Georgia-Pacific Consumer Products LP v. Bryan Waller
Claim Number: FA1206001448310
Complainant is Georgia-Pacific Consumer Products LP (“Complainant”), represented by Alexander Garcia of Holland & Hart LLP, Colorado, USA. Respondent is Bryan Waller (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <enmotiontowels.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names.
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.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2012; the National Arbitration Forum received payment on June 12, 2012.
On June 12, 2012, Melbourne IT, Ltd. d/b/a Internet Names confirmed by e-mail to the National Arbitration Forum that the <enmotiontowels.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names 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 June 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@enmotiontowels.com. Also on June 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.
A timely Response was received and determined to be complete on July 3, 2012.
Complainant’s Additional Submission was received on July 9, 2012 and deemed compliant with Supplemental Rule 7.
On July 9, 2012, the parties requested and were granted a Stay of Administrative Proceeding until August 23, 2012.
On August 22, 2012, Complainant requested that the Stay of Administrative Proceeding be removed and the Complaint reinstated. Complainant’s request was granted on August 23, 2012.
On August 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that it holds registered Marks for paper towel dispensers, “not of metal” paper towel dispensers, and had soaps and dispensers. The Marks are styled “enMotion®” and “enMotion® & Design.” The initial Mark, for paper towel dispensers, was registered in 2003.
Complainant asserts that Respondent, “owner of a janitorial supply company called Janisource . . .,” registered the disputed Domain Name <enmotiontowels.com> in June of 2011. The disputed site is “under construction” – it has yet to have any content. Complaisant alleges Respondent, at its own web site, <janisource.com>, sells products which Respondent claims are similar to the Complainants products.
Complainant assets that the Mark and Domain Name are confusingly similar and that the addition of the generic term “towels” is merely an addition of a descriptive word to the Mark.
Complainant asserts that the Respondent has no rights in the name “enMotion.” Respondent is not licensed to use the name and has no other claim to the name. Given that the site is “under construction,” certainly respondent is not using the site to make a bona fide offering of goods or services.
Respondent certainly has no other legitimate purpose for use of the domain name, particularly since it sells competing goods. Respondent does not sell Complainant’s goods.
The Complainant asserts registration in bad faith. Respondent certainly knew of Complainants use and registration of the Mark; Respondent’s own web site says that it sells products which are similar to the “enMotion” line of products. Complainant also asserts that the Mark is “famous.”
Complainant asserts that the domain exists only to divert customers and disrupt its business.
B. Respondent
Respondent’s brief rejoinder states that he (e.g., “Bryan Waller”), is not the owner of the domain name; the owner is “JaniSource, Inc.,” and Waller asserts that he is president of that entity. Waller states that JaniSource is a janitorial supply companies which sells a full line of such products at its web site, <janisource.com>.
Respondent states that it intended to link the new domain name to its website so that JaniSource could offer its customers an opportunity to buy the Georgia Pacific product. He denies bad faith or “squatting.”
Respondent states that his company is “providing a bona fide product offering of the complainant’s towels.” Respondent makes no claim to the Mark.
Respondent asserts that he has now linked the “under construction” site to the Georgia Pacific “enMotion” products sold by his company. He states that his company is not an authorized distributor or agent and does not claim to be. He sells the “enMotion” line at retail prices.
He denies any confusion with his business and web site with the “enMotion” product line.
Finally, he states that he never had any communication with Georgia Pacific.
C. Additional Submissions
Complainant timely filed an “Additional Submission” in which it first shows that the registered owner of the web-site in question is “Bryan Waller.” It asserts that providing false information about ownership is evidence of “bad faith.”
Complainant then attaches exhibits showing that it did contact Respondent about its concerns. Respondent’s denial of such contacts is evidence of “bad faith.”
Complainant notes that the now-active site is not “active” and merely redirects customers to <janisource.com>. And, Complainant notes that the site did not become operational until after the Complaint was filed.
