WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Georgia-Pacific Corporation v. Charlie Kalopungi
Case No. D2011-0634
1. The Parties
The Complainant is Georgia-Pacific Corporation of Atlanta, Georgia, United States of America, represented by Melbourne IT Digital Brand Services, United States of America.
The Respondent is Charlie Kalopungi of Mahe, Seychelles.
2. The Domain Name and Registrar
The disputed domain name <georgiapacificjobs.com> is registered with Moniker Online Services, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2011. On April 12, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 12, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named the Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 21, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 26, 2011.
The Center verified that the Complaint together with the amendment to 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 April 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 18, 2011.
The Center appointed David Stone as the sole panelist in this matter on May 26, 2011. 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 language of the proceedings is English.
4. Factual Background
The Complainant is in the business of manufacturing and producing tissue, pulp, paper, packaging, building products and related chemicals globally under the trade mark GEORGIA PACIFIC from as early as 1927. The Complainant has approximately 300 manufacturing facilities across the globe, spanning Europe and North and South America.
The Complainant owns trade mark registrations around the world for the mark GEORGIA PACIFIC in relation to various goods and services. The Complainant’s registered rights in GEORGIA PACIFIC date from at least 1974.
The disputed domain name was registered on June 10, 2010. The Complainant asserts that the disputed domain name directed to a website that advertises, inter alia, allegedly vacant jobs using the registered trade mark of the Complainant. Currently, the website to which the disputed domain name resolves appears inactive.
5. Parties’ Contentions
The Complainant alleges that the disputed domain name is identical or confusingly similar to its registered trademark GEORGIA PACIFIC because it consists of the Complainant’s well-known mark with the addition of the non-distinctive word “jobs”. The addition of the word ”jobs” does not alter the phonetic, graphic and conceptual identity of the Complainant’s trade mark with that of the disputed domain name.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, nor has he acquired any trade mark rights for the mark GEORGIA PACIFIC or any similar marks in connection with any goods or services prior to or since the registration of the disputed domain name.
The Complainant submits that the Respondent is not commonly known by the disputed domain name and does not trade under the name “Georgia Pacific”.
Further, the Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, Internet traffic to his web site by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation or endorsement of the web site. The Complainant submits that the Respondent’s web site is a pay-per-click site. The Complainant further submits that the Respondent intentionally attempted to create a false association, sponsorship or endorsement with or of the Complainant in order to trade off the goodwill and reputation of the Complainant.
The Complainant supports this contention by listing six UDRP complaints made against the Respondent before the Center, and 14 UDRP complaints made against him before the National Arbitration Forum (NAF).
The Complainant requests that the disputed domain name be transferred to the Complainant.
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 and all of the following three elements in order to prevail in these proceedings:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant provided evidence that it has prior registered rights in the mark GEORGIA PACIFIC in at least North America and Europe. From the evidence supplied, the Panel finds that GEORGIA PACIFIC is a well-known mark, at least in relation to manufacturing and paper and packaging.
The word “jobs” is used within the disputed domain name. Previous UDRP panels have held that adding common terms to a registered trade mark and registering the result as a domain name does not mitigate the confusing similarity between the domain name and the mark (EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 and Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022).
Accordingly the Panel finds that the Complainant has established the first element under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Guidance in relation to establishing rights or legitimate interests is provided in paragraph 4(c) of the Policy.
Three circumstances are identified:
(i) bona fide prior use;
(ii) common association with the domain name; and
(iii) legitimate non-commercial use.
The Complainant has made a prima facie case that none of these circumstances applies. The Respondent did not exercise the right to respond substantively in these proceedings. Thus, the Respondent has failed to rebut the prima facie case made by the Complainant (or advance any other argument supporting rights or legitimate interests).
Accordingly the Panel finds that the Complainant has established the second element under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Guidance regarding establishing bad faith is provided in paragraph 4(b) of the Policy.
Four (non-exhaustive) circumstances are identified where the respondent’s intention in registering a domain name may provide evidence of bad faith. These intentions may be summarised as follows:
(i) to sell the domain name to the rights-holder at a profit;
(ii) to prevent the rights holder from registering a domain name;
(iii) to disrupt the business of a competitor; and
(iv) to divert Internet traffic.
The Complainant refers to the last circumstance.
Given the established well-known identity of the GEORGIA PACIFIC trade mark, the Panel finds that in all likelihood the Respondent would have been aware of the Complainant’s trade mark at the time the disputed domain name was registered. The Respondent’s web site has apparently been at one time a pay-per-click site. Each time a user clicks on one of the advertisements the advertiser pays the web site host who, in this case, is the Respondent. The website at the disputed domain name has been set up to direct Internet traffic to a web site page to offer allegedly vacant jobs at the Complainant. Users of the Respondent’s web site would believe that they might be using the official careers website of the Complainant and click on the advertisement to see exactly what was on offer - causing the Respondent to benefit from use of the web site.
Applying the comments of the panelist in L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623, the Panel therefore finds that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site (and hence divert Internet traffic) by creating a likelihood of confusion with the Complainant’s mark.
The Panel also notes the Respondent’s course of bad faith conduct in the twenty UDRP decisions in which the Respondent was found to have acted in bad faith within the term of the Policy.
Accordingly the Panel finds that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <georgiapacificjobs.com> be transferred to the Complainant.
Dated: June 1, 2011