WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arjowiggins, Arjowiggins Palalda v. Lu Lan
Case No. D2010-0082
1.
The Parties
The Complainants are Arjowiggins and Arjowiggins Palalda both of Levallois-Perret,
France, represented by AB INITIO, France.
The Respondent is Lu Lan of Shanghai, China.
2.
The Domain Name and Registrar
The disputed domain name <arjowiggins-healthcare.com> (“Disputed Domain Name”)
is registered with Above.com, Inc.
3.
Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on January 17, 2010. On January 18, 2010, the Center transmitted by
email to Above.com, Inc. a request for registrar verification in connection with the
disputed domain name. On January 20, 2010, Above.com, Inc. transmitted by email to
the Center its verification response confirming that the Respondent is listed as the
registrant and providing the contact details. The Center verified that the Complaint
satisfied the formal requirements of the Uniform Domain Name Dispute Resolution
Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute
Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform
Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the
Respondent of the Complaint, and the proceedings commenced on January 20, 2010.
In accordance with the Rules, paragraph 5(a), the due date for Response was
February 9, 2010. The Respondent did not submit any response. Accordingly, the
Center notified the Respondent’s default on February 10, 2010.
The Center appointed Michael A. Albert as the sole panelist in this matter on
page 1
February 18, 2010. The Panel finds that it was properly constituted. The Panel has
submitted the Statement of Acceptance and Declaration of Impartiality and
Independence, as required by the Center to ensure compliance with the Rules,
paragraph 7.
4.
Factual Background
The Complainant is a manufacturer of creative and technical paper and has operations
in Europe, North America, Latin America and Asia. In 2008, the Complainant had
7,300 employees, 27 production facilities, and generated €1.8 billion in sales. The
Complainant manufactures high value-added paper in five business segments – namely,
graphic paper, coated paper, creative paper, security paper (e.g., bank notes) and
industrial solutions paper.
The Complainant holds 10 trademark registrations for the ARJOWIGGINS Mark in
several countries in Europe and Asia, 6 trademark registrations for ARJOWIGGINS in
Chinese script, and a trademark registration for ARJO WIGGINS in China. All of the
Complainant’s 28 Marks were registered before 2009 and nearly all were registered in
connection with “paper” in class 16 of the International Schedule of Classes of Goods
and Services. The ARJOWIGGINS Mark is a combination of two company names,
Arjomari and Wiggins Teape, which merged, thereby giving the Arjowiggins company
its name.
The Complainant has registered 46 domain names which include the ARJOWIGGINS
Mark, including the domain name <arjowigginshealthcare.com> on November
17, 2009.
5.
Parties’ Contentions
A.
Complainant
The Complainant is a large global paper company and its ARJOWIGGINS Mark is
well-known in connection with paper products, including products with medical
applications. For example, the Complainant manufactures sterile packaging and
sterilization wraps (i.e., sheets for covering patients, table covers, surgical stand
covers).
In mid-2009, the Complainant changed the name of its department dedicated to medical
paper products from Arjowiggins Medical Papers to Arjowiggins Healthcare. The
Complainant decided to first communicate its new business name at a medical products
trade fair in Germany on November 18-20, 2009. It applied for a booth at the trade fair
on September 9, 2009. The new business name was displayed on its booth. On
August 24, 2009, it ordered business cards from a firm in Shanghai, China, bearing the
new business name Arjowiggins Healthcare.
The Respondent, also apparently located in Shanghai, China, registered the Disputed
Domain Name on November 15, 2009. The Disputed Domain Name consists of the
Complainant’s trademark ARJOWIGGINS with the addition of the noun “healthcare”,
which describes the type of paper products manufactured by the Complainant.
The Complainant contends that the Disputed Domain Name is confusingly similar to
the Complainant’s ARJOWIGGINS Mark, its domain names and business names.
page 2
The Complainant further contends that the ARJOWIGGINS Mark is well-known, that it
is very likely that the Respondent was aware of the Complainant’s rights to the
ARJOWIGGINS Mark; that the registration of the Disputed Domain Name was
therefore made in bad faith for the purpose of diverting Internet users seeking
information about the Complainant.
The Complainant further contends that the Respondent is in no way connected with the
Complainant; that the Respondent has no authorization to use any of the Complainant’s
ARJOWIGGINS trademarks, domain names, or business names; and that the
Respondent was not commonly known by the Disputed Domain Name as an individual,
business or other organization.
The Complainant further contends that the Respondent has not registered the
ARJOWIGGINS trademark with the French National Institute of Industrial Property,
the Office for Harmonization in the Internal Market, or the World Intellectual Property
Organization for Madrid Protocol/Agreement Trademark Registration.
