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Weyerhaeuser Company v. Ying ter Wang Ju Le Bu Ltd. [2005] GENDND 577 (18 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Weyerhaeuser Company v. Ying ter Wang Ju Le Bu Ltd.

Case No. D2005-0522

1. The Parties

The Complainant is Weyerhaeuser Company, Washington, United States of America, represented by Christensen O’Connor Johnson Kindness, PLLC, United States of America.

The Respondent is Ying ter Wang Ju Le Bu Ltd., Tongzhou, Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <willametteindustries.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2005. On May 18, 2005, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the Domain Name at issue. On May 26, 2005, Go Daddy Software transmitted by e-mail 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. 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 May 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2005.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on July 4, 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

A press release (dated July 1, 2002) provided in an exhibit to the Complaint states that Complainant is “one of the world’s largest integrated forest products companies” and was incorporated in 1900. The press release further states that Complainant’s sales in 2001 were $14.5 billion; that Complainant has offices or operations in 18 countries, with customers worldwide; and that Complainant “is principally engaged in the growing and harvesting of timber; the manufacture, distribution and sale of forest products; and real estate construction, development and related activities.”

The Complaint states that Complainant owns exclusive rights to the names and marks WILLAMETTE and WILLAMETTE INDUSTRIES, which date back to 1958 and 1967, respectively, through use by Complainant’s predecessor in interest, and that the names and marks have been used continuously since those dates.

Complainant provided an affidavit of Ms. Teresa Wiant, corporate counsel for Complainant. The affidavit states that Complainant purchased all assets – including all trademarks, trade names and product identifiers – of Willamette Industries, Inc., on June 14, 2002. The affidavit further states that, since the acquisition, Complainant has continued to use the names and marks WILLAMETTE and WILLAMETTE INDUSTRIES.

Complainant provided as exhibits printouts from the U.S. Patent and Trademark Office’s website for the following trademarks, all of which the owner is listed as Willamette Industries, Inc.:

- WILLAMETTE & Design (Reg. No. 682,401), the status of which is listed as “not renewed and is considered to be expired”.

- WILLAMETTE PREMIER GLULAM (Reg. No. 2,529,480), the status of which is listed as “registered”.

- WILLAMETTE PREMIER PLUS GLULAM (Reg. No. 2,529,479), the status of which is listed as “registered”.

In addition, Complainant provided as exhibits the following information regarding trademark registrations outside the United States:

- From the website of the Office for Harmonization in the Internal Market: WILLAMETTE (CTM No. 000559336), the owner of which is listed as Weyerhaeuser Company and the status of which is listed as “registration published”.

- From the Saegis website: WILLAMETTE (Mexican Reg. No. 433289), the owner of which is listed as Willamette Industries Inc. and the status of which is listed as “registered”.

5. Parties’ Contentions

A. Complainant

Complainant contends that it owns exclusive rights to the names and marks WILLAMETTE and WILLAMETTE INDUSTRIES; that it acquired rights to the names and marks in 1958 and 1967, respectively, through its predecessor in interest; that it, or its predecessor in interest, has used the names and marks continuously since 1958 and 1967, respectively; and that consumers have come to know and recognize the names and marks with Complainant.

Complainant contends that the Domain Name incorporates in full its distinctive trademarks and trade names WILLAMETTE and WILLAMETTE INDUSTRIES.

Complainant contends that, because the Domain Name contains in full Complainant’s registered trademark WILLAMETTE, “that fact alone is sufficient to establish confusing similarity.” Complainant further contends that the Domain Name is confusingly similar to Complainant’s unregistered trademark WILLAMETTE INDUSTRIES and that “[u]nregistered trade names are sufficient basis upon which to prove confusing similarity under Paragraph 4(a)(i) of the Policy.”

Complainant contends that Respondent has “linked” the Domain Name to a pornographic website at “www.smutlist.com”.

