CTI Paper Group, Inc. v. Fred Blustein
Claim Number: FA0804001177486
Complainant is CTI Paper Group, Inc. (“Complainant”), represented by Karl
S. Kronenberger, of Kronenberger Burgoyne, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aspirepetallics.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On April
16, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 6, 2008
by which Respondent could file a
response to the Complaint, was transmitted to Respondent via e-mail, post and
fax, to all entities and persons listed on Respondent's registration as
technical, administrative and billing contacts, and to postmaster@aspirepetallics.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <aspirepetallics.com> domain name is confusingly similar to Complainant’s ASPIRE and PETALLICS marks.
2. Respondent does not have any rights or legitimate interests in the <aspirepetallics.com> domain name.
3. Respondent registered and used the <aspirepetallics.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CTI Paper Group, Inc.,
was founded in 1989. Complainant is a
leading manufacturer and distributor of specialty paper products. Complainant holds a trademark registration
with the United States Patent and Trademark Office (“USPTO”) for the PETALLICS
mark (Reg. No. 2,986,321 issued
Respondent registered the disputed domain name on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant registered the PETALLICS mark with the USPTO,
and therefore established rights to the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb.
Forum June 29, 2007) (“As the [complainant’s] mark is registered with the
USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685
(Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had
established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by
registering the marks with the USPTO). Although
Complainant’s trademark in ASPIRE has not yet been approved by the USPTO,
trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i). See
Complainant has
filed a trademark registration with the USPTO for the ASPIRE mark. The Panel finds that the filing date along
with the unrefuted evidence that the mark has acquired secondary meaning is sufficient
to establish common law rights in the mark under Policy ¶ 4(a)(i). See Tuxedos By Rose v.
Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights
in a mark where its use was continuous and ongoing, and secondary meaning was
established); see also Nat’l Ass’n of Prof’l Baseball Leagues v.
Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the
complainant had provided evidence that it had valuable goodwill in the
<minorleaguebaseball.com> domain name, establishing common law rights in
the MINOR LEAGUE BASEBALL mark).
Complainant contends that the <aspirepetallics.com>
domain name is confusingly similar to the ASPIRE and PETALLICS marks. By combining two marks in which Complainant
has rights, Respondent has not sufficiently differentiated the disputed domain
name from Complainant’s marks. See Nintendo
of Am. Inc. v. Pokemon, D2000-1230 (WIPO
Therefore, the Panel finds that the <aspirepetallics.com> domain name is confusingly similar to Complainant’s ASPIRE and PETALLICS marks pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent has neither rights nor legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Complainant has the initial burden of showing Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case showing that Respondent lacks rights and legitimate interests, the burden shifts to Respondent to show that it does have rights or legitimate interests in the <aspirepetallics.com> domain name. The Panel finds that Complainant has met the initial burden of showing that Respondent lacks rights and legitimate interests, and therefore has made a prima facie case under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“[I]t is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.”).
Because Respondent failed to answer the Complaint, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that Respondent has never been
authorized to use the ASPIRE and PETALLICS marks, and that Respondent is not
and has never been commonly known by the disputed domain name. Further, the WHOIS information does not
indicate that Respondent is commonly known by the disputed domain name. Thus, the Panel finds that Respondent is not
commonly known by the <aspirepetallics.com> domain name pursuant
to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum
Respondent is using the <aspirepetallics.com> domain name to redirect Internet users to websites of third-party competitors. The Panel finds that such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the <aspirepetallics.com>
domain name to commercially gain by redirecting Internet users to a competing
website constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA
198805 (Nat. Arb. Forum
Complainant contends that Respondent is using the <aspirepetallics.com>
domain name for commercial gain by redirecting Internet users to competing
services, and benefiting from the likely confusion between Complainant’s marks
and the disputed domain name. The Panel
finds that the similarity between the disputed domain name and the ASPIRE and
PETALLICS marks are likely to create confusion as to Complainant’s source,
sponsorship, affiliation, or endorsement of the website that resolves from the
disputed domain name, which constitutes bad faith registration and use under
Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat.
Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use
and registration by using domain names that were identical or confusingly
similar to the complainant’s mark to redirect users to a website that offered
services similar to those offered by the complainant);
see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb.
Forum Nov. 20, 2003) (“Respondent registered and used the
<my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii)
and (iv) because Respondent is using a domain name that is confusingly similar
to the MYSEASONS mark for commercial benefit by diverting Internet users to the
<thumbgreen.com> website, which sells competing goods and services.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aspirepetallics.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 21, 2008
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