World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Valpak Direct Marketing Systems, Inc. v. Paydues Inc.

Case No. D2012-0042

1. The Parties

Complainant is Valpak Direct Marketing Systems, Inc. of Largo, Florida, United States of America, represented by DLA Piper US LLP, United States of America.

Respondent is Paydues Inc. of Santa Fe, New Mexico, United States of America.

2. The Domain Name and Registrar

The disputed domain name <valpakfranchise.com> (the “Domain Name”) is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2012. On that same date, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. Also on the same date, GoDaddy.com, LLC 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 Respondent of the Complaint, and the proceedings commenced on January 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 8, 2012. Respondent did not submit any response. The Center notified Respondent’s default on February 3, 2012. As a consequence of the Center’s notification of Respondent’s default five days before the due date for Response, the Panel issued an order on March 2, 2012 inviting the Center to give Respondent an additional five days from the date of that Order (i.e. until March 7, 2012) to submit a response, if any. The Respondent did not submit any response.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on February 10, 2012. 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

Complainant is the owner of the VALPAK trademark, which is also its house mark and company name. Complainant promotes the goods and services of others by marketing and distributing coupons and advertising materials through its direct mail envelopes.

Complainant owns numerous registrations of its VALPAK trademark covering promotion, design and distribution services, and envelopes, pamphlets and publications that promote the goods and services of others.

Complainant also owns the following domain names: <valpak.com>, <valpak.net> and <valpakfranchising.com>, having registered them in 1994, 1997 and 2006, respectively.

Respondent registered the Domain Name on July 7, 2011.

5. Parties’ Contentions

A. Complainant

Complainant asserts, on information and belief, that Paydues Inc. is an entity that does not appear to have been incorporated and was used as a fictitious name while registering the Domain Name.

Complainant states that VALPAK has been its primary corporate name, trademark and house mark for over 40 years and Complainant continues to use the mark in connection with its envelopes and related products and its promotion, design and distribution services. Complainant has received a great deal of publicity over the past few decades for the goods and services it offers in connection with its VALPAK mark, which Complainant claims is a famous mark. Complainant has spent approximately USD 25 million over the past five years for advertising expenses under the mark, including USD 3.7 million in 2010. During this same period, Complainant has mailed almost 101.1 billion advertisements/coupons in over 2.52 billion envelopes bearing the VALPAK mark. Each month, Complainant reaches over 40 million unique addresses and nearly 21.5 million people view coupons on Complainant’s website at <valpak.com>.

Complainant has also relied on the Internet to promote and disseminate information regarding products and services in connection with its VALPAK mark. Complainant registered its domain names as early as 1994, many years before the Domain Name was registered. Plaintiff also provided evidence of coverage in the press and various press releases in connection with its VALPAK mark.

Complainant contends that Respondent improperly registered the Domain Name, without authorization from Complainant, more than 40 years after Complainant started using its VALPAK mark and more than 15 years after Complainant registered its <valpak.com> domain name. Complainant asserts the Domain Name is confusingly similar to the VALPAK mark in that it is identical to VALPAK, except for addition of the generic term “franchise”. This term does nothing to meaningfully distinguish the Domain Name from the VALPAK mark, but merely exacerbates the likelihood of confusion between the Domain Name and Complainant’s mark because the term franchise is descriptive within the context of Complainant’s franchise offerings and is also nearly identical to Complainant’s <valpakfranchising.com> domain name. Notably, Complainant’s website located at its <valpakfranchising.com> domain name contains information related to Complainant’s franchise offerings. It is entirely reasonable that anyone seeking Complainant’s offerings might access the Domain Name under a mistaken belief that it belongs to Complainant.

With respect to rights or legitimate expectations, Complainant argues that Respondent cannot show that it is using the Domain Name to make a bona fide offering of goods or services. Instead, the website linked to the Domain Name features a form requesting Internet users’ personal information so as to receive further information about Complainant, and an option to download Respondent’s franchise toolkit. This inappropriate use of Complainant’s trademark is calculated to mislead consumers to mistakenly believe Complainant is the source of the website. This use tarnishes Complainant’s mark and does not constitute a bona fide offering of goods and services. Respondent is seeking to create an aura of affiliation with Complainant by using the VALPAK mark in the Domain Name and in misleading statements on the website linked to it. Respondent is using the Domain Name to attract Internet users to the website found at the Domain Name and to divert them from Complainant’s site.

Complainant asserts that Respondent’s website is a purely commercial enterprise. Respondent profits from sale of the “franchise toolkit” and, on information and belief, sale of the personal information collected from Internet users through the sending of unsolicited bulk emails or spam. Respondent is not commonly known by the name Valpakfranchising and, therefore, cannot claim a legitimate interest in the Domain Name. In view of Complainant’s prior statutory and common law rights, Respondent has no legitimate interest in the Domain Name.

