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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Asia Pacific Resources International Holdings Ltd. v. Boeang Maulana

Case No. D2014-1649

1. The Parties

The Complainant is Asia Pacific Resources International Holdings Ltd. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Clasis LLC, Singapore.

The Respondent is Boeang Maulana of Pematangsiantar, North Sumatra, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <aprilfinepaper.asia> (the "Domain Name") is registered with eNom (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 24, 2014. On September 24, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 24, 2014, the Registrar 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 October 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 21, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 22, 2014.

The Center appointed Olga Zalomiy as the sole panelist in this matter on October 30, 2014. 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 is a producer of pulp, fiber and paper under the trademarks APRIL, APRIL FINE PAPER and PAPERONE. It is a part of Asia Pacific Resources International Limited group of companies, which together comprise a leading manufacturer of paper and pulp.

The Complainant is the owner of 131 trademark registrations in the marks APRIL, PAPERONE and APRIL FINE PAPER. The APRIL FINE PAPER trademark registrations Nos. IDM000228947 dated of November 30, 2009; IDM000228951 dated November 30, 2009; IMD000310070 dated June 17, 2011 and IDM000228953 dated November 30, 2009 are registered in Indonesia, the country of the Respondent's residence.

The Respondent registered the Domain Name on November 30, 2013. The Domain Name consists of the words: "april", "fine", "paper", and a generic Top-Level Domain ("gTLD") ".asia."

The Domain Name used to direct to a website that was identical to the Complainant's website "www.paperone.com.hk". On September 3, 2014, the Complainant's attorneys contacted the Respondent and advised it about the Complainant's trademarks and copyrights' infringement. Shortly thereafter, the Respondent disabled its website.

5. Parties' Contentions

A. Complainant

The Complainant alleges that it is the owner of the trademarks APRIL and PAPERONE as well as the domain name <paperone.com.hk>. The Complainant claims that the Respondent's domain name is identical or confusingly similar to its trademarks.

The Complainant also claims that the Respondent has no rights or legitimate interests in the Domain Name. The Complainant claims that the Domain Name consists of the words "april", "fine paper", and the gTLD ".asia", all of which are related to the Complainant's business and are calculated to mislead the public. The Complainant alleges that by disabling access to the website associated with the Domain Name shortly after the transmission of the Complainant's demand letter, the Respondent implicitly confirmed that it does not have rights in the Domain Name.

Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. According to the Complainant, the fact that the Domain Name incorporates the words "april fine paper" associated with the Complainant and its group of companies indicates that the Respondent had intentionally attempted to attract, for commercial gain, Internet users to the website associated with the Domain Name by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship or endorsement of the website associated with the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the UDRP, these Rules and any rules and principles of law that it deems applicable."

In case of respondent's default, "the respondent's default does not automatically result in a decision in favor of the complainant."1 The complainant must establish "each of the three elements required by paragraph 4(a) of the UDRP."2 Thus, to succeed on its claim, the Complainant must prove that: 1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; 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." Paragraph 4(a) of the UDRP.

"Although a panel may draw appropriate inferences from a respondent's default (e.g., to regard factual allegations which are not inherently implausible as being true), paragraph 4 of the UDRP requires the complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding."3

A. Identical or Confusingly Similar

To satisfy the first UDRP element, a domain name must be "identical or confusingly similar" to a trademark, in which a complainant has rights. Under paragraph 1.1 of the WIPO Overview, 2.0, if a complainant owns a registered trademark, then it satisfies the threshold requirement of having trademark rights. Here, the Complainant submitted copies of 131 trademark registration certificates for the marks APRIL, PAPERONE and APRIL FINE PAPER. The APRIL FINE PAPER mark is registered in Indonesia, the country of the Respondent's residence. The Complainant owns trademark registrations Nos. IDM000228947 dated of November 30, 2009; IDM000228951 dated November 30, 2009; IMD000310070 dated June 17, 2011 and IDM000228953 dated November 30, 2009 in the APRIL FINE PAPER mark. The Panel, therefore, also finds that the Complainant established its rights in the APRIL FINE PAPER mark.

The Panel is satisfied that the <aprilfinepaper.asia> Domain Name is confusingly similar to the APRIL FINE PAPER mark because the Domain Name incorporates the Complainant's trademark in its entirety.4 It is well-established that the gTLD ".asia" may be disregarded for this purpose.5

Therefore, the Panel finds that the Complainant has proven that the Domain Name is confusingly similar to the trademark APRIL FINE PAPER mark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the UDRP.

B. Rights or Legitimate Interests

To satisfy the second UDRP element, the Complainant must show that the Respondent has no rights or legitimate interests in the Domain Name.6

The Panel finds that the Complainant presented a prima facie 7 showing that the Respondent lacks rights or legitimate interests in the Domain Name. Here, the Complainant submitted evidence that the Respondent used the Domain Name to direct to a website that was a carbon copy of the Complainant's website "www.paperone.com.hk" by using the Domain Name that is identical to the Complainant's mark APRIL FINE PAPER. Therefore, the Respondent did not use the Domain Name in a way to confer rights or legitimate interests on the Respondent. Furthermore, the Respondent disabled the website "www.aprilfinepaper.asia" shortly after the Complainant transmitted its September 3, 2014 demand letter. In addition, the Panel accepts the Complainant's contention that the Respondent's website was designed to divert business from the Complainant because it looked exactly like the Complainant's website. Therefore, the Respondent did not use the Domain Name in connection with a bona fide offering of goods. Finally, there is no evidence that the Respondent has been commonly known by the Domain Name.

C. Registered and Used in Bad Faith

To satisfy the third UDRP element, it must be established "that both the registration and use were in bad faith."8

The Panel is satisfied that it is more likely than not that the Domain Name was registered in bad faith because it is very likely that the Respondent knew about the Complainant's brands and registered the Domain Name to trade on the Complainant's goodwill. The Domain Name was registered four years after the Complainant registered its APRIL FINE PAPER mark in Indonesia and 18 years after the Complainant registered its first APRIL trademark. The facts that the Domain Name incorporates the Complainant's trademark in its entirety along with the fact that the Respondent's website was a carbon copy of the Complainant's website selling its PAPERONE products, support this conclusion.

The Complainant contends and the Panel agrees that it is more likely than not that the Respondent used the Domain Name in bad faith. According to the Complainant, the Respondent "intentionally attempted to attract, for commercial gain, Internet users to the infringing website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the infringing Website". It is difficult to find any other reason why the Respondent registered the Domain Name that is virtually identical to the Complainant's mark, copied the Complainant website's content, and included the Respondent's contact information unless the Respondent attempted to trade on the Complainant's goodwill. The Panel, therefore, is satisfied that the Domain Name was used in bad faith.

By establishing that the Domain Name was registered and used in bad faith, the Complainant satisfied the third UDRP element.

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 <aprilfinepaper.asia> be transferred to the Complainant.

Olga Zalomiy
Sole Panelist
Date: November 12, 2014

1 See, Paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

2 Id.

3 Paragraph 4.6 of the WIPO Overview, 2.0.

4 See, Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.

5 See,WIPO Overview 2.0, paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark").

6 Paragraph 4(a)(ii) of the UDRP.

7 See, paragraph 2.1 of the WIPO Overview 2.0. "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests".

8 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

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