Prescott Paper Products (USA), Inc. v.
Champion Paper %27 Polybags Limited
Claim
Number: FA0503000434088
Complainant is Prescott Paper Products (USA), Inc. (“Complainant”),
represented by Christopher T. Dejardin, of Cassan Maclean, 80 Aberdeen
Street, Suite 401, Ottawa, Ontario K1S 5R5, Canada. Respondent is Champion Paper %27 Polybags
Limited (“Respondent”), 1030 Walker
Road, Windsor, Ontario N8Y2N5, Canada.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <bagtoearth.com>, registered with Enom,
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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
2, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 11, 2005.
On
March 2, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <bagtoearth.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, Inc. registration agreement and
has thereby agreed to resolve domain name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
March 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 31, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@bagtoearth.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 6, 2005, 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." 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 makes the following assertions:
1. Respondent’s <bagtoearth.com>
domain name is identical to Complainant’s BAG TO EARTH mark.
2. Respondent does not have any rights or
legitimate interests in the <bagtoearth.com> domain name.
3. Respondent registered and used the <bagtoearth.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
specializes in the manufacture and sale of biodegradable paper bags for the
collection of waste. Complainant has
continuously used the BAG TO EARTH mark in connection with its products in
Canada since at least as early as August 1993.
Complainant holds Canadian trademark Reg. No. TMA 573,450 for the BAG TO
EARTH mark (issued January 13, 2003).
Respondent
registered the <bagtoearth.com> domain name on January 17,
2000. The domain name is not linked to
any active website. Respondent is in
the business of selling compostable paper bags for lawn and garden waste that
directly compete with Complainant’s products.
On May 25, 2000, Respondent’s president telephoned Complainant’s counsel
and advised her that Respondent had not used the BAG TO EARTH mark for any
purpose, that it had no intention to use the mark, and that the <bagtoearth.com>
domain name registration was for sale to the Complainant for $10,000.00.
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.
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 has
established that it has rights in the BAG TO EARTH mark through registration
with the Canadian Intellectual Property Office and through continuous use of
the mark in commerce since 1993.
Registration of a mark with the Canadian Intellectual Property Office is
prima facie evidence that Complainant has rights in a valid
trademark. Respondent can rebut this
presumption only by producing evidence that the mark is not inherently
distinctive and has not acquired secondary meaning. Cf. Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that panel decisions
have held that registration of a mark is prima
facie evidence of validity, which creates a rebuttable presumption that the
mark is inherently distinctive and that a respondent has the burden of refuting
this assumption); see also Tuxedos
By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common
law rights in a mark where its use was continuous and ongoing, and secondary
meaning was established).
The <bagtoearth.com>
domain name is identical to Complainant’s BAG TO EARTH registered trademark
because the disputed domain name merely removes spaces from the mark and adds
the “.com” generic top-level domain to the mark. The removal of spaces and the addition of a generic top-level
domain do not distinguish the domain name from the mark. Thus, the Panel finds that the Domain name
is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb.
Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER
RE, “as spaces are impermissible in domain names and a generic top-level domain
such as ‘.com’ or ‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. In the absence of a response, the Panel accepts as true all
reasonable allegations contained in the Complaint unless clearly contradicted
by the evidence. Complainant has
alleged that Respondent lacks rights and legitimate interests in the <bagtoearth.com>
domain name. Complainant’s submission
has gone unopposed and its arguments unrefuted. Further, because Respondent has failed to submit a response,
Respondent has failed to propose any set of circumstances that could
substantiate its rights or legitimate interests in the disputed domain
name. 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 the complaint to be deemed true); see
also Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
response, the respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or making a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)
because the domain name does not resolve to any active website. Moreover, Respondent has made no use of the
disputed domain name since it was registered more than five years ago. The Panel finds that, under these circumstances,
Policy ¶¶ 4(c)(i) and 4(c)(iii) are inapplicable to Respondent. Thus, Respondent fails to establish rights
or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See
Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000)
(finding no rights or legitimate interests where the respondent failed to submit
a response to the complaint and had made no use of the domain name in
question); see also Ritz-Carlton
Hotel v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that
prior to any notice of the dispute, the respondent had not used the domain
names in connection with any type of bona fide offering of goods and services);
see also Am. Home Prod. Corp. v.
Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or
legitimate interests in the domain name <solgarvitamins.com> where the
respondent merely passively held the domain name).
No
evidence before the Panel suggests Respondent is commonly known by the <bagtoearth.com>
domain name under Policy ¶ 4(c)(ii).
