WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Weyerhaeuser Company v. Chen Bao Shui
Case No. D2007-0969
1. The Parties
The Complainant is Weyerhaeuser Company of Federal Way, Washington, United States of America represented by its internal authorized representative.
The Respondent is Chen Bao Shui of Shanghai, China.
2. The Domain Name and Registrar
The disputed domain name <myweyerhaeuser.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2007. On July 4, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 5, 2007, eNom 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”), 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 July 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 17, 2007.
The Center appointed James Bridgeman as the sole panelist in this matter on September 7, 2007. 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 has been engaged in interstate trade in the business of forestry products using the WEYERHAEUSER trademark since in or about 1948. The Complainant is a long established corporation with annual sales of USD 19.9 billion.
The Complainant is the owner over one hundred trademark registrations throughout the world in respect of, or incorporating, the word mark WEYERHAEUSER. The Complainant has submitted copies of the registration certificates in respect of its large portfolio of trademark registrations in jurisdictions throughout the world as an annex to the Complaint as evidence of its rights in the WEYERHAEUSER mark.
In particular the Complainant relies on the following important United States of America trademark registrations:
- United States of America Trademark registration number 814925 WEYERHAEUSER registered September 13, 1966 in class 7 in respect of Packaging machines in class 7.
- United States of America Trademark registration number 817189 WEYERHAEUSER registered October 25, 1966 in class 1.
- United States of America Trademark registration number 817237 WEYERHAEUSER registered October 25, 1966 in respect of rough and dressed lumber, millwork, shakes and shingles, panelling, doors in class 19.
- United States of America Trademark registration number 818501 WEYERHAEUSER registered November 15, 1966 in respect of “boxes, cartons and containers made of paperboard, fibreboard, corrugated pal and molded wood trays, in Class 16”.
- United States of America Trademark registration number 823127 WEYERHAEUSER registered January 24, 1967 in respect of “financial services, namely, financing home construction performed for others in Class 36.”
The Complainant also used other marks consisting of the terms “Weyerhaeuser” combined with other terms such as “The Nature of Weyerhaeuser”.
In the absence of a Response there is no information available about the Respondent except that found in the WHOIS database and the information provided by the Complainant in the Complaint. The domain name in dispute was created on November 26, 2005.
5. Parties’ Contentions
The Complainant submits that it has exclusive rights to the name and mark WEYERHAEUSER. The Complainant submits that its rights to the name and mark have been established through the Complainant’s exclusive and extensive use of the WEYERHAEUSER mark in commerce commencing at least as early as 1948.
Founded in 1900, the Complainant has become one of the world’s largest international forest product companies with annual sales of USD $19.9 billion. The Complainant offers its goods and services by many means including through its website established at “www.myweyerhaeuser.com”. Consumers have come to know and recognize the name and mark WEYERHAEUSER and to associate it with the Complainant.
The Complainant submits that the domain name in dispute is confusingly similar to the Complainant’s WEYERHAEUSER name and registered trademarks. The Complainant’s ownership of the registered trademarks satisfies the threshold requirement of having trademark rights under Paragraph 4(a)(i) of the Policy. Citing Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; Consorzio del Formagggio Parmigiano Reggiano v. La case del Latte di Bibulic Adriano, WIPO Case No.D2003-0661.
In May 2007, the Complainant became aware that the Respondent had registered the domain name in dispute. The Complainant submits that the Respondent has no rights or legitimate interests in the domain name in dispute. There is no evidence of the Respondent’s use of, or intention to use the domain name in connection with a bona fide offering of goods or services. The Respondent is not commonly known by the domain name in dispute and is not authorized by the Complainant to use the Complainant’s name and registered trademark.
There is no credible reason for the Respondent to choose the domain name in dispute. The Respondent is using the domain name to host a website that links to a search engine which allows the Respondent to make money every time a web surfer clicks a sponsored link on the hosted site.
