national arbitration forum

 

DECISION

 

Paper Denim & Cloth, LLC v. Douglas Anderson / douglasanderson

Claim Number: FA1202001427910

 

PARTIES

Complainant is Paper Denim & Cloth, LLC (“Complainant”), represented by Gary H. Fechter of McCarter & English, LLP, New York, USA.  Respondent is Douglas Anderson / douglasanderson (“Respondent”), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <paperdenimandcloth.org>, registered with eNom.com.

 

PANEL

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

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2012; the National Arbitration Forum received payment on February 2, 2012.

 

On February 3,2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <paperdenimandcloth.org> domain name is registered with eNom.com and that Respondent is the current registrant of the name.  eNom.com has verified that Respondent is bound by the eNom.com 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 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 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@paperdenimandcloth.org.  Also on February 7, 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 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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:

 

Complainant sells clothing and accessories under the PAPER DENIM & CLOTH trademark.

 

Complainant holds registrations for the PAPER DENIM & CLOTH trademark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,553,907, registered March 26, 2002).

 

Respondent registered the disputed <paperdenimandcloth.org> domain name on June 1, 2011.

 

The disputed domain resolves to a website meant to mimic Complainant’s site, including language and photos copied from Complainant’s site.

 

Respondent’s website also features links to third-party sites that compete with Complainant, including “Levi Strauss” and “Paige Premium Denim.”  

 

 

Respondent’s <paperdenimandcloth.org> domain name is identical to Com-plainant’s PAPER DENIM & CLOTH mark.

 

Complainant has never authorized Respondent’s use of the PAPER DENIM & CLOTH mark in a domain name.

 

Respondent is not commonly known by the disputed domain name.

 

Respondent does not have any rights to or legitimate interests in the domain name <paperdenimandcloth.org>.

 

Respondent registered and uses the <paperdenimandcloth.org> domain name in bad faith.

 

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

 

FINDINGS

(1)  the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and

(2)  Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)  the same domain name was registered and is being used by Respondent in bad faith.

 

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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:

 

i.      the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.     Respondent has no rights or legitimate interests in respect of the domain name; and

iii.    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has rights in the PAPER DENIM & CLOTH mark pursuant to Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO.  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO adequate to establish rights in a mark pursuant to Policy ¶ 4(a)(i));  see also 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).

 

The <paperdenimandcloth.org> domain name simply replaces the ampersand in Complainant’s PAPER DENIM & CLOTH mark with the word “and,” while also omitting the spaces between terms and affixing the generic top-level domain (“gTLD”) “.org.” Because all of these changes to Complainant’s mark, made in forming the contested domain name, are necessary for a functional domain name, Respondent has done nothing of consequence to distinguish its domain name from Complainant’s mark.  Accordingly, the <paperdenimandcloth.org> domain name is identical to Complainant’s PAPER DENIM & CLOTH mark for purposes of Policy ¶ 4(a)(i). See, for example, Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to a complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); further see Sea World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007):

 

[Since] [t]he top-level gTLD is merely a functional element required of every domain name, the … domain name is identical to the … mark under a Policy ¶ 4(a)(i).

 

The Panel therefore concludes that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Under Policy ¶ 4(a)(ii), Complainant has the initial burden of presenting a prima facie case in support of its assertion that Respondent has no rights to or legit-imate interests in the contested domain name.  If Complainant succeeds in this undertaking, the burden shifts to Respondent to prove that it does have such rights or interests.  See TotalFinaElf E&P USA, Inc. v. Farnes, FA 117028 (Nat. Arb. Forum Sept. 16, 2002):

 

In order to bring a claim under the Policy, Complainant must first establish a prima facie case. Complainant’s [initial burden] is to provide proof of valid, subsisting rights in a mark that is similar or identical to the domain name in question.

 

See also Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding, pursuant to Policy ¶ 4(c), that, once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name).

 

Complainant has satisfied its burden under this head of the Policy, while Respondent has failed to submit a response to the allegations of the Complaint filed in this proceeding.  We are therefore free to conclude, without more, that Respondent has no rights to or legitimate interests in the disputed domain name. See, for example, 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.

 

Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for conclud-ing that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.

 

We begin by observing that Complainant alleges, and Respondent does not deny, that Complainant has never authorized Respondent’s use of the PAPER DENIM & CLOTH mark in a domain name, and that Respondent is not commonly known by the disputed domain name.  Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Douglas Anderson / douglasanderson,” which does not resemble the <paperdenimandcloth.org> domain name.  On this record, we conclude that Respondent is not commonly known by the contested domain name so as to have demonstrated that it has rights to or legitimate interests in the domain as provided in Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights to or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark, and where it failed to submit evidence that it was commonly known by the disputed domain name); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).

 

We also note that Complainant alleges, without objection from Respondent, that Respondent uses the disputed domain name to resolve to a website meant to mimic Complainant’s site, which also features links to third-party sites that compete with the business of Complainant.  This use of the domain does not constitute 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 Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that, where a respondent attempts to pass itself off as a complainant online, in a blatant unauthorized use of a domain name that is confusingly similar to a

complainant’s mark, this is evidence that that respondent has no rights to or legitimate interests in the disputed domain name).

 

The Panel thus concludes that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s use of the disputed domain name as alleged in the Complaint disrupts Complainant’s business, and stands as evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007):

 

This Panel concludes that by redirecting Internet users seeking information on Complainant’s … [enterprise] … to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).

 

See also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of a disputed domain name pursuant to Policy ¶ 4(b)(iii) by using the domain to operate a search engine with links to websites offering the products of a complainant’s commercial competitors). 

 

 

Moreover, it is evident from the record that Respondent had actual knowledge of Complainant's rights in the PAPER DENIM & CLOTH mark at the time the disputed <paperdenimandcloth.org> domain name was registered.  This is evidence of bad faith registration and use of the domain under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that a respondent registered and used a domain name in bad faith under Policy ¶ 4(a)(iii), having concluded that that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").

 

For these reasons, the Panel concludes that Complainant has satisfied its obli-gations of proof under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.

 

Accordingly, it is Ordered that the <paperdenimandcloth.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  March 19, 2012

 

 

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