Georgia-Pacific Consumer Products LP v. Melissa Ritter
Claim Number: FA1205001444551
Complainant is Georgia-Pacific Consumer Products LP (“Complainant”), represented by Alexander Garcia of Holland & Hart LLP, Colorado, USA. Respondent is Melissa Ritter (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <quiltednortherncoupon.net>, registered with Godaddy.com, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 17, 2012; the National Arbitration Forum received payment on May 17, 2012.
On May 17, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <quiltednortherncoupon.net> 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 May 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@quiltednortherncoupon.net. Also on May 17, 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 June 11, 2012, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
USPTO Reg. No. 1,877,561 registered February 7, 1995;
USPTO Reg. No. 2,209,027 registered December 8, 1998;
USPTO Reg. No. 2,663,438 registered December 17, 2002;
CIPO Reg. No. TMA501,391 registered September 28, 1998; &
GPTO Reg. No. 30,215,426 registered January 7, 2003.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its QUILTED NORTHERN mark.
2. Respondent’s <quiltednortherncoupon.net> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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.”).
Complainant argues that it owns many trademark registrations for the QUILTED NORTHERN mark with the United States Patent and Trademark Office (“USPTO”) and other trademark authorities around the world, including the Canadian Intellectual Property Office (“CIPO”) and the German Patent and Trademark Office (“GPTO”):
USPTO Reg. No. 1,877,561 registered February 7, 1995;
USPTO Reg. No. 2,209,027 registered December 8, 1998;
USPTO Reg. No. 2,663,438 registered December 17, 2002;
CIPO Reg. No. TMA501,391 registered September 28, 1998; &
GPTO Reg. No. 30,215,426 registered January 7, 2003.
The Panel finds that these trademark registrations adequately demonstrate Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Complainant contends that Respondent’s <quiltednortherncoupon.net> domain name is confusingly similar to Complainant’s QUILTED NORTHERN mark because the disputed domain name incorporates Complainant’s mark and merely adds the generic term “coupon” and the generic top-level domain (“gTLD”) “.net.” The Panel notes that the disputed domain name also removes the space from Complainant’s mark. Complainant argues that neither the addition of the term “coupon” nor the addition of the gTLD sufficiently distinguishes the disputed domain name from the mark. The Panel finds that, despite the minor changes made to the mark, the <quiltednortherncoupon.net> domain name is confusingly similar to Complainant’s QUILTED NORTHERN mark pursuant to 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 Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark).
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 alleges that, according to the WHOIS information, Respondent is “Melissa Ritter” and is not commonly known by the disputed domain name. Complainant also argues that Respondent is not and has never been associated or affiliated with Complainant and Complainant has never authorized Respondent to use Complainant’s QUILTED NORTHERN mark. The Panel concludes, based on the evidence and Respondent’s lack of a Response, that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See 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).
Complainant asserts that the <quiltednortherncoupon.net> domain name does not link to a mere informational site but resolves to a website that purportedly offers information about Complainant’s services and advertised links that redirect Internet users to third-party websites. Complainant argues that these links are “click through” links that pay Respondent and that the links have promoted products competing with Complainant. The Panel determines that using the disputed domain name to advertise competing, pay-per-click links is not consistent 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 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)).
Complainant further alleges that Respondent is attempting to pass itself off as endorsed by Complainant by using Complainant’s product images, using Complainant’s mark, claiming copyright protection in “© Quilted Northern Coupon, and displaying Complainant’s logo. The Panel agrees with Complainant’s arguments. The Panel concludes that Respondent is attempting to pass itself off as Complainant, which the Panel finds is evidence of a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Complainant asserts that the advertised pay-per-click links displayed on the resolving website promote products that compete with Complainant. Complainant argues that these links therefore divert potential customers away from Complainant to third-party websites, which Complainant claims disrupts Complainant’s business. The Panel finds that this effort to divert consumers and disrupt Complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Complainant contends that Respondent uses the disputed domain name to feature advertised pay-per-click links that pay Respondent each time an Internet users clicks on the links and is diverted to an advertiser’s website. Complainant argues that use of “click through” advertising links constitutes evidence of bad faith registration and use. The Panel agrees with Complainant. The Panel determines that Respondent’s activities in connection with the disputed domain name reveal bad faith registration and use according to 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).
Complainant alleges that one link displayed at the disputed domain name, “Get Coupon,” may include “potentially harmful or objectionable content” because the link is blocked by VIPRE, a common Internet security program. Complainant contends that “operating a web site that could expose Internet users to viruses is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).” The Panel concurs with Complainant and concludes that Respondent’s registration and use of the disputed domain name in connection with a virus or harmful content reveals bad faith pursuant to Policy ¶ 4(a)(iii). See Baker v. J M, FA 1259254 (June 12, 2009) (finding bad faith registration and use where Respondent was using the disputed domain name in “an attempt to trick Internet users into downloading a malicious virus”).
Finally, Complainant argues that Respondent’s registration of a domain name that is confusingly similar, despite actual or constructive knowledge of Complainant’s rights, is evidence of bad faith registration and use. The Panel determines that constructive knowledge is insufficient to support a finding of bad faith. The Panel concludes that Respondent had actual knowledge. The Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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.”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <quiltednortherncoupon.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 25, 2012
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