The site established at the address of the disputed domain name <myweyerhaeuser.com>, links to other websites not related to the Complainant or its business or functions. The links include commercial websites for various employment placement websites not related to employment at the Complainant, payroll services websites not related to the Complainant, and discounted travel websites not related to the Complainant. None of these links justifies credible use of the domain name. The Complainant submits copies of the webpage links as an annex to the Complaint.
In support of its claim that the Respondent has registered and is using the domain name in bad faith, the Complainant submits that by using the domain name the Respondent is intentionally attempting to attract for commercial gain, Internet users into accessing websites containing a series of links to other commercial websites. The Respondent is thereby creating a likelihood of confusion by using the Complainant’s trademark to attract Internet traffic to his site in order to generate advertising revenue, which is typically paid on a per-click basis, based on the clicks a user must employ to determine if the site is legitimate or to exit the site.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
A. Identical or Confusingly Similar
The Complainant has provided comprehensive evidence of its ownership of and rights in the WEYERHAEUSER trademark through its worldwide portfolio of trademark registrations and its long established use of the WEYERHAEUSER trademark in it business of forestry products since in or about 1948.
The domain name in dispute consists of two elements viz the combination of the word “my” and the Complainant’s WEYERHAEUSER trademark. The dominant element of the domain name is the WEYERHAEUSER element and therefore it is confusingly similar to the Complainant’s trademark.
The Complainant has therefore established the first element of the test in Paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
It is well established in decisions under the Policy that the onus rests on the Complainant to make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to demonstrate that he has rights or legitimate interests in the domain name.
In casu, the Complainant has made out a prima facie case that the Respondent does not have any rights or legitimate interest in the domain name in dispute. There is no evidence that the Respondent is commonly known by the domain name, that the domain name is or has been used by the Respondent in connection with any bona fide offering of goods or services or for any bona fide non-commercial purposes. The Respondent has never been authorized to use the Complainant’s trademark as a domain name or otherwise.
The Respondent has not filed a Response or made any attempt to address the case made by the Complainant and has therefore failed to discharge the burden that rests on him to demonstrate that he has any rights in the domain name.
In the circumstances the Complainant has established the second element of the test in Paragraph 4(a) of the Policy
C. Registered and Used in Bad Faith
This Panel accepts the Complainant’s submission that there is no credible reason for the Respondent to choose the domain name in dispute except for the purposes of creating the impression that there is a connection between the domain name and the Complainant’s business through the confusing similarity between the domain name chosen by the Respondent and the Complainant’s distinctive trademark.
The dominant element of the domain name is the Complainant’s distinctive trademark. Because the Complainant’s trademark is so distinctive it is highly improbable that the Respondent was not aware of the Complainant and its trademark when the domain name was registered and used as the address of a website.
Paragraph 4(b) of the Policy lists circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(b)(iv) of the Policy allows the Panel to find evidence of bad faith in circumstances where, by using the domain name, the owner of the registration has intentionally attempted to attract, for commercial gain, Internet users to its 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 location or of a product or service on your website or location.
In casu, the Complainant has provided evidence that the Respondent is using the domain name as the address of a website with links to third party websites. The Complainant has submitted that the domain name is being used to generate per click income. This has not been proven but there is no indication in the record that the Respondent is using the domain name and the website to which it resolves for any bona fide non-commercial purpose that does not generate an income. It follows that this Panel must find on the balance of probabilities that the Respondent registered the domain in bad faith and is using the domain name in bad faith with the intention of generating income from the predatory use of the Complainant’s trademark by means of initial interest confusion.
This Panel is therefore satisfied, on the balance of probabilities and in the absence of any Response or explanation from the Respondent, that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
The Complainant has therefore established the third and final element of the test in Paragraph 4(a) of the Policy also and is entitled to succeed in its application.
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 <myweyerhaeuser.com> be transferred to the Complainant.
Dated: September 21, 2007