WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Paper Australia Pty Ltd v. Sabyasachi Baral

Case No. D2018-1434

1. The Parties

The Complainant is Paper Australia Pty Ltd of Mount Waverley, Victoria, Australia, represented by Corrs Chambers Westgarth, Australia.

The Respondent is Sabyasachi Baral of Khordha, India.

2. The Domain Name and Registrar

The disputed domain name <australiannpapers.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2018. On June 28, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 29, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 27, 2018.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on August 6, 2018. 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 was founded in Australia in 1868. The Complainant is a vertically integrated manufacturer of pulp, paper, envelopes and stationery, which produces a wide range of products and brands. The Complainant manufacturers office and printing papers, bag, sack, lightweight packaging and industrial papers, kraft liner board for the cardboard carton industry. The Complainant is also a major supplier of kraft liner board used in corrugated boxes and envelopes. The Complainant produces Australia’s leading brands of paper products.

The Complainant has been known by the trademark AUSTRALIAN PAPER since 2000. The Complainant’s web page at “www.australianpaper.com.au” was registered on May 5, 1998. Since at least January 2003, the Complainant has continuously operated the website at “www.australianpaper.com.au”. The Complainant sells its products in Australia and internationally. For the last 5 years the average annual revenue derived from sales of all mill owned branded products sold under the business known as AUSTRALIAN PAPER is approximately AUD 540 million. The Complainant is part of the Nippon Paper Group which is one of the 10 largest paper and packaging companies in the world.

The Complainant holds registered trademarks in Australia for AUSTRALIAN PAPER; trademark registrations No. 823489 (registered on February 14, 2000), No. 1308005 (registered on July 6, 2009), and No. 1831144 (registered on March 10, 2017).

According to the WhoIs, the creation date of the Domain Name is April 27, 2018. Pursuant to the Registrar, the Domain Name expires April 27, 2019. At the time of filing the Complaint, the Domain Name resolved to what seems to be a fraudulent “mirror” web page, copying design and content from the Complainant’s web page. At the time of drafting this decision, the Domain Name resolved to the Registrar’s parking web page.

5. Parties’ Contentions

A. Complainant

The Complainant provides trademark registrations and submits it has unregistered rights in its trademark AUSTRALIAN PAPER. The Complainant argues that the Domain Name is a misspelling of the Complainant’s trademark and confusingly similar to the Complainant’s trademark. The addition of the letter “n” and the letter “s” in the Domain Name does not affect the assessment that the Domain Name is confusingly similar to the AUSTRALIAN PAPER trademark.

The Complainant argues that the Respondent is not affiliated or related to the Complainant in any way, or licensed or otherwise authorized to use the Complainant’s trademark. The Respondent has no prior rights or legitimate interests in the Domain Name. The Respondent has not been commonly known by the Domain Name. The Domain Name redirected to a “mirror” web page, copying the design and content from the Complainant’s web page. Such use cannot be considered a legitimate noncommercial or fair use of the Domain Name.

As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant and its well-known trademark when the Respondent registered the Domain Name. Bad faith may also be inferred from the Respondent’s registration of a misspelling of the Complainant’s trademark.

Further, the pointing to a fraudulent mirror web page, suggests bad faith as it may mislead consumers into believing that they were visiting the Complainant’s website. The Respondent is not only infringing the AUSTRALIAN PAPER trademark, but also copyright in the material the Respondent has taken from the Complainant’s web page. The Respondent has not provided accurate contact information on its website. False contact details is considered to be evidence of use in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark AUSTRALIAN PAPER.

The test for confusing similarity involves the comparison between the trademark and the Domain Name. Where the trademark is recognizable within the domain name, the addition of a common, obvious or intentional misspelling would not prevent a finding under the first element. See section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). In this case, the Domain Name is a minor misspelling of the Complainant’s trademark. It does not prevent a finding of confusing similarity with the Complainant’s mark. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview 3.0, section 1.11.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademarks or otherwise make use of its marks. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Name as a trademark or acquired common law rights. The Domain Name redirected to a “mirror” web page, copying the design and content from the Complainant’s web page. Such use cannot be considered as a bona fide offering nor a legitimate noncommercial or fair use within the meaning of the Policy.

The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

It is more likely than not that the Respondent knew of the Complainant and its business when it registered the Domain Name, taking into account the misspelling and the fact that the Domain Name resolved to a web page copying design and content from the Complainant’s official web page.

The Domain Name seems to be registered and used to attract, for commercial gain, Internet users, by creating a likelihood of confusion with the Complainant’s trademark.

The above finding of bad faith is supported by the fact that the Respondent has not provided accurate contact information on its website, and failed to respond to the Complaint.

For the reasons set out above, the Panel concludes that the Domain Name was registered and used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <australiannpapers.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: August 7, 2018