Georgia-Pacific LLC v. Chanchai Wiriya
Claim Number: FA2105001947361
Complainant is Georgia-Pacific LLC (“Complainant”), represented by Hannah Lutz of Lathrop GPM, LLP, Minnesota, USA. Respondent is Chanchai Wiriya (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <georgiapacificpaper.com>, registered with DropCatch.com 1430 LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2021; the Forum received payment on May 24, 2021.
On May 25, 2021, DropCatch.com 1430 LLC confirmed by e-mail to the Forum that the <georgiapacificpaper.com> domain name is registered with DropCatch.com 1430 LLC and that Respondent is the current registrant of the name. DropCatch.com 1430 LLC has verified that Respondent is bound by the DropCatch.com 1430 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 26, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2021 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@georgiapacificpaper.com. Also on May 26, 2021, 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 June 21, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the GEORGIA-PACIFIC trademark established by its ownership of the trademark registrations set out below. In addition, Complainant submits that it has established common law rights in the mark through the goodwill and reputation created by its use of the mark in its international business since 1959. Complainant has established locations in more than 30 states across the USA and has more than 180 locations and over 30,000 employees worldwide. Its Internet presence is established by its use of its <gp.com> and <georgiapacific.com> domain names that resolve to Complainant’s official website, at <www.gp.com>.
Complainant alleges that the disputed domain name <georgiapacificpaper.com> is confusingly similar, and nearly identical, to its GEORGIA-PACIFIC trademark, submitting that the only differences are that the hyphen has been removed from the trademark and the generic term “paper” has been added together with the generic Top-Level Domain (“TLD”) extension <.com>.
Complainant argues that none of these changes reduce the likelihood of consumer confusion resulting from Respondent’s deceptive use of the disputed domain. The fact that the disputed domain contains the identical, entire term “georgiapacific” renders it confusingly similar to the Complainant’s mark. See Bloomberg Finance L.P. v. Jeffrey Bartell/ Hamptons Group, FA1704001726658 (Forum May 17, 2017) (finding that the domain name “bloombergnewswire.net” was confusingly similar to the “Bloomberg” mark, in part, because the domain name contained the “entire Bloomberg trademark.”).
Complainant contends that the word “paper” is a generic term which merely suggests printing services. See Kimberly-Clark Worldwide, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2005001894753 (Forum June 4, 2020) (finding <cottonelletoiletpaper.com> confusingly similar to COTTONELLE mark and characterizing “toilet paper” as a generic term that “does not negate any confusing similarity”).
Moreover, Complainant argues that it is well established that the <.com> gTLD extension does not serve to distinguish a domain from a protected mark. See, e.g., Bridgewater Associates, LP v. Mohammed Islam, FA2002001885651 (Forum Mar. 27, 2020); NCS Pearson, Inc. and Regents of the University of Minnesota v. Nana Boonkoom, FA2005001894832 (Forum June 1, 2020).
Complainant then alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that the registration details for the disputed domain name show that Respondent is known as “Chanchai Wiriya” and therefore is not commonly known by the domain name.
Complainant adds that the fact that Respondent’s identity was shielded by a WHOIS privacy service is further evidence that Respondent is not commonly known by [the disputed] domain name.” See Fitness International, LLC v. Domain Administrator/China Capital Investment Limited, FA1704001729056 (Forum June 1, 2017) (finding no legitimate rights or interest where the WHOIS information named the registrant, “Domain Administrator.”).
Complainant asserts that Respondent is not affiliated with Complainant in any way, nor has Respondent been licensed or authorized to use Complainant’s GEORGIA-PACIFIC mark, or any confusingly similar trademarks, in connection with any goods or services. Specifically Complainant has never given Respondent the authority to use the GEORGIA-PACIFIC mark, or any confusingly similar mark, in the disputed domain. Complainant submits that this supports the presumption that Respondent does not have any rights or legitimate interest in the disputed domain. See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (finding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”).
Moreover, referring to a screen capture of the website to which the disputed domain name resolves, Complainant argues that it shows that Respondent is misleadingly and prominently using the GEORGIA-PACIFIC trademark to advertise printing services that compete with Complainant’s products, under the name “GEORGIA PACIFIC PAPER”.
