Paper Denim & Cloth, LLC v. Lee Gientke
Claim Number: FA1201001427220
Complainant is Paper Denim & Cloth, LLC (“Complainant”), represented by Gary H. Fechter of McCarter & English, LLP, New York, USA. Respondent is Lee Gientke (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <paperdenim.org>, registered with Moniker Online Services LLC.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 30, 2012; the National Arbitration Forum received payment on January 30, 2012.
On February 1, 2012, Moniker Online Services LLC confirmed by e-mail to the National Arbitration Forum that the <paperdenim.org> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 February 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2012 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@paperdenim.org. Also on February 13, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 March 9, 2012, 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 (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <paperdenim.org> domain name is confusingly similar to Complainant’s PAPER DENIM & CLOTH mark.
2. Respondent does not have any rights or legitimate interests in the <paperdenim.org> domain name.
3. Respondent registered and used the <paperdenim.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the PAPER DENIM & CLOTH mark and holds a trademark registration for the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,553,907 registered March 26, 2002). Complainant uses the mark in connection with the sale of apparel, eyewear, footwear and clothing.
Respondent registered the <paperdenim.org> domain name on September 3, 2008. Respondent uses the domain name for a website that is nearly identical to Complainant’s former website, and to sell Complainant’s products without authorization.
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."
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.
(4) 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.”).
The Panel finds that, due to Complainant’s trademark registrations with the USPTO, Complainant has successfully established rights in its PAPER DENIM & CLOTH mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (determining that registering a mark with the USPTO serves to establish rights in the mark); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Respondent’s <paperdenim.org> domain name is confusingly similar to its PAPER DENIM & CLOTH mark. By removing one word of the mark (“cloth”), removing the spaces between the words and the ampersand symbol, and adding the generic top-level domain (“gTLD”) “.org,” Respondent has not distinguished the disputed domain name from the mark. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel determined that a domain name is confusingly similar to the complainant’s mark when the domain name omits one word of the mark. Further, in PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000), the panel held that the ampersand symbol is not reproducible in a domain name, thus the domain name was similar to complainant’s mark if the ampersand symbol was removed. Similarly, the panels in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), and Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), concluded that the addition of a gTLD is not relevant to a Policy ¶ 4(a)(i) analysis because all domain names require a top-level domain. The Panel thus finds that the disputed domain name is confusingly similar to Complainant’s mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the <paperdenim.org> domain name and that Respondent has no authorization to use the mark. Complainant contends that the WHOIS information identifies the domain name registrant as “Lee Gientke,” which does not indicate that Respondent is commonly known by the domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name for the purposes of 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 Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Complainant argues that Respondent’s uses the <paperdenim.org> domain name to link to a website that is nearly identical to Complainant’s former Internet retail site, which sold men and women’s apparel, handbags, accessories, eyewear, and jewelry. Complainant submits screenshots of the corresponding website, and claims a consumer cannot distinguish Respondent’s current website from Complainant’s actual former website. Complainant claims Respondent’s attempt to pass itself off as Complainant’s business indicates that Respondent is not making a legitimate noncommercial or fair use of the domain name. The Panel agrees and finds that the website resolving from the disputed domain name is an exact copy of Complainant’s former website, and that Respondent is attempting to pass itself off as Complainant. This demonstrates that Respondent is not making a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156521 (Nat. Arb. Forum May 30, 2003) (finding that when the respondent’s use of the domain name to create a website that duplicated the complainant’s logo amounted to respondent attempting to pass itself off as the complainant online and determined such unauthorized use of the mark to be evidence that the respondent had no rights or interests in the disputed domain name); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent uses the <paperdenim.org> domain name to host a website that links to an unauthorized site selling Complainant’s products and misleads consumers by suggesting an affiliation with Complainant. The Panel finds that creating confusion as to Complainant’s affiliation with the disputed domain name in order to sell Complainant’s products without authorization is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (determining that “use of domain names to sell Complainant’s goods and services without Complainant’s authority is bad faith use of a confusingly similar domain name”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Respondent’s resolving website is virtually identical to Complainant’s former website, which indicates that Respondent is attempting to pass itself off as Complainant. Respondent attempts to benefit from Complainant’s reputation associated with the mark, evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
Complainant argues that its trademark registrations for the PAPER CLOTH & DENIM mark exists on the register of the USPTO, and that as a result, Respondent has constructive knowledge of Complainant's rights in the mark. While constructive notice does not by itself lead to a finding of bad faith registration and use, the Panel finds that the screen shots of Respondent’s resolving websites, which mimics Complainant’s previous website, indicate that Respondent had actual notice of Complainant's mark. Therefore, the Panel finds further evidence of bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed); see also The Am. Auto. Assoc., Inc. v. Zag Media Corp., FA 1226952 (Nat. Arb. Forum Nov. 13, 2008) ("Mere constructive knowledge is insufficient to support a finding of bad faith.").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <paperdenim.org> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 16, 2012
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