WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Georgia-Pacific Consumer Products v. Mark Gallo

Case No. D2010-2062

1. The Parties

The Complainant is Georgia-Pacific Consumer Products of Atlanta, Georgia, United States of America represented by Melbourne IT DBS Inc., United States of America.

The Respondent is Mark Gallo of Ransomville, New York, United States of America, internally represented.

2. The Domain Name and Registrar

The disputed domain name <brawny.org> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2010. On November 30, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name. On November 30, 2010, Network Solutions, 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 the Respondent of the Complaint, and the proceedings commenced on December 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 27, 2010. The Response was filed with the Center on December 25, 2010.

The Center appointed William R. Towns as the sole panelist in this matter on January 6, 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.

After reviewing the record, the Panel issued a Procedural Order affording the Respondent an opportunity to submit a supplement filing addressing issues related to the second element of the Policy, to which the Complainant was provided an opportunity to reply. The Respondent submitted supplemental filings with the Center within the time frame provided in the Procedural Order. The Complainant did not file a reply to the Respondent’s supplemental filings. The time for the Panel to submit its decision was extended to March 1, 2011.

4. Factual Background

The Complainant is a leading manufacturer and marketer of tissue, packaging, paper, pulp, building products, and related chemicals. The Complainant is the owner of numerous registrations in the United States and elsewhere for the mark BRAWNY, used primarily with paper towels and related products. The Complainant has used the BRAWNY mark since at least 1977, and the mark has become a widely recognized consumer brand for the Complainant.

The Respondent is an associate professor of biology at Niagara University. It appears from the record before the Panel that the disputed domain name was registered in December 2007. The Respondent asserts that the disputed domain name reflects the acronym for Bioinformatics Research Academy of Western New York (“BRAWNY”),¹ a project he developed but has yet to obtain external funding for.

The disputed domain name resolves to a parked website provided by Network Solutions, containing advertising links to other websites relating to paper towels and similar products, including not only the Complainant’s BRAWNY products but also the products a number of the Complainant’s competitors.

5. Parties’ Contentions

A. Complainant

The Complainant maintains that the disputed domain name is identical to its BRAWNY mark, in which the Complainant asserts rights both through registration and through continuous use since at least 1977. According to the Complainant, the BRAWNY mark is well known in the business service and product industry and well recognized publicly, such that it is unlikely that the Respondent would not have been aware of the BRAWNY mark when registering the disputed domain name in December 2007.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name as there is no evidence that the Respondent owns trademark registrations for BRAWNY, the term “Brawny” does not serve as the Respondent’s trade name or business identity, and the Respondent is not licensed or authorized to use the Complainant’s marks or sell the Complainant’s products. Further, according to the Complainant, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but instead registered and is using a domain name identical to the Complainant’s well-known mark in order to drive Internet traffic to a website with pay-per-click links to third party websites providing goods or services competitive with the Complainant’s goods or services.

In view of the foregoing, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith by intentionally attempting for commercial gain to attract Internet users to the Respondent’s website by causing confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website.

B. Respondent

The Respondent maintains that the disputed domain name was chosen because it is an acronym for an association he created, the Bioinformatics Research Academy of Western New York (“BRAWNY”). According to the Respondent, as a professor of biology at Niagara University he teaches courses in bioinformatics and has been actively involved in establishing a learning community for the Western New York area. The Respondent maintains he chose to register in the “.org” top-level domain because this is not a commercial activity, and he maintains that no confusion should be created by the use of the disputed domain name with bioinformatics as opposed to paper towels.

The Respondent maintains that he has legitimate rights in the disputed domain name. The Respondent has submitted an excerpt of a grant request he prepared and sent to the American Honda Foundation, most likely in late 2006 or early 2007, regarding the “BRAWNY” project. The Respondent also has provided a link to another website, http://talon.niagara.edu/~mgallo/brawny_web_site/index.html, where, according to the Respondent, he has launched “pieces of the website” he intends to use with the disputed domain name. The Respondent indicates that while he has never received external funding for the “BRAWNY” project, it is functional as a result of the informal involvement of a number of colleges and high schools in the Western New York area.

In view of the foregoing, the Respondent denies that he registered or is using the disputed domain name in bad faith. According to the Respondent, he has never attempted to sell the disputed domain name to the Complainant, does not compete with the Complainant, and the registration of the disputed domain name has not prevented the Complainant from registering and using domain names reflecting its “BRAWNY” mark. In addition, according to the Respondent, he realizes no financial gain from drawing Internet visitors looking for Brawny paper towels to his website, since he is not operating a commercial venture.

In his supplemental submissions, the Respondent states that he is a scientist and reiterates his view that no one should be confused between bioinformatics and paper towels. He provides examples of other entities using other identical acronyms without confusion.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.

Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <brawny.org> is identical to the Complainant’s BRAWNY mark, in which the Complainant clearly has established rights. The critical inquiry under the first element of the Policy is whether the mark and disputed domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662. For purposes of this comparison, it is well settled that the generic top-level domain suffix is not considered. See, e.g., A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO Case No. D2010-0800. Applying this standard, the disputed domain name is identical to the Complainant’s mark.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the Respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is identical to the Complainant’s mark. Further, the record reflects that the disputed domain name since its registration by the Respondent in December 2007 has resolved to a pay-per-click parking site populated with advertising links to products that compete with the Complainant’s products. There is no indication that the Respondent has been commonly known by the disputed domain name, nor indication that the Complainant has authorized the Respondent to use the Complainant’s mark in connection with domain names or in any other manner.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent maintains that he has established rights or legitimate interests in the disputed domain name based on the contention that it is intended to be used in connection with a website to promote a bioinformatics project developed and named by the Respondent, the acronym for which is “BRAWNY”. The Respondent has submitted evidence that content relevant to the project he created has been placed on a secondary page on a website that appears to belong to his employer, Niagara University.

The Panel is persuaded from the record before it that the Respondent in fact developed the project in question and did so for the reasons stated in the Response. At the same time, however, the Panel has found no indication of the Respondent’s use of the disputed domain name for such a purpose. It appears from the record that the disputed domain name has been used only in connection with a parking page containing advertising links related to the Complainant’s paper products and those of its competitors. There is no reference to the Respondent’s bioinformatics project on this website.

The Respondent’s assertion of rights or legitimate interests in the disputed domain name in essence devolves from his registration of a domain name reflecting the acronym for his bioinformatics project. No showing has been made that the Respondent is actively using the disputed domain name in connection with this project, and the Panel notes paragraph 4(c)(iii) of the Policy on its face appears to require a legitimate noncommercial or fair use of a domain name in order to demonstrate rights or legitimate interests therein. The use of the disputed domain name with a pay-per-click parking site can scarcely be considered a noncommercial use within the meaning of paragraph 4(c)(iii) of the Policy. See e.g., Jappy GmbH v. Satoshi Shimoshita, WIPO Case No. D2010-1001; Universidad Autónoma de Nuevo León v. Cyber Domain Services Pvt.Ltd, WIPO Case No. D2010-2050.

The Panel does not consider the examples provided in paragraph 4(c) of the Policy necessarily to be exhaustive of the ways in which a respondent may demonstrate rights or legitimate interests in a domain name. Nevertheless, where as here the Respondent relies essentially on a statement of intent to make a legitimate noncommercial or fair use of the disputed domain name within the purview of paragraph 4(c)(iii), the Panel considers it incumbent upon the Respondent to provide evidence of demonstrable preparations, prior to any notice of the dispute, to make such use. See Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011.

Whether the Respondent has made a sufficient showing of such demonstrable preparations in this case is in this Panel’s opinion debatable. However, in light of the Panel’s findings under the following heading, it is unnecessary for the Panel in deciding this case to address whether the Respondent has demonstrated rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online 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 its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230. However, it is paramount that panels decide cases based on the very limited scope of the Policy. Match.com, LP v. Bill Zag and NWLAWS.ORG, supra. The Policy provides a remedy only in cases where a complainant proves that the domain name has been registered and is being used in bad faith. In the present circumstances, it may well be that the previously-described use to which the disputed domain name is being put (whether by the Respondent directly or otherwise) does not amount to use in good faith; such would indeed appear to be the case.

However, as noted above, the Panel is satisfied based on the record before it that the Respondent in fact developed the bioinformatics project in question and did so for the reasons stated in the Response. The record does not suggest that this is merely a pretext for cybersquatting. To the contrary, after careful consideration of the totality of facts and circumstances reflected in the record, the Panel is persuaded that the Respondent more likely than not registered the disputed domain name, which reflects the acronym of the name chosen by the Respondent for his bioinformatics project, without bad faith intent at the time of registration to exploit or profit from the Complainant’s trademark rights. See Mile, Inc. v. Michael Burg, supra (where intended use at the time of registration was noncommercial and respondent was not a professional domainer, registration cannot be considered to have been in bad faith because the use to which respondent intended to put the domain name, at the time of registration, could not be considered infringing).²

The Panel therefore concludes that the Complainant has failed to meet its burden of demonstrating that the Respondent registered the disputed domain name in bad faith. The Panel wishes to make clear that is not retreating from the basic precept that a domain name registrant ultimately is responsible for the content on his website. See, e.g., Grisoft, s.r.o. v. Original Web Ventures Inc., WIPO Case No. D2006-1381; Jappy GmbH v. Satoshi Shimoshita, supra. The Panel further emphasizes that its decision should not be read as discounting the presence of paragraph 2 of the Policy, which requires a domain name registrant “to determine whether your domain name infringes or violates someone else’s rights”. Paragraph 2 may be relevant to the question of bad faith registration in appropriate circumstances. However, as noted above, the Respondent is not a professional domainer, and the circumstances of this case persuade the Panel on balance that the Respondent’s intended use at the time of registration more likely than not was noncommercial in nature, and not intending to trade on the Complainant’s mark. See Mile, Inc. v. Michael Burg, supra.

Accordingly, the Panel finds in the specific circumstances of this case that the Complainant has failed to satisfy the requirements of paragraph 4(a)(iii) 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 Complaint is denied.

William R. Towns
Sole Panelist
Dated: March 1, 2011