Respondent goes on to argue that the operational site still violates various provisions of the dispute resolution Policy and certainly does not create “rights in the name.” Also, the domain name resolves not to a site selling only the goods of the Mark holder but competing goods as well. Such is not “necessary to conduct Respondent’s business” and is evidence of bad-faith in the form of “’bait-and-switch’ . . .”
First, the evidence of the three elements of the policy as presented by Complainant is certainly sufficient to establish a prima facie case. The Mark and domain name are confusingly similar. Complainant has shown that Respondent has no rights in the name. Complainant has alleged facts sufficient to show bad faith. Respondent has done little to rebut. He does not dispute that the Mark and domain name are confusingly similar. He has not rebutted the showing that he has no rights in the name under the Policy. As of the date of the Complainant, the site was not even active. As to bad faith, Respondent has attempted to provide some dispute and rebuttal.
More specifically, Complainant has provided evidence of its ownership of the Mark and evidence that Respondent knew of the Mark at the time it registered the Domain name. The confusing similarity of Mark and domain name is obvious.
Respondent does not allege any particular rights in the name and the filings by Complainant and Respondent clearly show that the domain name did not resolve to anything prior to the filing of the Complaint. Thereafter, Respondent linked the inactive domain name to its retail sales of Complainant’s trademarked product. Complainant has clearly shown that there was and is no bona fide offering of goods or services or fair use which could generate rights in the name under Policy ¶¶ (4)(c)(i) & (iii).
Complainant has shown that Respondent made no use of the domain name except “squatting” prior to the Complaint. That is evidence of bad faith. Once the domain name was linked to Respondent’s web site, the domain name is shown to link to a site that offers goods which compete with the Georgia Pacific trademarked products. Again, Complainant has offered evidence that Respondent knew of the existence of the Mark at the time of registration of the domain name, which was a number of years after the USPTO acted to approve the Georgia Pacific Marks. All of this clearly shows bad faith under Policy ¶ (4)(a)(iii).
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.
Complainant owns a wide variety of domain names containing Complainant’s ENMOTION mark, including <enmotion.com>, <enmotionpapertowel.com>, <enmotion.net>, <enmotion.info>, and enmotiondispenser.com>. See Complainant’s Exhibit 3. Complainant additionally owns multiple trademark registrations with the USPTO for its ENMOTION mark (e.g., Reg. No. 2,664,519 registered December 17, 2002). Complainant includes a table of its trademark registrations throughout the world with its Complaint. See Complainant’s Exhibit 2. In Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006), the panel determined that a trademark registration with the USPTO was sufficient to establish rights in a mark under Policy ¶ 4(a)(i). The Panel concludes that Complainant sufficiently established its rights in the ENMOTION mark for the purposes of Policy ¶ 4(a)(i) through its USPTO trademark registration.
The <enmotiontowels.com> domain name is confusingly similar to Complainant’s ENMOTION mark. Respondent’s disputed domain name fully incorporates Complainant’s ENMOTION mark and only adds the gTLD “.com” and the term “towels.” The term “towels” is descriptive because Complainant offers towel products under its ENMOTION mark. In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panel held that the additions of a descriptive term and a gTLD failed to adequately distinguish a disputed domain name from a complainant’s mark. The Panel finds that Respondent’s <enmotiontowels.com> domain name is confusingly similar to Complainant’s ENMOTION mark pursuant to Policy ¶ 4(a)(i).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The burden then shifted to Respondent to show that he 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.”).
Respondent is not commonly known by the <enmotiontowels.com> domain name. Respondent is not affiliated with Complainant and is not authorized to use Complainant’s “enMOTION” mark. The WHOIS information identifies “Bryan Waller” as the registrant of the domain name. See Complainant’s Exhibit 5. All of this evidence does not indicate that Respondent is commonly known by the domain name. In Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel found that a respondent was not commonly known by a disputed domain name when the respondent was not authorized to use the complainant’s mark and the WHOIS information did not indicate that the respondent was commonly known by the disputed domain name. Therefore, the Panel holds that Respondent is not commonly known by the <enmotiontowels.com> domain name under Policy ¶ 4(c)(ii).
