national arbitration forum

 

DECISION

 

Georgia-Pacific Consumer Products LP v. Andre Joventus

Claim Number: FA1204001440693

 

PARTIES

Complainant is Georgia-Pacific Consumer Products LP (“Complainant”), represented by Alexander Garcia of Holland & Hart LLP, Colorado, USA.  Respondent is Andre Joventus (“Respondent”), Indonesia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <angelsofttoiletpaper.info>, registered with GoDaddy.com, LLC.

 

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2012; the National Arbitration Forum received payment on April 24, 2012.

 

On April 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <angelsofttoiletpaper.info> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 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@angelsofttoiletpaper.info.  Also on April 25, 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 May 18, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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

Complainant contends as follows:

 

Georgia-Pacific Consumer Products LP (“Complainant” or “GP”) and its affiliated companies, is one of the world’s most widely recognized and respected manufacturers and marketers of tissue, towels, napkins, soaps, air fresheners, and related dispensers and brings this action to protect its rights in the mark ANGEL SOFT®.

 

Complainant registered the ANGEL SOFT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 781,414 registered December 8, 1964). Complainant owns a large global portfolio of ANGEL SOFT® trademarks which are registered and used in connection with bathroom tissues and facial tissues and the ANGEL SOFT® trademark is one of the most famous and well-known brands in its product category.

 

Respondent’s disputed domain name is confusingly similar to Complainant’s ANGEL SOFT mark.

 

Respondent is not related to Complainant nor authorized to use Complainant’s ANGEL SOFT trademark.

 

Respondent’s domain name resolves to a pay-per-click website offering links to third-party websites, some of which resolve to Complainant’s competitors, alongside information about Complainant’s products.

 

Respondent is not commonly known by the disputed domain name.

 

Respondent has registered and is using the disputed domain name in bad faith.

 

Respondent’s disputed domain name disrupts Complainant’s business.

 

Respondent derives commercial gain from the website to which the disputed domain name resolves.

 

Respondent had actual or constructive knowledge of Complainant’s rights in its ANGEL SOFT mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant has and had trademark rights in the ANGEL SOFT mark at all times relevant to this proceeding.

 

Respondent registered the <angelsofttoiletpaper.info> domain name on February 14, 2012.

 

Respondent was aware of Complainant’s ANGEL SOFT mark at the time the domain name was registered.

 

Complainant has not authorized Respondent to use its ANGEL SOFT trademark in any manner whatsoever.

 

Respondent is not commonly known by the at-issue domain name.

Respondent does not use the at-issue domain name in connection with a bona fide business.

 

The at-issue domain name references a website that displays links to Complainant’s competitors.

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

Respondent’s at-issue domain name is confusingly similar to a mark in which Complainant has rights.

 

As evidenced by its multiple trademark certificates, Complainant demonstrates rights in the ANGEL SOFT mark under Policy ¶ 4(a)(i) by having registered it with the USPTO (e.g., Reg. No. 781,414 registered December 8, 1964).  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).”); The fact that Respondent may reside in a jurisdiction that is foreign to the place of Complainant’s trademark registration is inconsequential. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Respondent’s <angelsofttoiletpaper.info> domain name is confusingly similar to Complainant’s ANGEL SOFT mark.  The at-issue domain name includes Complainant’s entire mark, only removing the space between terms, while adding the generic top-level domain (“gTLD”) “.info” and the descriptive terms “toilet” and “paper.”  These alterations are insufficient to differentiate the <angelsofttoiletpaper.info> domain name from Complainant’s ANGEL SOFT mark under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.  The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).

 

Rights or Legitimate Interests

Respondent lacks rights or interests in respect of the <angelsofttoiletpaper.info> domain name.

 

Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights and legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case will act conclusively.

 

Complainant has never authorized Respondent to use Complainant’s ANGEL SOFT trademark. Additionally, Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  WHOIS information identifies the registrant of the disputed domain name as “Andre Joventus.” Clearly, “Andre Joventus” does not nominally relate to, or otherwise identify, the at-issue domain name.  See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).

 

Nor is Respondent making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name Policy ¶ 4(c)(iii). In support of such finding Complainant shows that the at-issue domain name resolves to a pay-per-click website offering links to third-party websites, some of which resolve to Complainant’s competitors, and information about Complainant’s products. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Georgia-Pacific Consumer Prods. LP v. Johnson, FA 1351491 (NAF Nov. 17, 2010) (finding respondent’s “use of a confusingly similar disputed domain name to operate a web site 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)”)

 

Given Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the disputed domain name under Policy ¶4(a)(ii).

 

 

Registration and Use in Bad Faith

Respondent registered and uses the at-issue domain names in bad faith.

 

The webpage referenced by the at-issue domain name diverts Internet traffic from Complainant to Complainant’s competitors thereby disrupting Complainant’s business. This circumstance shows that Respondent registered and uses the at-issue domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also 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 educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant asserts that Respondent derives commercial gain from the <angelsofttoiletpaper.info> website referenced by the at-issue domain name. The Panel agrees. It is more likely than not that the Respondent receives compensation each time an Internet user clicks on one of the links on Respondent’s website.  By using Complainant’s ANGEL SOFT mark in such a manner, Respondent creates confusion regarding the source and sponsorship of the website. Respondent surly intends to benefit from such confusion. These circumstances indicate bad faith registration and use under Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

Finally, it appears that Respondent had actual knowledge of Complainant's rights in the ANGEL SOFT mark prior to registering <angelsofttoiletpaper.info>. By design, Respondent’s <angelsofttoiletpaper.info> website provides information on Complainant's own products and presents links to Complainant’s competitors. It would be incredible to hold that notwithstanding Respondent’s registration and use of a domain name which is confusingly similar to Complainant’s well-known suggestive mark and contains such mark in its entirety that at the time of registration Respondent nevertheless was totally ignorant of Complainant's mark and its rights therein. Likewise, it would be incredible to hold that Respondent registered <angelsofttoiletpaper.info> from any motivation other than from a desire to impermissibly capitalize on Complainant’s trademark. Respondent’s prior knowledge of Complaint’s trademark prior indicates that the domain name was registered in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name")."

 

Therefore, the Panel concludes on multiple independent grounds that Respondent registered and used the at-issue domain name in bad faith pursuant to 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 <angelsofttoiletpaper.info> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Paul M. DeCicco, Panelist

Dated:  May 21, 2012

 

 

 

 

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