paper”. Given the extensive use of the DOMTAR trademark by the Complainant and the inherent distinctiveness of the DOMTAR trademark itself, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name for advertising paper-related products, the Panel finds that the Respondent obviously knew of the Complainant and its DOMTAR trademark when it registered the Disputed Domain Name, and the Panel considers the registration as an attempt by the Respondent to take advantage of the Complainant’s goodwill.
On the date of this Decision, the Panel accesses the Disputed Domain Name and finds that it resolves to an inactive website. However, it is well proved and evidenced by the Complainant that before becoming inactive, the Disputed Domain Name had been used to host a parking page comprising PPC links to paper-related products of other manufacturers. The Panel is of the view that such use of the Disputed Domain Name constitutes bad faith of the Respondent, as it was found in previous UDRP decisions (see, e.g., Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,WIPO Case No. D2016-0344; Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyG / George Ring, DN Capital Inc.,WIPO Case No. D2017-0302).
With the said facts, the Panel finds that the Respondent intentionally registered and used the Disputed Domain Name for commercial gain and that the Respondent’s actual use of the Disputed Domain Name appears to mislead consumers and confuse them by making them believe that the parking page, and even the PPC links, are associated, fostered, endorsed or recommended by the Complainant. Such misleading behavior is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy, on the part of the Respondent.
Taking into account the above, the Panel finds that the Disputed Domain Name was registered and used by the Respondent in bad faith under paragraph 4(b)(iv) of the Policy, and the third element under paragraph 4(a) of the Policy is established. 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 the Complainant.
Pham Nghiem Xuan Bac
Sole Panelist
Date: October 16, 2018
Full & Egal Universal Law Academy