The domain name’s WHOIS information indicates that the registrant of the
disputed domain name is known as “Champion Paper %27 Polybags Limited” and is
not known by the second-level domain that infringes on Complainant’s BAG TO
EARTH mark. Moreover, Respondent is not
authorized or licensed to use Complainant’s mark for any purpose. Thus, Respondent lacks rights and legitimate
interests in the domain name under Policy ¶ 4(c)(ii). See Tercent Inc.
v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also RMO,
Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail").
Respondent
offered to sell the <bagtoearth.com> domain name registration to
Complainant for $10,000.00 after admitting that Respondent had no intention of
using the domain name. The Panel finds
that Respondent’s willingness to sell the domain name registration and its
expressed intention not to use the domain name for any purpose evidences that
Respondent lacks rights and legitimate interests in the domain name under Policy
¶ 4(a)(ii). See The Am. Nat’l
Red Cross v. Domains, FA 143684 (Nat. Arb. Forum March 4, 2003) (“Respondent’s lack of rights and legitimate
interests in the domain name is further evidenced by Respondent’s attempt to
sell its domain name registration to Complainant, the rightful holder of the
RED CROSS mark”); see also J. Paul
Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7,
2000) (finding rights or legitimate interests do not exist when one has made no
use of the websites that are located at the domain names at issue, other than
to sell the domain names for profit); see also Mothers Against Drunk Driving
v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that
under the circumstances, a respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
offered to sell the <bagtoearth.com> domain name registration to
Complainant for $10,000.00. The Panel
finds that, because Respondent has not used the domain name for any purpose,
Respondent registered the domain name primarily for the purpose of selling the
domain name registration to Complainant for more than its out-of-pocket costs
directly related to the domain name.
Thus, Respondent registered and used the domain name in bad faith under
Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO
Nov. 27, 2000) (finding that a failure to use the domain name in any context
other than to offer it for sale to a complainant amounts to a use of the domain
name in bad faith); see also Matmut
v. Tweed, D2000-1183 (WIPO Nov. 27, 2000) (finding bad faith under Policy
paragraph 4(b)(i) where a respondent stated in communication with the
complainant, “if you are interested in buying this domain name, we would be
ready to sell it for $10,000”).
Respondent
registered a domain name that is identical to Complainant’s mark. Moreover, Respondent directly competes with
Complainant in the same geographical area where Complainant does business. Respondent’s registration of the <bagtoearth.com>
domain name prevents its competitor from reflecting the BAG TO EARTH mark in a
corresponding domain name. The Panel
finds that Respondent’s registration of the domain name establishes that
Respondent registered and used the domain name for the purpose of disrupting
the business of a competitor, which evidences bad faith use and registration of
the domain name under Policy ¶ 4(b)(iii).
See Surface Prot. Indus.,
Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between the complainant and the respondent, the
respondent likely registered the contested domain name with the intent to
disrupt the complainant's business and create user confusion); see also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where the respondent and the
complainant were in the same line of business in the same market area); see
also Toyota Jidosha Kabushiki Kaisha
v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that
“Registration of a domain name [by a respondent that incorporates another’s
trademark] goes further than merely correctly using in an advertisement the
trade mark of another in connection with that other’s goods or services: it
prevents the trade mark owner from reflecting that mark in a corresponding
domain name”).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox
Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that
in determining if a domain name has been registered in bad faith, a panel must
look at the “totality of circumstances”); see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith]
in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Respondent has
not used the <bagtoearth.com> domain name for any purpose since it
registered the domain name more than five years ago. Moreover, Respondent offered to sell the domain name registration
to Complainant. The Panel finds that
Respondent has engaged in passive holding, which evidences that Respondent
registered and used the domain name in bad faith under Policy ¶ 4(a)(iii). See
Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO
Feb. 16, 2000) (holding that a respondent’s failure to develop its website in a
two year period raises the inference of registration in bad faith); see also
Cruzeiro Licenciamentos Ltda v.
Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding
of a domain name can qualify as bad faith if the domain name owner’s conduct
creates the impression that the name is for sale).
Respondent’s
registration of the disputed domain name, which is identical to Complainant’s
mark, suggests that Respondent knew of Complainant’s rights in the BAG TO EARTH
mark. Moreover, the fact that
Respondent is Complainant’s competitor evidences Respondent’s knowledge of Complainant’s
rights in the mark. Thus, the Panel
finds that Respondent chose the <bagtoearth.com> domain name based
on the distinctive qualities of Complainant’s mark, which evidences bad faith
registration and use under Policy ¶ 4(a)(iii).
See Sony Kabushiki Kaisha
v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith
registration and use where it is “inconceivable that the respondent could make
any active use of the disputed domain names without creating a false impression
of association with the Complainant”); see also Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); see also Entrepreneur Media, Inc.
v. Smith, 279
F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse").
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <bagtoearth.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 20, 2005
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