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and Mediation Center
Valpak Direct Marketing Systems, Inc. v. Manila Industries, Inc.
Case No. D2006-0714
1. The Parties
The Complainant is Valpak Direct Marketing Systems, Inc., Florida, United States of America, represented by DLA Piper Rudnick Gray Cary US, LLP, United States of America.
The Respondent is Manila Industries, Inc., Santa Ana,
California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <vallpak.com> (the
“Domain Name”) is registered with Compana LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2006. On June 8, 2006, the Center transmitted by e-mail to Compana LLC a request for registrar verification in connection with the Domain Name. On June 9, 2006, Compana LLC transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 June 26, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 16, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on July 19, 2006.
The Center appointed Robert A. Badgley as the sole
panelist in this matter on August 11, 2006. 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 following facts are alleged in the Complaint and are undisputed by Respondent. Unless indicated otherwise, the facts set forth in this section are found by the Panel to be plausible and/or supported by evidence annexed to the Complaint.
Complainant promotes, under the mark VALPAK, the goods and services of others by marketing and distributing coupons and advertising materials through direct mail envelopes. In 2003, Complainant mailed its envelopes to over 43 million households.
Complainant has obtained numerous trademark registrations for the mark VALPAK (and similar variations thereof including VAL-PAK) in the United States and throughout the world, including a United States registration for VALPAK.COM. The registrations, some of which date back to 1984, cover promotion, design and distribution services.
Respondent registered the Domain Name <vallpak.com>
on February 19, 2005. Respondent’s only use of the Domain Name is to divert
consumers to a portal website containing numerous links to Complainant’s
competitors’ websites, which offer advertising services including the
sale of coupons.
5. Parties’ Contentions
Complainant’s factual assertions are set forth above, and its legal arguments will be taken up in the discussion below.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:
(i) the Domain Name 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
Complainant clearly has rights in the mark VALPAK through registration and use, all of which is well established in the record. The Domain Name differs materially from the VALPAK mark only insofar as it contains a double “l” instead of a single “l.” This difference is insufficient to overcome the confusing similarity between the mark and the Domain Name. The visual effect is nearly identical, and the aural effect is identical. See United Features Syndicate, Inc. v. John Zuccarini, WIPO Case N. D2000-1449 (<dillbert.com> held confusingly similar to DILBERT mark).
Moreover, “vallpak” does not constitute, or even call to mind, a common word, and hence the Panel need not consider, as other panels have had to do, whether a domain name comprised of an identifiably common word faces a somewhat different “confusing similarity” standard from that applied to a domain name comprised of a string of characters with no known meaning.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Complainant bears the burden of proof on the “rights
or legitimate interests” issue (as it does for all three elements of the
Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO
Case No. D2001-0122. However, as the Complainant presents prima facie
evidence that the Respondent lacks rights or legitimate interests the burden
shifts to the Respondent
Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name.
Respondent was not licensed or authorized by Complainant to use the latter’s
mark in any manner. Respondent’s commercial activities undertaken through
use of the Domain Name are neither fair use nor bona fide under the Policy.
There are numerous prior decisions under the Policy holding that the unauthorized
appropriation of another’s trademark in one’s domain name and the
commercial use of the corresponding website do not confer rights or legitimate
interests upon the owner of such a domain name. See, e.g. America
Online, Inc. v. Xianfeng Fu, WIPO Case
No. D2000-1374 (“it would be unconscionable to find that a bona
fide offering of services in a respondent’s operation of web-site
using a domain name which is confusingly similar to the complainant’s
mark and for the same business”); Humana, Inc. v. Henry Tsung,
WIPO Case No. D2005-0221 (use of a domain
name to link to a portal site linking to sites of complainant’s competitors
held not a bona fide offering of goods or services).
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds it highly probable that Respondent had Complainant’s mark in mind when registering the Domain Name. Not only is VALPAK an uncommon, if not unique, combination of letters, but the website to which the Domain Name resolves contains links to sites offering coupons. It is also reasonable to infer that Respondent derives pecuniary gain from such use of the Domain Name. On the record, no other plausible explanation exists to account for Respondent’s decision to register the Domain Name. The Panel therefore holds that Respondent has registered the Domain Name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant’s mark, in contravention of Policy paragraph 4(b)(iv).
Respondent also runs afoul of Policy paragraph 4(b)(ii). Respondent has been
found in bad faith in previous cases decided under the Policy. See, e.g.,
Group Kaitu v. Group Kaitu aka Manila Industries, Inc., WIPO
Case No. D2005-1087; Eastman Chemical Company v. Manila Industries, Inc.,
Nat. Arb. Forum Case No. FA0504000450806; Pioneer Hi-Bred International,
Inc. v. Manila Industries, Inc. Nat. Arb. Forum Case No. FA0503000444468.
Respondent’s conduct in the present case appears quite similar to that
conduct held to be bad faith in the other cases filed against Respondent. Accordingly,
the Panel finds that Respondent’s conduct here demonstrates a pattern
of preclusive registrations within the meaning of Policy paragraph 4(b)(ii).
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 <vallpak.com> be transferred to Complainant.
Robert A. Badgley
Dated: August 17, 2006