The Complainant further contends that the day before the Complainant used its Mark at
the November trade fair, the Respondent registered the Disputed Domain Name in
order to profit from the Complainant’s new business name. Moreover, the Complainant
contends that the Respondent did so in order to prevent the Complainant from using the
mark in a corresponding domain name. The Complainant cites Arla Foods amba v. Lu
Lan, WIPO Case No. D2009-1539, to support its contention that the Respondent has a
history of acquiring and using domain names that incorporate famous trademarks to
misdirect Internet traffic to “pay-per-click” sites.
The Complainant further contends that the Disputed Domain Name redirects to a page
of commercial links of the “pay-per-click” type, some of which are related to paper
products, but none of which are related to the Complainant. The Complainant contends
that the Respondent intentionally attempts to attract for commercial gain Internet users
to the Respondent’s website or other on-line location.
B.
Respondent
The Respondent did not reply to the Complainant’s contentions.
6.
Discussion and Findings
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 the Complainant must prove each of the
following three elements to obtain an order that a domain name should be cancelled or
transferred:
(i)
the Disputed Domain Name registered by the Respondent is identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights;
(ii)
the Respondent has no rights or legitimate interests in respect of the Disputed
Domain Name; and
page 3
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Respondent provided no Response, and the deadline for so doing expired on
February 9, 2010. Accordingly, the Respondent is in default. Given the Respondent’s
default, the Panel can infer that the Complainant’s allegations are true where
appropriate to do so. Talk City, Inc. v. Michael Robertson, WIPO Case No.
D2000-0009. Nonetheless, the Complainant retains the burden of proving the three
requisite elements of paragraph 4(a).
A.
Identical or Confusingly Similar
The Complainant has provided evidence showing that it is the owner of the
ARJOWIGGINS Mark and similar variations. The Complainant does not have a
trademark registration of the term “arjowiggins-healthcare”. The Disputed Domain
Name and the Complainant’s trademarks are not identical, and the issue is therefore
whether the Disputed Domain Name and the Complainant’s trademarks are confusingly
similar.
The Domain Name combines three elements: (1) the Complainant’s ARJOWIGGINS
trademark; (2) the term “healthcare”, which is descriptive of the industry for which the
Complainant supplies paper products; and (3) the suffix “.com.” The relevant
comparison to be made is with the second-level portion of the Disputed Domain Name
only (i.e., “arjowiggins-healthcare”), as it is well-established that the top-level domain
name (i.e., “.com”) should be disregarded for this purpose. Playboy Enterprises
International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561.
Prior WIPO UDRP panels have recognized that the incorporation of a trademark in its
entirety may be sufficient to establish that a domain name is identical or confusingly
similar to the Complainant’s registered mark. AT&T Corp. v. William Gormally, WIPO
Case No. D2005-0758 (finding <attelephone.com> confusingly similar to ATT);
Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding
<quixtarmortgage.com> legally identical to QUIXTAR). Moreover, the addition of the
term “healthcare” as a suffix to the mark does not mitigate the confusing similarity
between the Disputed Domain Name and the Complainant’s ARJOWIGGINS
trademark. Specifically, because the word “healthcare” is associated with the
Complainant and its business, the suffix strengthens rather than weakens the confusing
similarity. See e.g., EarthLink, Inc. v. Keith Blatz, WIPO Case No. D2007-1288
(finding <earthlinkwifi.com> and <earthlinkwifi.net> confusingly similar to
EARTHLINK); Microsoft Corporation v. MindKind, WIPO Case No. D2001-0193
(finding <microsofthealth.com> confusingly similar to MICROSOFT).
For all of the foregoing reasons, this Panel finds that the Disputed Domain Name
<arjowiggins-healthcare> is confusingly similar to the Complainant’s ARJOWIGGINS
Mark, in which the Complainant has established rights. Therefore, the Panel finds that
the Complainant has proven the first element of the Policy.
B.
Rights or Legitimate Interests
Under the Policy, paragraph 4(c), rights or legitimate interests in domain names may be
demonstrated by showing that:
(i)
before any notice of this dispute, the Respondent used, or demonstrably prepared
to use, the domain names or a name corresponding to the domain names in
connection with a bona fide offering of goods or services;
page 4
(ii)
The Respondent has been commonly known by the domain names, even if no
trademark or service mark rights have been acquired; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the domain
names, without intent for commercial gain to misleadingly divert customers or to
tarnish the trademark at issue.
