WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Georgia-Pacific Consumer Products LP v. Jagdev Shergill, Regnah Ltd
Case No. D2014-1247
1. The Parties
The Complainant is Georgia-Pacific Consumer Products LP of Atlanta, Georgia, United States of America (the "USA"), self-represented.
The Respondent is Jagdev Shergill, Regnah Ltd of Slough, Berkshire, United Kingdom of Great Britain and Northern Ireland (the "UK"), self-represented.
2. The Domain Names and Registrars
The disputed domain names <lotusenmotion.co>, <lotusenmotion.com>, <lotusenmotionhandtowels.com>, <lotusenmotion.info>, <lotusenmotion.net> and <lotusenmotion.org> are registered with Tucows Inc. and 1&1 Internet AG (the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 21, 2014. On July 22, 2014, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On July 22 and July 23, 2014, the Registrars transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 11 and 13, 2014. On August 8, 2014 the Center received email communications from the Respondent.
The Center verified that the Complaint together with the amendments 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 August 14, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 3, 2014. On August 14, 2014, the Respondent requested an extension to file a Response. In accordance with the Complainant's comments, the Response due date was extended by the Center until October 3, 2014. The Respondent did not submit any formal response. Accordingly, the Center informed the parties about the commencement of the panel appointment process.
The Center appointed John Katz QC as the sole panelist in this matter on October 22, 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 an American company based in Atlanta, Georgia. It manufactures, markets and sells a wide range of products including bathroom and facial tissue, paper towels, wipes and related dispensers.
The products of the Complainant are marketed and sold under the brand names "Angel Soft", "Quilted Northern" and "Brawny". All are protected by registered trademarks. The Complainant also manufactures, markets and supplies a range of paper towels and dispensers under the brand name enMotion1. It, too, is protected by registered trademarks. These products are described as professional products sold or leased through authorized distributors.
The "enMotion" product range is protected by a series of registered trade marks. There are also a number of domain name registrations. There are over 180 active trade mark registrations and applications worldwide for the ENMOTION mark, alone or in combination with other features. The countries of registration include the USA, the European Union and most of the rest of the world. The domain name registrations are also very extensive, with the dominant feature in most being "enMotion".
In 2012 the Complainant assigned its legal rights and interests to another trade mark LOTUS which up to transfer it had used for some 20 years. The current owner of the LOTUS trademark has consented to the Complainant using the UDRP Complaints Procedure with respect to the LOTUS trademark.
The Respondent has been in email correspondence with the Complainant and sent an email communication to the Center on August 8, 2014. It appears from this correspondence as if the Respondent is or claims to be a distributor or retailer of "Lotus products and even the enMotion hand towel" [sic]. Its main website "www.hygo.co.uk" describes it as a distributor of hygiene and wash room solutions. The website does not appear to list any ENMOTION or LOTUS branded products.
5. Parties' Contentions
The Complainant relies upon its trade marks as registered and its various trade mark rights together with its registered domain names. It contends that over a period starting in 2002 it has established industry knowledge of its brand ENMOTION to signify its range of products which are identified in the market place with the Complainant.
The Complainant contends that the ENMOTION trade mark is one of its most valuable assets. In recognition of that it has protected the brand by its numerous trade mark registrations and also those applications still pending.
The Complainant accordingly claims that all legal rights to the ENMOTION mark belong to it.
The Respondent defaulted and put in no formal response. However in its correspondence with the Complainant prior to the lodging of the Complaint, the Respondent contended it was a hygiene company which sold "Lotus" professional products. It claimed to have "bought the name to advertise and sell only Lotus professional products". It said in a later email that it also sold the "enMotion" hand towel.
Nevertheless, the website does not currently appear to bear out this contention. Further, the Complainant contends it has no knowledge of the Respondent as a hygiene company or distributor of the Complainant's products. Nor is the Respondent an authorized distributor of "enMotion" products.
Then, the Respondent offered to sell the disputed domain names to the Complainant. The negotiations failed but only after the Complainant had accepted the offer to sell, transferred the purchase price, only to find that the Respondent resiled from the bargain. It claimed other directors declined to approve the sale. It also added that it had "also been approached by another party, who have offered a lot more than you are willing to pay" for the disputed domain names.
On August 8, 2014, the Center received an email communication from the Respondent, in which it further stated: "We would like to point out, Jag had no right to sell these domains, as we needed another Director to also sign these domain names off, also we have not received any monies in these transactions. We purchased these domain names a few years back to advertise Lotus Enmotion products, who have been bought out by Tork in Europe. Currently we sell on "www.hygo.co.uk", "www.tork.me.co", "www.kimberleyclarkwypall.co.uk", "www.debshop.co.uk".
6. Discussion and Findings
The Policy is directed towards resolving disputes concerning allegations of abuse of domain name registrations.
As part of the process, a complainant must provide evidence and submissions in support of its complaint. The expectation is that the complainant will provide such supporting evidence as is necessary to make out its case under all three heads in paragraph 4(a) of the Policy. The respondent is given full opportunity to respond. In this instance, the Respondent has defaulted.
Paragraph 4(a) of the Policy sets out three elements that must be established by a complainant to merit a finding that a respondent has engaged in abuse of domain name registration and to obtain relief. These elements are that:
(i) The respondent's 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 respondent's domain name has been registered and is being used in bad faith.
Each of three elements must be established by a complainant to warrant relief.
