national arbitration forum

 

DECISION

 

The Paper Mill Store, Inc. v. Daniel Blustein

Claim Number: FA1005001323582

 

PARTIES

Complainant is The Paper Mill Store, Inc. (“Complainant”), represented by Matthew M. Thomson, of Kronenberger Burgoyne, LLP, California, USA.  Respondent is Daniel Blustein (“Respondent”), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <thepapermillstores.com> and <papermillstores.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 7, 2010.

 

On May 9, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <thepapermillstores.com> and <papermillstores.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On May 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thepapermillstores.com and postmaster@papermillstores.com by e-mail.  Also on May 14, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 9, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1.  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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <thepapermillstores.com> and <papermillstores.com> domain names are confusingly similar to Complainant’s THE PAPER MILL STORE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <thepapermillstores.com> and <papermillstores.com> domain names.

 

3.      Respondent registered and used the <thepapermillstores.com> and <papermillstores.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, The Paper Mill Store, Inc., was founded in 2004 as an Internet retailer for specialty paper and envelope products.  Complainant subsequently filed for and received a trademark registration with the United States Patent and Trademark Office ("USPTO") for its THE PAPER MILL STORE mark (Reg. No. 3,509,395 issued September 20, 2008).

 

Respondent, Daniel Blustein, registered the <thepapermillstores.com> and <papermillstores.com> domain names on November 26, 2009.  Respondent’s disputed domain names resolves to Respondent’s official <source-envelope.com> website that offers competing products to Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant has submitted evidence to show that it possesses rights in its THE PAPER MILL STORE mark, through its trademark registration with the USPTO (Reg. No. 3,509,395 issued September 20, 2008).  The Panel finds that Complainant’s trademark registration with the USPTO is sufficient evidence that Complainant possesses rights in its THE PAPER MILL STORE mark under Policy ¶ 4(a)(i).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

   

Respondent’s <thepapermillstores.com> and <papermillstores.com> domain names are confusingly similar to Complainant’s THE PAPER MILL STORE mark. Respondent’s <thepapermillstores.com> domain name merely deletes the spaces between the words of its mark, adds the letter “s” to the “store” portion of its mark, and adds the generic top-level domain (“gTLD”) “.com.”  Respondent’s <papermillstores.com> domain name deletes the term “the” from its mark, deletes the spaces between the words of its mark, adds the letter “s,” and the gTLD “.com.”  The changes that Respondent has made to its mark are not sufficient to render the disputed domain names distinct from Complainant’s mark.  The Panel therefore finds that Respondent’s <thepapermillstores.com> and <papermillstores.com> domain names are confusingly similar to Complainant’s THE PAPER MILL STORE mark under Policy ¶ 4(a)(i).  See Mega Soc. v. LoSasso, FA 215404 (Nat. Arb. Forum Jan. 30, 2004) (finding that the <megasociety.net> and <megasociety.com> domain names were identical or confusingly similar to Complainant's THE MEGA SOCIETY mark); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

 

The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).  

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not possess rights or legitimate interests in the <thepapermillstores.com> and <papermillstores.com> domain names.  Complainant is required to produce a prima facie case in support of these allegations.  Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to display that it does possess rights or legitimate interests in the disputed domain names.  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).  The Panel finds that Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <thepapermillstores.com> and <papermillstores.com> domain names.  Respondent has failed to respond to these proceedings, and the Panel may infer that Respondent lacks rights and legitimate interests in the disputed domain names.  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 Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).  However, the Panel will analyze the evidence on record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). 

 

Complainant argues that Respondent was not commonly known by the disputed domain names or any variation of Complainant’s mark before Respondent registered the disputed domain names on November 26, 2009.  Further, Complainant contends that it has never authorized or licensed Respondent to use Complainant’s THE PAPER MILL STORE mark.  The WHOIS information for the disputed domain names identifies “Daniel Blustein” as the registrant, and Respondent has offered no evidence to refute Complainant’s claims.  Therefore, the Panel finds that Respondent is not commonly known by the <thepapermillstores.com> and <papermillstores.com> domain names pursuant to Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant alleges that Respondent is using the disputed domain names to resolve to Respondent’s competing business website located at <source-envelope.com>, where specialty papers and envelopes are displayed for sale.  Complainant contends that Respondent’s use of the confusingly similar domain names to market Respondent’s competing business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.  The Panel finds that Respondent’s use of the disputed domain names to resolve to Respondent’s competing website is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).             

 

Registration and Use in Bad Faith

 

Respondent registered the <thepapermillstores.com> and <papermillstores.com> domain names to disrupt the business operations of Complainant in bad faith. Respondent’s disputed domain names resolve to Respondent’s official <source-envelope.com> website that it is in direct competition with Complainant in the specialty paper and envelope market.  Respondent’s diversion of Internet users seeking Complainant’s business to Respondent’s competing website and business in evidence of bad faith registration and use.  The Panel therefore finds that Respondent’s registration and use of the disputed domain names was made in bad faith pursuant to Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).

 

Respondent is using the confusingly similar disputed domain names to profit from Internet users’ mistaken belief that they are at the website of Complainant.  Respondent’s intent to attract Internet users who are seeking Complainant’s business to Respondent’s competing website is further evidence of Respondent’s bad faith registration and use.  The Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv), where Respondent is using variations of Complainant’s THE PAPER MILL STORE mark to attract Internet users to Respondent’s competing commercial website for financial gain.  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).

 

The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).  

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <thepapermillstores.com> and <papermillstores.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  June 17, 2010

 

 

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