Complainant adds that said screen capture also shows blogs on the website to which the disputed domain name resolves with links to a links to gambling-orientated websites.
Complainant submits that such use of the disputed domain name cannot be considered a bona fide offering of goods or services or a legitimate noncommercial fair use under the Policy. See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); and John Suhr v. Pan Huang, FA1809001807394 (Forum Oct. 24, 2018) (holding that “Respondent has no rights or legitimate interests in the disputed domain name” due in part to evidence that “the website contains text that purports to be advice on guitars. However, the text includes hyperlinked and coloured links . . . When these links are clicked on they lead to a vast array of gambling and betting options . . .”).
Complainant then contends that the disputed domain name was registered in bad faith arguing that it is inconceivable that Respondent chose a domain name copying Complainant’s GEORGIA-PACIFIC mark verbatim, in combination with a generic term referring to a type of product sold by Complainant, without prior knowledge of Complainant’s business and rights, particularly given that Respondent’s domain advertises related services.
Complainant refers to results from archive and wayback machine searches which have been submitted in an annex to the Complaint, which it is submits show that Respondent owned and used the identical domain name prior to its present registration in November 5, 2019 and argues that this illustrates that the registrant of the disputed domain name was actually aware of Complainant and its rights in the GEORGIA-PACIFIC mark when the disputed domain name was registered.
Complainant submits that therefore the disputed domain name was apparently registered with the goal of obtaining commercial benefit by the advertisement or sale of competing services, as well as the diversion of visitors to gambling websites.
Referring to said screen-captures of the website to which the disputed domain name resolves, Complainant adds that the use of the disputed domain name to divert Internet users to Respondent’s website that purports to offer competing goods or services, and provides links to third party gambling sites further evidence use of the disputed domain name in bad faith. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018). Respondent’s use of a confusingly similar domain to pass itself off as Complainant or an authorized affiliate of Complainant, and to advertise or sell competing services, is a classic case of bad faith use undertaken with the purpose to profit from consumer confusion.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of paper-based products, tissue, pulp, packaging, building products, and related chemicals for which it uses its registered trademark GEORGIA-PACIFIC. Based in Georgia in the USA, Complainant owns the following trademark registrations:
· United States registered trademark GEORGIA-PACIFIC registration number 994319 registered on the Principal Register on October 1, 1974 for goods in international classes 16 and 21;
· United States registered trademark GEORGIA-PACIFIC registration number 1441216 registered on the Principal Register on June 2, 1987 for goods in international classes 12;
· United States registered trademark GEORGIA-PACIFIC registration number 1569680 registered on the Principal Register on December 5, 1989 for goods in international class 16;
· United States registered trademark GEORGIA-PACIFIC registration number 1585640 registered on the Principal Register on March 6, 1990 for goods in international class 16;
· United States registered trademark GEORGIA-PACIFIC registration number 1585652 registered on the Principal Register on March 6, 1990 for goods in international class 16.
Complainant has an international business, with an established Internet presence, and is also the owner among others, of the domain names the <gp.com> and <georgiapacific.com> which were registered on November 17, 1996 and December 17, 1997, respectively and each resolve to Complainant’s official website at the URL https://www.gp.com/.
The disputed domain <georgiapacificpaper.com> was most recently registered on November 5, 2019 and is being used by Respondent as the address of a website which as of April 29 and May 4, 2021, the <georgiapacificpaper.com> domain resolved to a website advertising printing services under the name “GEORGIA PACIFIC PAPER.” The website also contains a blog with information that has no apparent connection with Respondent’s purported services and include advice on travel to Malaysia, Singapore and
There is no information available about Respondent who has availed of a privacy service to conceal his identity, except for that provided in the Complaint, the Registrar’s WhoIs and information provided by the Registrar in response to the enquiry from the Forum seeking confirmation details of the registration of the disputed domain name for the purposes of this Complaint.
The Registrar has confirmed that Respondent is the registrant of the disputed domain name.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has provided uncontested convincing evidence that it has rights in the GEORGIA-PACIFIC trademark established by its ownership of the trademark registrations set out above and at common law through the goodwill and reputation it has established by long and continuous use of the mark in its international business since 1959.