A. Identical or Confusingly Similar
As to the first ground, the disputed domain name must be shown to be identical or confusingly similar to trade marks in which the Complainant has rights.
The Complainant must establish that it has such rights either to common law or registered trade marks or service marks.
The Complainant has a host of registered trade marks and pending applications for "enMotion". These include word marks and device or combination marks. They are in most countries of the world.
The Complainant also has a series of registered domain names incorporating the term "enmotion" either alone or together with "papertowels", "toweldispenser" and the like. There is also a domain name for "lotusenmotion" and "lotusenmotionhandtowels". The suffixes include almost all variations including ".com", ".net", ".org", ".info" and ".co".
The portfolio of registered trade marks and pending applications is impressive and extensive. So, too, is the portfolio of domain name registrations. The Complainant has done much to protect its brand name.
It is not necessary to decide if the disputed domain names are identical or confusingly similar to any one or more of the Complainant's trade marks. All the disputed domain names include the term "enmotion" which is the dominant feature of the Complainant's trade marks. The disputed domain names incorporate the complete trade mark ENMOTION. Further, the word "enmotion" is presumably a manufactured word with no specific English meaning. To add to that dominant aspect of the trade mark the descriptive word "handtowel" or similar, adds nothing to distinguish or set apart the disputed domain names from the trade marks. The addition of the word "lotus" merely takes the Complainant's other but former trade mark LOTUS.
As has consistently been held by many other panels including the present, the gTLD ".com" or other gTLD suffixes cannot be a distinguishing feature. They are simply a function of domain name registration.
There can be no question but that the Respondent in registering the disputed domain names has taken the Complainant's trade marks and registered a domain name that is confusingly similar in each case.
The Panel accordingly finds that paragraph 4(a)(i) of the Policy is made out.
B. Rights or Legitimate Interests
As to the second ground, that there are no rights or legitimate interests possessed by the Respondent, the Respondent does not put forward in evidence any business or trading operation known as or by reference to the trade mark in suit or the disputed domain name.
Under paragraph 4(a)(ii) a respondent can justify its registration of a domain name on certain grounds some of which are set out in paragraph 4(c) of the Policy. Such grounds resolve broadly to own name use, bona fide use, or legitimate noncommercial or fair use.
Even though the Respondent has defaulted, it is not sufficient simply to assume from that, that the Respondent has no rights or legitimate interests or can claim none.
Nevertheless, the correspondence in the emails between the Complainant and the Respondent, and the Respondent's email communication of August 8, 2014 are in evidence and have to be taken into account.
Having regard to this correspondence, the Respondent may have had an arguable case for contenting that it could use the disputed domain names in a limited manner and in connection with its role as a distributor of and solely for the purposes of advertising its sale of "enMotion" or "Lotus" products. But the Complainant asserts that it has given the Respondent no distributor rights, and that it has no business relationship at all with the Respondent. Moreover, there is no evidence of the actual offering of the goods at issue on the websites at the disputed domain name.
Furthermore, the Respondent appears to have a main active website "www.hygo.co.uk". That website discloses no other brand name such as "enMotion" or "Lotus" by which the Respondent is also known or carries on business.
Nor does the website disclose use of any of the trade marks belonging to the Complainant for the purposes of legitimate but limited advertising for sale of products lawfully distributed by the Respondent.
Thus, the Respondent is unable to establish any legitimate business connection with the Complainant or the Complainant's trade marks. This appears to have been recognized by the Respondent as it offered to sell the disputed domain names to the Complainant. Moreover, the email traffic culminated in advice from the Respondent that it was not prepared to consummate the sale as it had received a better offer from a third party.
The Panel accordingly finds that paragraph 4(a)(ii) of the Policy is made out.
C. Registered and Used in Bad Faith
As to the third ground, this requires that the disputed domain name be registered and used in bad faith. As has previously been said in other UDRP panel decisions together with earlier decisions of this Panel, both elements must be made out. Accordingly, both registration and use in bad faith have to be established by the Complainant.
The disputed domain names were all registered in June 2013. That is over a decade after first use of the trade mark ENMOTION by the Complainant. The registration of the disputed domain names in 2013 incorporating a manufactured word "enmotion" with no apparent ordinary English meaning can only have been for the purposes of garnering a claim to the disputed domain names but to which the Respondent had no legitimate claim. Further, as the Complainant is in the hygiene business as also it seems is the Respondent, the inference is irresistible that the registration of the disputed domain names by the Respondent was deliberate and with full knowledge of the activities and rights of the Complainant.
The Complainant is therefore able to establish registration in bad faith.
However the Complainant must also establish use in bad faith. The disputed domain names defaulted to websites with pay-per-click which appear to have no connection with the Respondent. Whether the Respondent uses them for generation of revenue on a click through basis or not, the disputed domain names are clearly being used in bad faith regardless of whether such use is considered active or merely passive (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 3.2 and 3.8).
The Panel accordingly finds that paragraph 4(a)(iii) of the Policy is made out.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <lotusenmotion.co>, <lotusenmotion.com>, <lotusenmotion.info>, <lotusenmotionhandtowels.com>, <lotusenmotion.net> and <lotusenmotion.org> be transferred to the Complainant.
John Katz QC
Date: November 3, 2014
1 The Panel notes the Complainant's reference to the "enMotion" trademark, used with lower case "en" followed by capitalized "M" for the second part of the word mark. However, for the purposes of this Decision the Complainant's ENMOTION trademarks will be all referred in capital letters.