The Complainant contends that the Respondent has no rights to use the
ARJOWIGGINS Mark. The Complainant has alleged, and the Respondent has not
denied, that the Respondent is not using the Disputed Domain Name in connection with
a bona fide offering of goods or services, is not commonly known by the Disputed
Domain Name, and is misleading customers for commercial gain.
For all of the foregoing reasons, and in view of the Panel’s findings below, this Panel
finds that the Complainant has proven that the Respondent lacks rights to, or legitimate
interests in, the Disputed Domain Name. Therefore, the Panel is convinced that the
Complainant has proven the second element of the Policy.
C.
Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration
and use of a domain name in bad faith. One of the illustrations of bad faith, Policy
Paragraph 4(b)(iv), occurs when the Respondent attempts to attract, for commercial
gain, Internet users to the Respondent’s website or other on-line location, by creating a
likelihood of confusion with the Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of the Respondent’s website or of a product or service on the
Respondent’s website.
The Panel finds compelling circumstantial evidence that the Respondent likely knew of
the Complainant’s name when it registered the Disputed Domain Name. First, the
Respondent registered the <arjowiggins-healthcare.com> Domain Name a few days
before the Complainant publicly launched its new business name Arjowiggins
Healthcare at the medical products trade fair in Germany. Second, both the Respondent
and the firm that printed the Complainant’s new “Arjowiggins Healthcare” business
cards are located in Shanghai, China. Third, because the ARJOWIGGINS Mark is a
combination of two company names which are highly distinctive, arbitrary trademarks,
it is very unlikely that the Respondent would have registered a domain name
incorporating the Mark without knowledge of the Mark. Based on the foregoing
evidence, the Panel finds that the Respondent registered the Disputed Domain Name in
bad faith. See Asian World of Martial Arts Inc. v. Texas International Property
Associates, WIPO Case No. D2007-1415 (“It defies common sense to believe that
Respondent coincidentally selected these precise domain names without any knowledge
of Complainant and its PROFORCE Trademarks.”).
The Panel also finds that the Respondent used the name in bad faith. Prior WIPO
UDRP panels have found that the use of “parking” pages which use another party’s
mark to generate click-through commissions constitutes evidence of bad faith usage.
This Panel agrees with the conclusion in Owens Corning v. NA, WIPO Case No.
D2007-1143:
“It is common knowledge that the way in which many of these services
operate is that the domain parking service operators obtain ‘click through
revenue’ when Internet users click on the ‘sponsored links’ on the displayed
page. Many of these services will then provide the domain name registrant
page 5
with part of that ‘click through’ revenue. … [L]inking a domain name to
such a service with a trademark owner’s name in mind and in the hope and
expectation that Internet users searching for information about the business
activities of the trademark owner will be directed to the parking service
page, is a different matter. Such activity does not provide a legitimate
interest in that domain name under the Policy… [B]y placing the Domain
Name with a domain name parking service, the Respondent deliberately
attracted, for commercial gain, Internet users to the webpage created by
GoDaddy by trading [on] a likelihood of confusion with the Complainant’s
mark.”
Here, the Respondent appears to be using the Complainant’s ARJOWIGGINS Mark in
a manner that constitutes bad faith under Policy paragraph 4(b)(iv). Although this
alone is sufficient to find bad faith, there is additional evidence of bad faith under
Policy paragraph 4(b)(ii). This additional illustration of bad faith occurs when the
Respondent has registered the Disputed Domain Name in order to prevent the
Complainant from reflecting the Mark in a corresponding domain name, and the
Respondent has engaged in a pattern of such conduct.
As the Complainant notes, a prior WIPO UDRP panel has found that the Respondent
acquired and used a domain name that incorporates a famous trademark to misdirect
Internet traffic to “pay-per-click” sites. Arla Foods amba v. Lu Lan, supra. By
registering other parties’ marks, the Respondent has prevented the mark owners from
reflecting the mark in a corresponding domain name. Because this is not the first time
the Respondent has engaged in this sort of conduct there is arguably a pattern of such
conduct which constitutes evidence of bad faith under Policy paragraph 4(b)(ii). But
even if the Respondent’s conduct lacks sufficient intent or reputation to constitute bad
faith under Policy paragraph 4(b)(ii), its conduct nevertheless constitutes bad faith
under Policy paragraph 4(b)(iv). Therefore, the Panel finds that the Complainant has
demonstrated that the Respondent registered and is using the Disputed Domain Name
in bad faith. The Complainant has thus proven the third and final element of the Policy.
7.
Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15
of the Rules, the Panel orders that the domain name, <arjowiggins-healthcare.com> be
transferred to Complainant.
Michael A. Albert
Sole Panelist
Dated: March 4, 2010
page 6