Neenah Paper, Inc. v. Melody Graham
Claim Number: FA1706001736903
Complainant is Neenah Paper, Inc. (“Complainant”), represented by James M. Bagarazzi of Dority & Manning, Attorneys at Law, P.A., South Carolina, USA. Respondent is Melody Graham (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <neennah.com>, registered with Google Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2017; the Forum received payment on June 22, 2017.
On June 22, 2017, Google Inc. confirmed by e-mail to the Forum that the <neennah.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google 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 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2017 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@neennah.com. Also on June 27, 2017, 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 19, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
Complainant is a global retailer of paper and paper-related products. Complainant uses the NEENAH mark in conjunction with its business practices. Complainant registered the NEENAH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,546,554; registered Mar. 12, 2002). See Amend. Compl., at Attached Annex A. Additionally, Complainant registered the NEENAH mark with the Canadian Intellectual Property Office (“CIPO”) (e.g., Reg. No. TMA201421; registered Aug. 30, 1974). See Amend. Compl., at Attached Annex B. Respondent’s <neennah.com> is confusingly similar to Complainant’s NEENAH mark because it incorporates the mark in its entirety, merely adding an extra “N” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <neennah.com>. domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the NEENAH mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate or fair use of the domain. Respondent’s <neennah.com> domain name resolves to an inactive website, displaying the message “This site can’t be reached.” See Amend. Compl., at Attached Annex F.
Respondent registered and is using the <neennah.com> domain name in bad faith. The disputed domain name attracts internet users to Respondent’s website for commercial gain. Moreover, Respondent’s <neennah.com> domain name disrupts Complainant’s business by engaging in typosquatting to redirect users to Respondent’s website. Respondent registered the <neennah.com> domain name with at least constructive or actual knowledge of Complainant and its rights to the NEENAH mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent international company that is a global retailer of paper and paper-related products.
2. Complainant uses the NEENAH mark in conjunction with its business practices. Complainant registered the NEENAH mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,546,554; registered Mar. 12, 2002).
3. Respondent registered the <neennah.com> domain name on April 22, 2017.
4. The domain name resolves to an inactive website, displaying the message “This site can’t be reached.
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.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s NEENAH mark. Complainant contends that Respondent’s <neennah.com> domain name is confusingly similar to Complainant’s NEENAH mark because it incorporates the mark in its entirety, merely adding an extra “N” and the “.com” gTLD. “Where a respondent has created a domain name in an effort to visually deceive Internet users via a simple misspelling (and when such misspellings are visually similar to the mark), a finding of confusing similarity under Policy ¶ 4(a)(i) is appropriate.” Acme Lift Company, L.L.C. v. VistaPrint Technologies Ltd, FA 1607039 (Forum Apr. 11, 2015). Moreover, “[a]dding a single letter is not enough to prevent a domain name from being confusingly similar to a mark.” TripAdvisor, LLC / Smarter Travel Media LLC / Jetsetter, Inc. v. RAKSHITA MERCANTILE PRIVATE LIMITED, FA 1623459 (Forum July 17, 2015). Lastly, “[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.” Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003). The Panel concludes that Respondent’s <neennah.com> domain name is confusingly similar to Complainant’s NEENAH mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 (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 (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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s NEENAH mark and to use it in its domain name adding only adding an extra letter “N”;
(b) Respondent registered the domain name on April 22, 2017;
(c)The domain name resolves to an inactive website, displaying the message “This site can’t be reached;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the <neennah.com> domain name. To support its submission, Complainant illustrates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identify Respondent as “Melody Graham.” See Amend. Compl., at Attached Amend. Annex D. Panels have concluded that a respondent is not commonly known by a disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, as “nothing in [Respondent’s] WHOIS information implies that [Respondent] is ‘commonly known by’ the disputed domain name,” the Panel determines that Respondent is not commonly known by the <neennah.com> domain name;
(f) Complainant avers it has not authorized or licensed Respondent to use the NEENAH mark in any regard, nor is Respondent affiliated with Complainant. Complainant contends that Respondent has not made a bona fide offering of goods or services, or a legitimate or fair use of the domain name. Complainant demonstrates that Respondent’s <neennah.com> domain name resolves to an inactive website, displaying the message “This site can’t be reached.” See Amend. Compl., at Attached Annex F. “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute.’” Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Panels have found that failure to make active use of “a domain name that is identical to [c]omplainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).” Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004). As such, the Panel finds that “Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).” U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Forum Apr. 9, 2007).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and is using the <neennah.com> domain name in bad faith. The Panel notes that Respondent’s <neennah.com> domain name resolves to an inactive webpage with no demonstrable intent to use the domain name. See Amend. Compl., at Attached Annex F. Complainant asserts that the disputed domain name attracts internet users to Respondent’s website for commercial gain. Panels have found bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.” Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000); see also Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). Hence, the Panel determines that Respondent’s inactive use of the disputed domain name evinces bad faith registration under the Policy.
Secondly, Complainant maintains that Respondent’s <neennah.com> domain name disrupts Complainant’s business by engaging in typosquatting to redirect users to Respondent’s website. “Respondents who capitalize on common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii).” Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015). Panels have held that the practice of typosquatting “diverts Internet users who misspell [c]omplainant’s mark to a website apparently owned by [r]espondent for [r]espondent’s commercial gain.” Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Forum May 19, 2003). Therefore, the Panel finds that Respondent’s <neennah.com> domain name is evidence of typosquatting and bad faith registration and use under Policy ¶ 4(b)(iv). See e.g., Zone Labs, Inc. v. Zuccarini, FA 190613 (Forum Oct. 15, 2003).
Thirdly, Complainant submits that Respondent registered the <neennah.com> domain name with at least constructive or actual knowledge of Complainant and its rights to the NEENAH mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). Complainant argues that in light of the fame, notoriety, and long-standing use of the NEENAH mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Therefore, as the circumstances indicate that Respondent had actual knowledge of Complainant's NEENAH mark when it registered the <neennah.com> domain name, the Panel finds bad faith. Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006).
Fourthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the NEENAH mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <neennah.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 20, 2017
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