Neenah Paper, Inc. v. Wang Lee Domains Ltd.
Claim Number: FA0607000756890
Complainant is Neenah Paper, Inc. (“Complainant”), represented by Neil M. Batavia, of Dority & Manning, Post Office Box 1449, Greenville, SC 29602-1449. Respondent is Wang Lee Domains Ltd. (“Respondent”), Sutie 410, 4th Floor, Barkly Wharf, Le Caudan Waterfront, Port Louis MU.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <neenapaper.com>, registered with Domaindoorman, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 26, 2006.
On July 21, 2006, Domaindoorman, Llc confirmed by e-mail to the National Arbitration Forum that the <neenapaper.com> domain name is registered with Domaindoorman, Llc and that Respondent is the current registrant of the name. Domaindoorman, Llc has verified that Respondent is bound by the Domaindoorman, Llc 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 July 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 21, 2006 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@neenapaper.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 23, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 <neenapaper.com> domain name is confusingly similar to Complainant’s NEENAH mark.
2. Respondent does not have any rights or legitimate interests in the <neenapaper.com> domain name.
3. Respondent registered and used the <neenapaper.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Neenah Paper, Inc., has been involved in manufacturing and distributing paper products since 1915. Complainant holds a registration with the United States Patent and Trademark Office (“USPTO”) for the NEENAH mark (Reg. No. 518,352 issued December 6, 1949). Complainant utilizes the NEENAH mark in connection with manufacturing and distributing fine paper products and technical paper products. Complainant has registered the <neenah.com> and <neenahpaper.com> domain names in order to offer its paper product goods and services to Internet users on its website.
Respondent registered the <neenapaper.com> domain name on July 2, 2006. Respondent is using the disputed domain name to redirect Internet users to Respondent’s website which features links to third-party websites, some of which offer goods and services in direct competition with Complainant.
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. 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.”).
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 established rights in the NEENAH mark through registration of the mark with the USPTO long before Respondent registered the disputed domain name. The Panel finds that such registration is sufficient to establish rights as required by Policy ¶ 4(a)(i). See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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."); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Respondent’s <neenapaper.com>
domain name is confusingly similar to Complainant’s NEENAH mark. The disputed domain name deletes the letter
“h” from Complainant’s mark and adds the term “paper.” The term “paper” is commonly used by
Complainant in connection with the NEENAH mark, and is descriptive of
Complainant’s paper manufacture and distribution business. The Panel finds that Respondent’s minor
alteration of Complainant’s mark by deleting a letter does not create a
distinct domain name, nor does the addition of a term descriptive of
Complainant’s business overcome the confusing similarity between the disputed
domain name and Complainant’s mark.
Thus, the Panel finds that the disputed domain name is confusingly
similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See
Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1,
2000) (holding that the deliberate introduction of errors or changes, such as
the addition of a fourth “w” or the omission of periods or other such “generic”
typos do not change respondent’s infringement on a core trademark held by the
complainant); see also State Farm Mut.
Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15,
2000) (finding that the domain name <statfarm.com> is confusingly similar
to the complainant’s STATE FARM mark); see
also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant’s assertion constitutes a prima facie case under the Policy and shifts the burden to Respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Respondent has the opportunity to present evidence and arguments to the Panel in support of its rights or legitimate interests by submitting a Response. Respondent’s failure to submit a Response suggests to the Panel that Respondent lacks rights or legitimate interest in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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). Notwithstanding Respondent’s failure to respond, the Panel will evaluate the available evidence to determine whether Respondent has rights or legitimate interests in the disputed domain name as contemplated by Policy ¶ 4(c).
Respondent is using the <neenapaper.com> domain name to redirect Internet users to Respondent’s website, composed entirely of links to third-party websites, some of which offer paper goods and services in direct competition with Complainant. Presumably, Respondent receives pay-per-click referral fees when Internet users click on the links posted on Respondent’s webpage. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Complainant asserts without contradiction that Respondent is
not commonly known by the <neenapaper.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “Wang Lee Domains Ltd” which is unrelated
to the disputed domain name. Further,
Complainant asserts that Respondent is not affiliated with Complainant and does
not have authorization from Complainant to use Complainant’s NEENAH mark in a
domain name. Thus, based on the
available evidence, the Panel finds that Respondent is not commonly known by
the disputed domain name and lacks rights or legitimate interests pursuant to
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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the
respondent was not commonly known by the mark and never applied for a license
or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using its <neenapaper.com> domain name to divert Internet consumers away from Complainant’s genuine website to Respondent’s website featuring links to third-party websites. Because the disputed domain name is confusingly similar to Complainant’s mark, Internet users seeking Complainant’s genuine website may easily be redirected to Respondent’s website. Once at Respondent’s website, Internet users may follow links to third-party websites in competition with Complainant and may do business with those third-parties instead of with Complainant. The Panel finds that Respondent’s use of the disputed domain name to divert business away from Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent’s <neenapaper.com>
domain name is confusingly similar to Complainant’s NEENAH mark. Internet users seeking Complainant’s website
using Complainant’s mark might accidentally misspell Complainant’s mark,
leaving out the letter “h,” and might add the term “paper,” which is
descriptive of Complainant’s business.
If an Internet user made these alterations either using a generic Internet
search engine or by typing the combination into a web browser, that Internet
user would be redirected to Respondent’s website. Once at Respondent’s website, Internet users may mistakenly
believe that the website is sponsored by or affiliated with Complainant. Respondent is presumably profiting from this
confusion when Internet users click on the links hosted at Respondent’s
website. The Panel finds that such use
is evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
mislead to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
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 <neenapaper.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: September 6, 2006
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