WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Weyerhaeuser Company v. L Lui
Case No. D2007-0121
1. The Parties
The Complainant is Weyerhaeuser Company, Washington, United States of America.
The Respondent is L Lui, Hong Kong NA, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <weyerheauser.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 29, 2007. On January 30, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name(s) at issue. On February 1, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 February 7, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 27, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 27, 2007.
The Center appointed Knud Wallberg as the sole panelist in this matter on March 12, 2007. 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 was founded in 1900, and began using the name and mark WEYERHAEUSER as a trade name, trademark and service mark since at least as early as 1948. The Complainant, Weyerhaeuser Company, is one of the world’s largest international forest product companies with annual sales of $19.9 billion.
Complainant is the holder of the rights to the trademark WEYERHAEUSER which is registered worldwide as shown in an annex to the Complaint as well as the rights to marks consisting of the term WEYERHAEUSER combined with other terms. The Complainant also owns several domain names comprising of the said trademark including <weyerhaeuser.com>.
5. Parties’ Contentions
The domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights
Complainant contends that the domain name at issue is confusingly similar to its trademark, WEYERHAEUSER, and its domain name <weyerhaeuser.com>. Complainant owns over one hundred international trademark registrations containing the term WEYERHAEUSER, and submits copies of the registration certificates for these marks as part of Annex 4, Exhibit A. Complainant owns thirteen United States trademark registrations and applications containing the term WEYERHAEUSER.
The domain name <weyerheauser.com> differs slightly from Complainant’s name and mark, WEYERHAEUSER, in that it purposely misspells the trademark by transposing the letters A and E. This conduct has been referred to as “typo-squatting” which arises where the domain name is a minor alphabetical variation of a complainant’s trademark. Complainant makes reference to a number of previous WIPO decisions that find the circumstances of “typo-squatting” - particularly the practice of transposing letters - to constitute confusing similarity.
The Respondent has no rights or legitimate interests in respect of the domain name
In September of 2006, Complainant became aware that the Respondent registered the domain name <weyerhaueser.com>. There is no evidence of Respondent’s use of or intention to use the domain name in connection with a bona fide offering of goods or services. Respondent is not commonly known by the domain name and is not authorized by the Complainant to use the Complainant’s name and registered trademark WEYERHAEUSER.
There is no credible reason for Respondent to choose the domain name <weyerheauser.com>. Respondent is using the domain name to host-a website that links to a search engine which allows Respondent to make money every time a web surfer clicks a sponsored link on the hosted site.
The site found at “www.weyerheauser.com” links to other websites not related to Weyerhaeuser or its businesses or functions. The links include commercial websites for various employment placement websites not related to employment at Weyerhaeuser, IT services websites not related to information technology at Weyerhaeuser, and travel planning websites not related to Weyerhaeuser. None of these links justifies credible use of the domain name.
The domain name was registered and is being used in bad faith:
By using the domain name <weyerheauser.com>, Respondent intentionally attempts to attract, for commercial gain, Internet users to websites containing a serie of links to other commercial websites. Respondent is creating a likelihood of confusion by using a misspelling of Complainant’s trademark to drive traffic to their site to generate ad revenue, which is typically paid on a per-click basis, based on the clicks a user must employ in order to determine if the site is legitimate or to exit the site.
Complainant draws the attention to a recent National Arbitration Forum decision involving Respondent and registration of numerous “typo-squatting” registrations of a famous mark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:
(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in respects of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The contested domain name <weyerheauser.com> contains as its distinctive part the designation “weyerheauser”. This designation is obviously confusingly similar to Complainant’s distinctive trademark WEYERHAEUSER. For the purpose of these proceedings the domain name is found to be confusingly similar to Complainant’s trademark.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled.
B. Rights or Legitimate Interests
According to the Complaint, Complainant has not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not rebutted this and the way the Respondent has been using and is still using the contested domain name (see below) does not support any findings of possible rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy, with reference to paragraph 4(c) of the Policy, are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy further provides that Complainant must prove the Respondent’s registration and use of the domain names in bad faith. Paragraph 4(b) of the Policy sets out, by way of example, the kind of evidence that may be put forward.
The Complainant’s trademark was registered and used well in advance of the date of registration of the disputed domain name. The mark is registered and used worldwide and in this context the Panel explicitly notes that the mark is registered in the country of domicile for the Respondent namely Hong Kong, SAR of China. Given the geographically widespread registration and use of the Complainant’s trademark and the distinctive nature of the mark, it is inconceivable to the Panel in the circumstances that the Respondent registered the domain name without prior knowledge of the Complainant and the Complainant’s mark.
This is underlined by the fact that the disputed domain name is used for a website that contains sponsored links to other sites that offer different types of products or services that are not related to those of the Complainant, and also a link to the Complainant’s homepage. The Panel therefore finds that the Respondent by registering and using the domain name, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the domain name in dispute with the purpose of attracting Internet users to the website for commercial gain. Under these circumstances it is not necessary for the Panel to address the additional arguments presented by the Complainant in support of Respondent’s bad faith although the Panel notes that Respondent has been subject of at least one other UDRP proceeding.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <weyerheauser.com> be transferred to the Complainant.
Dated: March 26, 2007