The disputed domain name consists of Complainant’s GEORGIA-PACIFIC trademark, omitting the hyphen, in combination with the word “paper”.
The only differences between the disputed domain name and Complainant’s mark are the omission of the hyphen, the addition of the generic term “paper” and the generic Top-Level Domain (“TLD”) extension <.com>.
Complainant’s mark is clearly recognizable within the disputed domain name and is in fact the initial, dominant and only distinctive element. The other elements neither add to, nor detract from, the confusingly similar character of the disputed domain name because the hyphen is likely to be ignored and the word “paper” has no distinguishing characteristic.
For the purposes of evaluating confusing similarity between the disputed domain name and Complainant’s mark, the gTLD <.com> extension may be ignored, because in the circumstances of this Complaint, on the balance of probabilities it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the GEORGIA-PACIFIC mark in which Complainant has rights.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested prima facie case that Respondent has no rights or legitimate interests in the disputed domain name submitting that
· Respondent identifies himself as “Chanchai Wiriya” as registrant for the disputed domain name;
· Respondent shielded his identity on the published WHOIS by availing of a privacy service;
· Respondent is not affiliated with Complainant in any way;
· Respondent not been licensed or authorized to use Complainant’s GEORGIA-PACIFIC mark, or any confusingly similar trademarks, in connection with any goods or services;
· Complainant has never given Respondent the authority to use the GEORGIA-PACIFIC mark, or any confusingly similar mark, in the disputed domain name;
· the screen capture of the website to which the disputed domain name resolves, which has been submitted in an annex to the Complaint, shows that Respondent is misleadingly and prominently using Complainant’s GEORGIA-PACIFIC trademark to advertise printing services that compete with Complainant’s products, under the name “GEORGIA PACIFIC PAPER”;
· said screen capture also shows that there are blogs on the website to which the disputed domain name resolves with links to a links to gambling-orientated websites;
· such use of the disputed domain name cannot be considered a bona fide offering of goods or services or a legitimate noncommercial fair use under the Policy.
It is well established that, as in this case, once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts the respondent to prove such rights or interests.
Respondent has failed to discharge the burden of production in this proceeding. This Panel must therefore find that on the balance of probabilities, Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Complainant submits that Respondent must have been actually aware of Complainant and its GEORGIA-PACIFIC mark because Complainant had used a domain name identical to the present disputed domain name in the years prior to the registration of the disputed domain name in November 5, 2019. Complainant apparently then abandoned the registration.
This assertion is supported by results from archive and wayback machine searches which have been submitted in an annex to the Complaint.
This Panel finds however that this is not conclusive evidence that the registrant of the disputed domain name was aware of Complainant. It is quite possible that a registrant of a domain name would be unaware of prior lapsed registrations.
However, the disputed domain name is quite specific and distinctive. It is a combination of Complainant’s trademark and the word “paper” which is a reference to Complainant’s business and products. It is implausible that this combination of elements would be chosen and registered without any knowledge of Complainant’s GEORGIA-PACIFIC mark and reputation.
This Panel finds therefore that the disputed domain name was registered in bad faith with the intention of taking predatory advantage of Complainant’s reputation and goodwill for the purposes of commercial gain.
The screen-captures of the website to which the disputed domain name resolves, which have been submitted in an annex to the Complaint show that Respondent is purporting to impersonate Complainant and to use the disputed domain name to pass off his competing products and services as that of Complainant.
Furthermore, the blogs on Respondent’s website have no apparent connection with Respondent’s purported paper business. They have information about totally unrelated matters such as travel and lost telephones. These blogs are part of the fabric of the website as shown in the hypertext submitted in the Complaint. They are not automatically generated links.
This Panel must conclude that Respondent is therefore using the disputed domain name to create confusion among Internet users, attracting them to Respondent’s website using Complainant’s trademark and then presenting them with links to third party websites for commercial gain. Such “bait and switch” use must be categorized as bad faith for the purposes of the Policy.
As this Panel has found that on the balance of probabilities the disputed domain name was registered and is being used in bad faith.
Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) and is entitled to succeed in its application for transfer of the disputed 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 <georgiapacificpaper.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: June 22, 2021
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