Neenah Paper, Inc. v. Nina Boneta
Claim Number: FA1606001679920
Complainant is Neenah Paper, Inc. (“Complainant”), represented by James M. Bagarazzi of Dority & Manning, Attorneys at Law, P.A., South Carolina, United States. Respondent is Nina Boneta (“Respondent”), Oregon, United States
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <neenahcosmayah.com>, registered with Name.com, Inc.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 17, 2016; the Forum received payment on June 17, 2016.
On June 20, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <neenahcosmayah.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2016 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@neenahcosmayah.com. Also on June 20, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant uses the NEENAH mark in connection with its business of providing fine paper and packaging products and technical products worldwide. Complainant has registered the NEENAH mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,546,554, registered Mar. 12, 2002; Reg. No. 3,637,664, registered June 16, 2009), which establishes rights in the mark. See Compl., at Attached Annex 1. Respondent’s <neenahcosmayah.com> domain name is confusingly similar to the NEENAH mark as it incorporates the mark in its entirety, while adding the descriptive words “cos” (abbreviated form of “companies”) and “mayah” (phonetically similar to “Maya,” denoting an ancient civilization) followed by the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <neenahcosmayah.com> domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee of Complainant. See Compl., at Attached Annex D. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <neenahcosmayah.com> domain name. Respondent was notified of Complainant’s rights in the NEENAH mark and failed to respond which supports Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is using the <neenahcosmayah.com> domain name in bad faith. First, Respondent’s use of the disputed domain name serves as a disruption of Complainant’s legitimate business purposes. Second, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source sponsorship, affiliation or endorsement of the website by including the NEENAH mark on the website and redirecting Internet users to a website that has links to competing products. See Compl., at Attached Annex F. Third, Respondent had actual or constructive notice of the NEENAH mark with Complainant’s rights therein because of the mark’s fame, notoriety, multiple trademark registrations, an email sent to Respondent, and the use of the mark on the disputed domain.
B. Respondent
Respondent failed to submit a Response in this proceeding. The <neenahcosmayah.com> domain name was registered on March 9, 2016. Although the Respondent failed to file a formal Response to this matter, it did send an e-mail communication to the Forum expressing its incredulousness over this matter and claiming that Neenah CosMA'yah is her name. She states, “Neenah CosMA'yah is my preferred name and it is how I am called, and my website is for personal use.”
The Panel finds that the Complainant has failed to carry its burden of proof regarding the confusingly similar disputed domain name. As such, the Panel finds for the Respondent.
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(f), 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 (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 has adequately plead its interests in and to the NEENAH trademark. Complainant clearly has rights in and to that trademark. However, the claim that the disputed trademark is confusingly similar to this valid and subsisting trademark is unpersuasive.
Complainant argues that Respondent’s <neenahcosmayah.com> domain name is confusingly similar to the NEENAH mark as it incorporates the mark in its entirety, while adding the descriptive words “cos” and “mayah” followed by the “.com” generic top-level domain (“gTLD”). Complainant argues that “cos” is short for company, and “mayah” is a phonetically equivalent misspelling of “mayan” which denotes an ancient civilization that invented a type of paper that is sought after today. These alterations are argued by Complainant to increase confusing similarity because Complainant itself is a corporate entity which offers paper products.
As this is a default case, the Panel accepts reasonable arguments made by the Complainant as true; however, the Panel finds that these claims are unreasonable. Although the NEENAH trademark is, for sure, a strong trademark, it is unreasonable for Complainant to attempt to monopolize any and all references on the Internet that happen to incorporate the letters NEENAH. Although one possible understanding of “cos” could be to refer to “corporation,” there may be other, less sinister, uses. The claim that “mayah” is phonetically similar to “mayan” and a sought after paper was invented in ancient Maya and, as such, Complainant has exclusive rights to such reference even though it has no trademark rights in or to the word “mayah” or “mayan” is nothing short of spurious.
Some of Complainant’s evidence of confusingly similar use by the Respondent is unpersuasive. The Complaint cites Compl., at Attached Annex F as evidence which shows Respondent engaged in sales of competing products. However, it is not clear from this screen shot whether this screen shot appears on Respondent’s web site or is generated by some Internet compiler with no knowledge by the Respondent. It is labeled “search ad” which raises this suspicion.
In addition, the Panel considered the Respondent’s non-responsive Response in the form of Respondent’s e-mail to the Forum referenced above. If the Panel were to go so far as to consider whether the Responded had rights or legitimate interests in the domain name, the Panel would further find that the Respondent is known by the disputed domain name giving it rights and legitimate interests thereto. As the Panel finds that the disputed domain name is not confusingly similar to the Complainant’s trademark, the Panel need not make this additional finding.
Given the totality of the apparent circumstances, the Panel finds that the disputed domain name is not confusingly similar to the Complainant’s trademark.
As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i) the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (FORUM Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (FORUM Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be denied.
Accordingly, it is Ordered that the <neenahcosmayah.com> domain name remain with Respondent.
Kenneth L. Port, Panelist
Dated: July 22, 2016
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