ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Twin Rivers Paper Company LLC v. Rhonda Caputo Case No. D2024-3321 1. The Parties The Complainant is Twin Rivers Paper Company LLC, United States of America (“United States”), represented by Soteria LLC, United States. The Respondent is Rhonda Caputo, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Hostinger Operations, UAB (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2024. On August 14, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2024, 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 (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 15, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 15, 2024. The Center verified that the Complaint together with the amended 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 August 22, 2024. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2024.
page 2 The Center appointed William F. Hamilton as the sole panelist in this matter on September 20, 2024. 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 an integrated specialty paper company that produces specialty packaging, technical, label, and publishing papers, as well as softwood lumber. The Complainant owns United States Trademark Registration No. 3884231, with a registration date of November 30, 2024, for the trademark TWIN RIVERS PAPER COMPANY (the “Mark”). The Complainant owns the domain name , which the Complainant utilizes as its principal website to promote its business. The disputed domain name was registered on June 26, 2024. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainant asserts the disputed domain name is confusingly similar to the Mark because the disputed domain name differs from the Mark only by adding an “s” to the word “twin,” eliminating the spaces between the words of the Mark and dropping the word “company”. The Complainant contends that the Complainant never authorized the Respondent to use the disputed domain name, that the Respondent is not generally known by the disputed domain name, never operated a business under the disputed domain name, has not advertised the disputed domain name, and never engaged in any bona fide commercial activity in connection with the disputed domain name. The Complainant asserts that the Respondent knew of the Mark and registered and used the disputed domain name in bad faith to disrupt the Complainant’s business and ultimately to lure unsuspecting Internet users into believing that the disputed domain name would resolve to a website sponsored, affiliated, or related to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (i) the disputed domain name 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 name; and (iii) the disputed domain name was registered and is being used in bad faith.
page 3 A. Identical or Confusingly Similar It is well-accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in the Mark for the purposes of the Policy by virtue of the Mark’s registration. WIPO Overview 3.0, section 1.2.1. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark because the disputed domain name is identical to the Mark except that the disputed domain adds an “s” to the word “twin,” eliminates the spaces between the words of the Mark and drops the word “company”. Confusing similarity may be established for the purposes of the Policy where a dominant feature of the relevant mark is recognizable in the domain name. WIPO Overview 3.0, section 1.7. In this case, the Mark is clearly recognizable in the disputed domain name, notwithstanding the minor differences between the disputed domain name and the Mark. Adding the letter “s” to the word “twin” is a common typo, which does not prevent the finding of confusing similarity. The Top-Level Domain of the disputed domain name, in this case “.com”, may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1 and Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. The Panel finds on the evidence that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has expressly disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name. The Respondent has failed to provide evidence showing rights or legitimate interests in the disputed domain name. The disputed domain name will likely confuse unsuspecting Internet users seeking or expecting the Complainant. Such association seems to have been the intent of the Respondent given the close resemblance between the Mark, the Complainant’s domain name and the disputed domain name. Such utilization of a disputed domain name can never establish rights or legitimate interests. Moreover, the passive holding of a domain name incorporating a well-known trademark without clear intent for bona fide use does not confer rights or legitimate interests.
page 4 The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following non-exhaustive scenarios: (i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent 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 respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the 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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. The Panel finds that the disputed domain name was registered and is being used in bad faith. The evidence shows that the Complainant’s Mark was registered 15 years before the disputed domain name was registered. It is inconceivable that the Respondent, when registering the disputed domain name, innocently replicated the prominent features of the Mark. It is beyond any reasonable doubt that by prominently featuring the dominant part of the Complainant’s Mark in the disputed domain, the Respondent intended to deceive Internet users seeking or expecting the Complainant. See Dm-Drogerie Markt GmbH & Co. KG v. WhoisGuard Protected, WhoisGuard, Inc. / Charlotte Meilleur, WIPO Case No. D2018-1248. The “passive holding” and apparent non-use of the disputed domain name does not prevent a finding of bad faith under the totality of circumstances presented in this case, including but not limited to the distinctiveness of the Mark, the failure of the Respondent to provide any evidence of contemplated good faith use and the use of a privacy shield when registering the disputed domain name. WIPO Overview 3.0, section 3.3. The Panel notes that Internet users encountering an inactive page at the disputed domain name may be led to believe that the Complainant's business has ceased operations or undergone significant changes. This potential for disruption to the Complainant's online presence further supports a finding of bad faith use. The Panel finds that the Complainant has established 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 the Complainant. /William F. Hamilton/ William F. Hamilton Sole Panelist Date: October 4, 2024
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