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Weyerhaeuser Company v. Asia Ventures, Inc. [2005] GENDND 1950 (13 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Weyerhaeuser Company v. Asia Ventures, Inc.

Case No. D2005-0923

1. The Parties

The Complainant is Weyerhaeuser Company, Federal Way, Washington, United States of America, represented by in-house counsel.

The Respondent is Asia Ventures, Inc., Hong Kong, SAR of China.

2. The Domain Name and Registrar

The disputed domain name <weyerhaueser.com> is registered with The Registry at Info Avenue d/b/a IA Registry.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2005. On August 30, 2005, the Center transmitted by email to The Registry at Info Avenue d/b/a IA Registry a request for registrar verification in connection with the domain name at issue. On August 31, 2005, The Registry at Info Avenue d/b/a IA Registry transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. Further correspondence dated September 21, 2005 with the Center, the Registry at Info Avenue d/b/a IA Registry confirmed that the domain name registrant has submitted in its Registration agreement to the jurisdiction at the location of the principal office of the registrar for court adjudication of disputes concerning or arising from the use of the domain name. 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 the Respondent of the Complaint, and the proceedings commenced on September 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 13, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2005.

The Center appointed Beatrice Onica Jarka as the Sole Panelist in this matter on October 31, 2005. 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 Weyerhaeuser Company, which is based in the United States of America.

The Complainant owns more than one hundred trademark registrations all over the world which contain the term WEYERHAEUSER.

In the United States of America, the Complainant owns thirteen federal trademark registrations and applications containing the term WEYERHAEUSER, including the following:

Mark: WEYERHAEUSER

Registration No.: 814925

Registration Date: September 13, 1966

Goods: Packaging machines, in Class 7

Mark: WEYERHAEUSER

Registration No.: 817189

Registration Date: October 25, 1966

Goods: Wood pulp, wood fiber, comminuted tree bark, and chemically impregnated wood fiber, in Class 1

Mark: WEYERHAEUSER

Registration No.: 817237

Registration Date: October 25, 1966

Goods: Rough and dressed lumber, millwork, shakes and shingles, paneling, doors, in Class 19.

Shingles, paneling, doors, in Class 19.

Mark: WEYERHAEUSER

Registration No.: 817632

Registration Date: November 1, 1966

Goods: Wood fiber for use as soil conditioners and mulches, tree and plant culture, in Class 1. Bark for use as soil conditions, mulches and plant culture, in Class 1.

Mark: WEYERHAEUSER

Registration No.: 818501

Registration Date: November 15, 1966

Goods: Boxes, cartons & containers made of paperboard, fiberboard, corrugated paperboard, paper overlaid wood veneer, plastics, and molded wood trays, in Class 16.

Mark: WEYERHAEUSER

Registration No.: 823127

Registration Date: January 24, 1967

Goods: Financial services, namely, financing home construction performed for others, in Class 36.

The Complainant also uses other marks consisting of the term WEYERHAEUSER combined with other terms.

The Complainant has registered and is making use of the website,“www.weyerhaeuser.com” in connection with the advertising and sale of its goods and services, including offering its goods and services online.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- it owns exclusive rights to the names and marks WEYERHAEUSER as such or combined with other terms;

- its rights to the name and mark WEYERHAEUSER have a priority date established through use in commerce commencing in at least as early as 1948;

- it is one of the world’s largest international forest product companies with annual sales of $19.9 billion;

- it has made extensive and prominent use of its WEYERHAEUSER mark in interstate commerce in connection with the advertising and sale of its goods and services, including offering its goods and services online through such websites as “www.weyerhaeuser.com”;

- consumers have come to know and recognize the name and mark WEYERHAEUSER with the Complainant;

- the disputed domain name is confusingly similar to its trademark, WEYERHAEUSER, and its domain name <weyerhaeuser.com> because it purposely misspells the trademark by transposing the letters E and U;

- there is no evidence of the Respondent’s use or intention to use the domain name in connection with a bona fide offering of goods or services;

- the 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;

- the Respondent is using the domain name to host a website that links to a search engine which allows the Respondent to make money every time a web surfer clicks a sponsored link on the hosted site;

