national arbitration forum

 

DECISION

 

Georgia-Pacific Consumer Products LP v. Sarah Johnson

Claim Number: FA1010001351491

 

PARTIES

Complainant is Georgia-Pacific Consumer Products LP ("Complainant"), represented by Alison Davis Frey, Texas, USA.  Respondent is Sarah Johnson ("Respondent"), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <enmotionpapertowel.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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2010; the National Arbitration Forum received payment on October 12, 2010.

 

On October 11, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <enmotionpapertowel.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 12, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@enmotionpapertowel.com.  Also on October 12, 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 November 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <enmotionpapertowel.com> domain name is confusingly similar to Complainant’s ENMOTION mark.

 

2.      Respondent does not have any rights or legitimate interests in the <enmotionpapertowel.com> domain name.

 

3.      Respondent registered and used the <enmotionpapertowel.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Georgia-Pacific Consumer Products LP, markets and sells paper towels, tissues and napkin products throughout the world.  Complainant has a registered trademark for its ENMOTION mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,834,670 issued April 20, 2004).

 

Respondent, Sarah Johnson, registered the <enmotionpapertowel.com> domain name on May 15, 2010.  The disputed domain name resolves to a website containing information about paper towel dispensers and also contains links to Complainant’s website as well as third-party websites. 

 

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 must establish two requirements under Policy ¶ 4(a)(i); that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks. 

 

Complainant alleges it has established rights in the ENMOTION mark based on its prior registration of the mark with the USPTO (e.g., Reg. No. 2,834,670 issued April 20, 2004).  Complainant notes that previous panels have concluded that registration with a federal authority is sufficient to establish rights in a mark.  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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).  Based on the aforementioned, the Panel concludes that Complainant’s registration of its ENMOTION mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i). 

 

Complainant alleges that Respondent’s <enmotionpapertowel.com> domain name is confusingly similar to Complainant’s ENMOTION mark.  The disputed domain name incorporates Complainant’s ENMOTION mark in its entirety with the added descriptive terms “paper” and “towel” to the end of Complainant’s mark.  Additionally, the disputed domain name includes the generic top-level domain (“gTLD”) “.com.”  Complainant alleges that the addition of generic terms and gTLD to Complainant’s mark fail to distinguish Respondent’s domain name from Complainant’s ENMOTION mark.  See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

The Panel finds Policy ¶ 4(a)(i) has been established. 

 

Rights or Legitimate Interests

 

Complainant contends Respondent lacks rights and legitimate interests in the <enmotionpapertowel.com> domain name.  Previous panels have found that a complainant making a prima facie showing in support of its allegations shift the burden to the respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds that because Respondent failed to make a timely response and because Complainant has made a prima facie showing, the Panel may assume that Respondent lacks rights or legitimate interests in the <enmotionpapertowel.com> domain name.  However, the Panel will examine whether the record shows Respondent has rights or legitimate interests in the <enmotionpapertowel.com> domain name under Policy ¶ 4(c).  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Complainant argues that Respondent is not commonly known by the <enmotionpapertowel.com> domain name.  Respondent has not alleged any evidence supporting a finding that it is known by the disputed domain name and the Panel finds no evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed domain name.  The WHOIS information identifies the registrant of the disputed domain name as “Sarah Johnson,” which Complainant argues is not similar to the disputed domain name.  Complainant further alleges that is has not authorized or licensed Respondent to use or register the its esablished ENMOTION mark.  Accordingly, the Panel finds that Respondent is not commonly known by the <enmotionpapertowel.com> domain name under Policy ¶ 4(c)(ii).  See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

The disputed <enmotionpapertowel.com > domain name resolves to a website offering services that compete with Complainant.  Specifically, Respondent uses the disputed domain name to discuss Complainant’s paper products, link Internet users to Complainant’s products, and to post hyperlinks promoting third-party websites.  Complainant alleges Respondent financially benefits from these advertisements and links.  The Panel finds that Respondent’s use of a confusingly similar disputed domain name to operate a website featuring links and advertisements is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See 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).”); see also 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)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

 

Finally, Complainant argues that Respondent’s uses the ENMOTION mark to redirect Internet users to Respondent’s <enmotionpapertowel.com> domain name for commercial profit.  Complainant alleges that Respondent has created a situation that confuses Internet users into thinking that Complainant sponsors, or is affiliated with Respondent, or Respondent’s domain name and resolving website.  The Panel finds that such use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).   

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

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 <enmotionpapertowel.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  November 17, 2010

 

 

 

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