DECISION

Wausau-Mosinee Paper Corporation v. Domain Deluxe

Claim Number:  FA0406000285145

PARTIES

Complainant is Wausau-Mosinee Paper Corporation (“Complainant”), represented by Steven M. Anderson of Ruder, Ware & Michler, L.L.S.C., 500 Third Street, Suite 700, P.O. Box 8050, Wausau, WI 54402-8050.  Respondent is Domain Deluxe (“Respondent”), GPO 7628, Central, HK.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wausaupaper.com>, registered with The Registry At Info Avenue d/b/a IA Registry.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically June 9, 2004; the Forum received a hard copy of the Complaint June 14, 2004.

On June 14, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by e-mail to the Forum that the domain name <wausaupaper.com> is registered with The Registry At Info Avenue d/b/a IA Registry and that Respondent is the current registrant of the name. The Registry At Info Avenue d/b/a IA Registry verified that Respondent is bound by the The Registry At Info Avenue d/b/a IA Registry registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 16, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 6, 2004, 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@wausaupaper.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 Forum transmitted to the parties a Notification of Respondent Default.

On July 12, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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 Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. The domain name registered by Respondent, <wausaupaper.com>, is confusingly similar to Complainant’s WAUSAU PAPERS mark.

2. Respondent has no rights to or legitimate interests in the <wausaupaper.com> domain name.

3. Respondent registered and used the <wausaupaper.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Wausau-Mosinee Paper Corporation, is in the business of producing and selling numerous varieties of specialty, printing, writing, and imaging papers as well as towel and tissue papers.  Complainant’s business consists of three separate business operating groups, including the Printing & Writing Group, the Specialty Paper Group, and the Towel & Tissue Group.  The name WAUSAU PAPERS refers to a segment of the Printing & Writing Group within Complainant’s organization.  Complainant owns the registration with the United States Patent and Trademark Office for the WAUSAU PAPERS mark (Reg. No. 2,123,454 issued December 23, 1997). 

Since 1960, Complainant has used the WAUSAU PAPERS mark continuously and extensively in connection with its paper business.  Complainant registered the <wausaupapers.com> domain name July 6, 1995, to advertise and sell its products on a national and international scale.  Complainant also promotes and sells its products via catalogues.

Respondent registered the <wausaupaper.com> domain name November 28, 2001.  The disputed domain name resolves to a website that initially features links to numerous websites offering paper products of Complainant’s competitors.  Respondent’s website also features links to various other categories of products and services unrelated to Complainant as well as a search engine and banner advertisements.          

DISCUSSION

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 will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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.

Identical to and/or Confusingly Similar

Complainant has established with extrinsic proof in this proceeding that it has rights in the WAUSAU PAPERS mark through registration with the United States Patent and Trademark Office and by continued use of its mark in commerce for the last forty-four years.  See 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.  Respondent has the burden of refuting this assumption).

The <wausaupaper.com> domain name registered by Respondent is confusingly similar to Complainant’s WAUSAU PAPERS mark because the domain name incorporates Complainant’s mark, deviating only by the deletion of the letter “s” at the end of the mark.  The mere deletion of a letter from Complainant’s mark does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks).

The Panel finds the Policy ¶ 4(a)(i) has been satisfied. 

Rights to or Legitimate Interests

Complainant has established that it has rights to and legitimate interests in its protected mark and has alleged that Respondent has no such rights to or legitimate interests in the <wausaupaper.com> domain name.  Due to Respondent’s failure to respond to the Complaint, the Panel is permitted to assume that Respondent lacks rights and legitimate interests in the disputed domain name because the burden shifts to Respondent to show rights to or legitimate interests in the domain name once Complainant establishes a prima facie case pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See 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”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <wausaupaper.com> domain name to redirect Internet users to a website that features banner advertisements and links to a variety of websites including those offering products in direct competition with the products and services offered by Complainant under its WAUSAU PAPERS mark.  Respondent’s use of a domain name that is confusingly similar to Complainant’s WAUSAU PAPERS mark to redirect Internet users interested in Complainant’s paper products to a commercial website that features links to a variety of websites offering competing paper products and numerous other products and services unrelated to Complainant is not in connection with 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).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

Finally, Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <wausaupaper.com> domain name.  Furthermore, Complainant has not authorized or licensed Respondent to use its WAUSAU PAPERS mark.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent intentionally registered the <wausaupaper.com> domain name that contains a confusingly similar version of Complainant’s well-known WAUSAU PAPERS mark for Respondent’s commercial gain.  Respondent’s domain name diverts Internet users who seek Complainant’s WAUSAU PAPERS mark to Respondent’s commercial website through the use of a domain name that is confusingly similar to Complainant’s mark.  Furthermore, Respondent is unfairly and opportunistically benefiting from the goodwill associated with Complainant’s WAUSAU PAPERS mark and using the website, in part, to provide products and services similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Additionally, the Panel is permitted to infer that because Respondent had notice of Complainant’s rights in its marks, Respondent’s use suggests that Respondent registered the <wausaupaper.com> domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that directly competed with Complainant by providing links to competitors’ similar products.  Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii)); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and used the domain name primarily for the purpose of disrupting the business of Complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to Complainant’s services under the OPENMAIL mark).

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of a domain name, additional factors can also be used to support findings of bad faith registration and use.  The Panel looks to the totality of the circumstances..  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, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

Further, the fact that the domain name deviates from Complainant’s mark only with the deletion of the letter “s,” is additional proof that Respondent knew of Complainant’s rights in the WAUSAU PAPERS mark.  The disputed domain name links to a website that provides links to websites offering goods and services of Complainant’s competitors.  The Panel finds that Respondent chose the <wausaupaper.com> domain name based on the distinctive and well-known qualities of Complainant’s mark and therefore Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <wausaupaper.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: July 26, 2004

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