Complainant contends that Respondent is not commonly known by the trademarks or the trade names WILLAMETTE or WILLAMETTE INDUSTRIES; that Respondent has no geographic ties to the Willamette Valley in Oregon, the area where Willamette Industries, Inc., began in the 1950s; and that Respondent has “no connection whatsoever” to Willamette Industries, Inc., or to Complainant.

Complainant contends that Respondent’s use of the Domain Name in connection with a pornographic website is “objectionable and obscene to most customers of Complainant” and that “[t]he methods employed by Respondent are typical among those who commonly use trademarks of others in bad faith.”

Complainant contends that Respondent’s use of the Domain Name tarnishes Complainant’s image and that such tarnishment is evidence of bad faith under the Policy.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (ii) the 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. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Based upon the valid registrations cited by Complainant, Complainant’s stated (as supported by an affidavit) continuous use of the mark WILLAMETTE, and Complainant’s affidavit and press release indicating that Complainant has purchased the assets of Willamette Industries, Inc., the Panel is convinced that Complainant has rights in this mark. Further, although Complainant apparently does not have a registration for the mark WILLAMETTE INDUSTRIES, the Policy requires only that a complainant “have rights” – not necessarily a registration – in a mark. The Policy “does not require that a trademark be registered by a governmental authority for such rights to exist.” Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.

As to whether the Domain Name is identical or confusingly similar to Complainants’ WILLAMETTE INDUSTRIES trademark, the relevant comparison to be made is with the second-level portion of the Domain Name only (i.e., “willametteindustries”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); see also United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

Therefore, given that the second-level portion of the Domain Name (“willametteindustries”) is identical (absent the addition of an irrelevant space, which is an invalid character for a domain name) to Complainant’s WILLAMETTE INDUSTRIES mark, the Panel is convinced that Complainant has proven the first element of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that Respondent has no rights or legitimate interest with respect to the Domain Name, that Respondent is using the Domain Name in connection with a pornographic website, that Respondent is not commonly known by the name WILLAMETTE INDUSTRIES and that Respondent has no connection with either the Willamette Valley in Oregon, with Willamette Industries, Inc., or with Complainant. All of these allegations are unanswered by Respondent.

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1, <http://arbiter.wipo.int/domains/search/overview/index.html> (visited July 18, 2005).

Accordingly, as a result of Complainants’ allegations and without any evidence of Respondent’s rights or legitimate interests in the Domain Name, the Panel is satisfied that the Complainant has proven the second element of the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant has not alleged with specificity in its Complaint which, if any, of these four factors may exist and evidence bad faith. Instead, Complainant relies on its allegation that Respondent is using the Domain Name in connection with a pornographic website to establish bad faith. Complainant provides no evidence to support the statement in the body of its Complaint that Respondent has “linked” the Domain Name to a pornographic website at “www.smutlist.com”. The Panel would have preferred to see an exhibit showing the pornographic website along with an affidavit that visitors to a URL with the Domain Name are forwarded or redirected to the pornographic site. However, the Panel visited the website at “www.willametteindustries.com” and personally observed that the URL automatically forwarded or redirected to a website at “www.smutlist.com/nasty/”, which website contained 48 pornographic images.¹

Complainant cites the following decisions under the Policy in support of its conclusion that use of a domain name in connection with a pornographic or otherwise offensive website may indicate bad faith: Kansas City Kansas Community College v. John Barry d/b/a Domain For Sale Inc., NAF Claim No. FA0208000117910; Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; America Online, Inc. v. Connect at 50 Plus, WIPO Case No. D2000-0978; and Bass Hotels & Resorts, Inc. vs. Mike Rodgerall, WIPO Case No. D2000-0568. Other decisions, too, have found that a respondent’s use of a domain name in connection with a pornographic website indicates bad faith under the Policy, and the Panel agrees with these decisions. Based on the circumstances of this case, including the facts that Respondent has not submitted a response and that the Domain Name resolves to a pornographic website, the Panel is satisfied that the Complainant has proven the third element required by the Policy.

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

Douglas M. Isenberg
Sole Panelist

Date: July 18, 2005