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.
The disputed domain name <arjowiggins-healthcare.com> (“Disputed Domain Name”) is registered with Above.com, Inc.
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 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.
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.
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.
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.
The Respondent did not reply to the Complainant's contentions.
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
(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).
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.
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;
(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.
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 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.
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
Dated: March 4, 2010