Concerning bad faith, Complainant contends that, upon information and belief, Respondent was familiar with the well-known VALPAK mark at the time Respondent registered the Domain Name and nonetheless registered it, even though it is confusingly similar to Complainant’s mark. Complainant contends there is substantial authority that the registration of a domain name confusingly similar to a famous mark by any entity having no relationship to that mark is itself sufficient evidence of bad faith registration and use. Here, Complainant states it is a well-known company in the United States and Respondent knew, or constructively knew, based on Complainant’s federal trademark registrations, that Complainant had established prior legal rights in the VALPAK mark.

Complainant asserts that Respondent’s registration and use of the Domain Name is an attempt to capitalize, for profit, on errors made by Internet users attempting to locate Complainant. Respondent’s Domain Name would have little value to Respondent unless there was some reliance on the prospect of confusion. Further, by claiming to provide information about Complainant, this demonstrates that Respondent registered and is using the Domain Name in bad faith by intentionally attempting to attract users to its website by creating a likelihood of confusion with Complainant and the VALPAK mark. Respondent is using the Domain Name to attract online consumers interested in Complainant’s products and services who plausibly assume that Respondent’s website is endorsed by or associated with Complainant, and then encouraging them to enter their personal information to allegedly receive additional information. As a result, Respondent may generate unjustified revenues via the use and sale of the personal information collected from the Internet users. Respondent is therefore illegitimately capitalizing on the fame of Complainant’s VALPAK mark.

Complainant also urges that Respondent registered the Domain Name in order to prevent Complainant, the rightful owner, from reflecting its VALPAK trademark in a corresponding domain name, which supports a finding of bad faith provided Respondent engaged in a pattern of such conduct. In the present case, Respondent has registered numerous other domain names containing trademarks or brand a name as to which Respondent has no rights or legitimate interests. Complainant has submitted evidence of a representative sample of Respondent’s other domain names containing third party trademarks.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

The burden for Complainant under paragraph 4(a) of the Policy is to prove that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has established rights in its well-known VALPAK trademark, and that the Domain Name is confusingly similar to that mark. As indicated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), the:

“addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name.”

Complainant’s VALPAK trademark is clearly the dominant element of the Domain Name. The generic term “franchise” in the Domain Name merely adds to the potential confusion, particularly because Complainant registered the domain name <valpakfranchising.com> in 2006, approximately 5 years before the Domain Name was registered.

Accordingly, the Panel finds that Respondent’s Domain Name is confusingly similar to Complainant’s VALPAK mark pursuant to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

A complainant is normally required to make out a prima facie case that respondent lacks rights or legitimate interests in the disputed domain name. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests. If respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

Here, Complainant has made out its prima facie case and Respondent has failed to respond. Respondent is not authorized by Complainant to use the VALPAK trademark, nor is there any other legitimate basis for why Respondent chose to incorporate the distinctive VALPAK mark into the Domain Name. Moreover, Complainant has explained how Respondent is using the Domain Name in conjunction with a website that is actively seeking to confuse Internet users into believing there is an association between Respondent and Complainant. In particular, Respondent refers to Complainant and its VALPAK mark on the website connected to the Domain Name without making any attempt to alert the Internet user that it is not associated with Complainant, and then invites the Internet user to supply personal information. Respondent is seeking to create an affiliation with Complainant by using the VALPAK mark in the Domain Name and in misleading statements on the website linked to it, and is thereby using the Domain Name to attract Internet users to the website linked to the Domain Name while diverting them from Complainant’s site.

The Panel finds that Respondent has no rights or legitimate interests in respect of the Domain Name pursuant to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

With Respondent’s lack of any right or legitimate interest in the Domain Name, the Panel finds that Respondent has exhibited conduct that fits into bad faith registration and use by (i) the opportunistic and intentional registration of the Domain Name to capitalize on Complainant’s fame as it contains Complainant’s VALPAK mark in its entirety plus the generic term “franchise”, (ii) using the Domain Name in connection with a website that insinuates an affiliation with or endorsement by Complainant, and (iii) Respondent’s pattern of registering domain names corresponding to the trademarks or brands of third parties.

The Panel believes that Respondent registered the Domain Name while improperly targeting Complainant’s VALPAK trademark. There is no other reasonable explanation for why Respondent chose to register the particular Domain Name, as Respondent is not commonly known by the name nor does Respondent have permission to use Complainant’s mark.

For all of the above reasons, the Panel finds that all the Domain Name has been registered and is being used in bad faith pursuant to the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <valpakfranchise.com> be transferred to the Complainant.

Christopher S. Gibson
Sole Panelist
Dated: March 9, 2012

 

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