- by using the domain name <weyerhaueser.com>, the Respondent intentionally attempts to attract, for commercial gain, Internet users into accessing websites containing a series of links to other commercial websites;

- the Respondent is creating a likelihood of confusion by using a misspelling of the 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;

- the Respondent has a well-documented history of registering domain names incorporating the trademarks of third parties, activities which have already been deemed illegitimate and in bad faith by other UDRP panels.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant’s rights in the WEYERHAEUSER mark are uncontestable. As it can be seen from the US and other foreign registrations of the mark, the trademark is registered for different classes in connection with wood pulp, wood fiber, comminuted tree bark, and chemically impregnated wood fiber and products made out of Wood pulp, wood fiber, comminuted tree bark, chemically impregnated wood fiber.

A.The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

The single difference between the Complainant’s trademark and the disputed domain name <weyerhaueser.com> is transposing the letters E and U. This difference does not have any significant effect on the appearance of the words. Such practice has been referred to as “typo-squatting” which arises where the domain name is a minor alphabetical variation of a third party’s trademark and which a consumer accidentally inputs identical letters to those of the Respondent’s domain names.

An important body of WIPO UDRP decisions concluded that the circumstances of “typo-squatting” – particularly the practice of transposing letters – to constitute confusing similarity (see Bits & Pieces, Inc. v. Banter Incorporated, WIPO Case No. D2005-0881; Williams-Sonoma, Inc. dba Pottery Barn v. Party Night Inc., WIPO Case No. D2003-0788; AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO  Case No. D2002-0440).

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides three non-exclusive circumstances that can demonstrate that the Respondent has rights to or legitimate interests in the disputed domain name:

(i) before any notice to the Respondent of the dispute, his 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 (as an individual, business, or other organization) has been commonly known by the domain name, even if he 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.

Those circumstances are not exhaustive of the circumstances that may establish rights or legitimate interests.

The Panel’s view is that from the evidence presented in the case it results that the last two circumstances are not applicable to this case.

The Respondent as an individual, business, or other organization, has not been commonly known by the disputed domain name, as the Respondent’s name is Asia Ventures, Inc.

Neither is the Respondent making a legitimate noncommercial or fair use of the domain name. The website to which the disputed domain name resolves provides links to companies with various commercial activities in the forest products industry, as well as to an area guide for Weyerhaeuser, Wisconsin of the United States of America. On the basis of that, it is reasonable to infer that the Respondent is using the disputed domain name in a commercial context.

The Panel notes that the website associated with the domain name provides for a link to an area guide for Weyerhaeuser, Wisconsin, but the website provides also several other links to commercial sites and such use cannot be considered a use of the disputed domain name in a connection with a bona fide offering of goods and services. The Panel finds that the link to the area guide for Weyerhaeuser cannot confer a bona fide character to the use of the disputed domain name, due the fact that it is only one link among other links to commercial sites which have nothing in common with the said area guide.

C. Registered and Used in Bad Faith

The Respondent uses the disputed domain name in a commercial context with the intent to attract, for commercial gain, Internet users into accessing websites containing a series of links to other commercial websites.

The Respondent is creating a likelihood of confusion by using a misspelling of the Complainant’s trademark to drive traffic to their site to generate advertising revenue, which is typically paid on a per-click basis i.e., based on the clicks a user must employ in order to determine if the site is of interest or to exit the site.

Furthermore there is also a presumption of bad faith regarding the registration and use of the disputed domain name, inferred from the documented Respondent’s practice in registering domain names incorporating the trademarks of third parties. See The Sportsman’s Guide, Inc. v. Asia Ventures, Inc., WIPO Case No. D2002-1116; Dell, Inc. v. Asia Ventures, Inc., WIPO Case No. D2004-0452; Museum of Science v. Asia Ventures, Inc., WIPO Case No. D2003-0691; Shabby Chic Inc v. Asia Ventures, Inc., FA0409000335486; HBD International, Inc v. Asia Ventures, Inc., CPR 0401.

7. Decision

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, <weyerhaueser.com> be transferred to the Complainant.

Beatrice Onica Jarka
Sole Panelist

Dated: November 13, 2005