Respondent is the owner of a janitorial supply company, called JaniSource. His company offers products in direct competition with Complainant’s products. Complainant provided screenshots of Respondent’s official website as evidence that Respondent does not offer Complainant’s products. See Complainant’s Exhibit 4. Complainant showed that Respondent did not make an active use of the <enmotiontowels.com> domain name at the time of the Complaint. See Complainant’s Exhibit 6. Complainant showed Respondent had no legitimate purpose for the use of the <enmotiontowels.com> domain name because Respondent already operates a competing website and Respondent does not offer Complainant’s products. In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel determined that the failure to make an active use of a disputed domain name was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. In this case, the Panel may find similarly pursuant to Policy ¶¶ 4(c)(i) and (iii).
In Complainant’s Additional Submission, Complainant claims that Respondent began resolving the disputed domain name to Respondent’s website only after Respondent received the Complaint. Moreover, Complainant showed that Respondent’s website sells Complainant’s products and the products of Complainant’s competitors. Respondent did not explain his relationship to Complainant on the resolving website. Even if Respondent was a legitimate distributor of Complainant’s products, Respondent is not making a legitimate use of the <enmotiontowels.com> domain name because Respondent is not authorized to use Complainant’s mark in the domain name. Respondent sells competing products, and Respondent did not explain his relationship to Complainant. Therefore, Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <enmotiontowels.com> domain name. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that, although the respondent was a distributor of the complainant’s product, the respondent did not have permission to use the complainant’s mark in its registered domain name and, therefore, was not using the domain name as a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Respondent registered the <enmotiontowels.com> domain name for the purpose of diverting customers to Respondent’s competing products in order to disrupt Complainant’s business. The disputed domain name never resolved to an active website until after the Complaint was filed. See Complainant’s Exhibit 6. As set out in Complainant’s Additional Submission, Respondent began resolving the disputed domain name to Respondent’s website after receipt of the Complaint. While Respondent sells Complainant’s products, his web site also sells the products of Complainant’s competitors. This use disrupts Complainant’s business, and the Panel concludes that Respondent registered and uses the <enmotiontowels.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b) (iii).”).
Respondent’s failure to make an active use of the <enmotiontowels.com> domain name prior the filing of the Complaint is also important. Although Complainant did not make any argument regarding inactive use under Policy ¶ 4(a) (iii), in DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000), the panel held that the failure to make an active use of a disputed domain name was evidence of bad faith registration and use. The Panel concludes that Respondent’s failure to make an active use of the <enmotiontowels.com> domain name evidences Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii).
In Complainant’s Additional Submission, Complainant establishes that Respondent is not permitted to use Complainant’s mark in a domain name even if Respondent is a legitimate distributor of Complainant’s products. Moreover, Complainant contends that Respondent sells the products of Complainant’s competitors on the now-resolving website, and Respondent does not explain its relationship to Complainant. Therefore, even if Respondent is a legitimate distributor of Complainant’s products, Respondent registered and uses the <enmotiontowels.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (finding that the disputed domain name was registered and used in bad faith where the respondent, a distributor of the complainant’s products who was not a licensee of the complainant, used the complainant’s mark in its domain name, suggesting a broader relationship with the complainant and fostering the inference that the respondent was the creator of the complainant’s products rather than a mere distributor).
As a competitor of Complainant, Respondent was alleged to have had actual knowledge of Complainant’s rights in the ENMOTION mark. Respondent did not deny that allegation. His actual knowledge was also evidenced by Respondent posting on its website that competing products were or are similar to Complainant’s ENMOTION towels. See Exhibit 4. In Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007), the panel held that a respondent’s actual knowledge of a complainant’s rights in the mark at the time a disputed domain name is registered is evidence of bad faith registration.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <enmotiontowels.com> domain name be TRANSFERRED from Respondent to Complainant.
R. Glen Ayers, Panelist
Dated: September 4, 2012
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