Office Depot, LLC and The Office Club, Inc. v. Milen Radumilo
Claim Number: FA2112001978700
Complainant is Office Depot, LLC and The Office Club, Inc. (“Complainant”), represented by Joshua M. Dalton of Morgan, Lewis & Bockius LLP, Massachusetts, USA. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <0fficedepot.com> (the “disputed domain name”), registered with SNAPNAMES 42, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 29, 2021; the Forum received payment on December 29, 2021.
On December 29, 2021, SNAPNAMES 42, LLC confirmed by e-mail to the Forum that the <0fficedepot.com> disputed domain name is registered with SNAPNAMES 42, LLC and that Respondent is the current registrant of the name. SNAPNAMES 42, LLC has verified that Respondent is bound by the SNAPNAMES 42, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 4, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@0fficedepot.com. Also on January 4, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants: Office Depot, LLC and The Office Club, Inc. The Office Club, Inc. is the wholly owned subsidiary of the Office Depot, LLC., and as such, the two should be treated as a single entity in this proceeding. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated: “[i]t has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.” Based on the foregoing, the Panel here finds that the two Complainants in this case may proceed as one party since the fact that one is the wholly owned subsidiary of the other demonstrates a sufficient nexus to each Accordingly, in this Decision, the two Complainants will hereinafter collectively be referred to as the “Complainant.”
A. Complainant
Complainant is a leading B2B integrated distribution company providing business services and supplies, products and technology solutions to companies of all sizes. Complainant has approximately 37,000 employees and operates approximately 1,154 brick-and-mortar locations throughout the United States. Complainant also offers its products and services online through its website located at “www.officedepot.com”. Complainant’s total sales exceeded USD 9 billion in 2020.
Complainant asserts rights in various United States trademark registrations, including, but not limited to: OFFICE DEPOT, United States Reg. No. 1,440,065, registered on July 21, 1987; and OFFICE DEPOT, United States Reg. No.1.939,705, registered on December 5, 1995 (hereinafter collectively referred to as the “OFFICE DEPOT Mark”).
Complainant contends that Respondent’s disputed domain name is identical or confusingly similar to Complainant’s OFFICE DEPOT Mark, as it is a misspelled version of the trademark that replaces the letter “O” with the numeral “0”, and then adds the “.com” generic top-level domain (“gTLD”). Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name and that Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant holds valid trademark rights in the OFFICE DEPOT Mark and that the disputed domain name is confusingly similar to Complainant’s OFFICE DEPOT Mark, even though the disputed domain name is a misspelled version of the OFFICE DEPOT Mark. Further, Complainant finds that the Respondent lacks rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that the disputed domain name is confusingly similar to the OFFICE DEPOT Mark as set forth below.
The Panel finds that Complainant has rights in the OFFICE DEPOT Mark based on its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a trademark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Here, the disputed domain name incorporates the OFFICE DEPOT Mark in its entirety, although it includes an intentional misspelling[i] of the OFFICE DEPOT Mark, replacing the letter “O” with the numeral “0”. Such misspelling of the disputed domain name is unlikely to be understood by consumers as being different from the OFFICE DEPOT Mark. See McGuireWoods LLP v. Gage, FA2106001951426 (Forum July 19, 2021) (holding mcguirewo0ds.com confusingly similar to MCGUIREWOODS because “[t]he only difference between the disputed domain name and Complainant’s MCGUIREWOODS mark is the substitution of the number zero in the disputed domain name in the place of the second letter ‘o’ in Complainant’s mark”). This substitution of characters does not diminish the confusing similarity between the two.
Further, the addition of the gTLD “.com” is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Therefore, the Panel concludes that the disputed domain name is confusingly similar to the OFFICE DEPOT Mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not respond to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard-pressed to furnish availing arguments had it chosen to respond:
Specifically, Respondent is not commonly known by the disputed domain name, Complainant has not authorized, licensed, or otherwise permitted Respondent to use the OFFICE DEPOT Mark and Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Furthermore, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services, or in connection with a legitimate noncommercial or fair use because the disputed domain name resolves to a website containing pay-per-click sponsored links that compete with Complainant’s business.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel concludes that Respondent registered and is using the disputed domain name in bad faith.
First, Respondent attracts users for commercial gain by displaying third-party pay-per-click sponsored links. Use of a confusingly similar domain name to display third party hyperlinks and collect click-through fees is evidence of bad faith under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). Here, Complainant has provided a screenshot of the resolving website of Respondent’s disputed domain name that displays hyperlinks to products related to or competitive with Complainant’s business.
Second, the Panel concludes that Respondent registered the disputed domain name in bad faith since it had actual knowledge of Complainant’s rights in the OFFICE DEPOT Mark. The OFFICE DEPOT Mark has been widely recognized and relied upon by online consumers throughout the United States. Respondent did not register the disputed domain name until July 2, 2021, well after Complainant’s OFFICE DEPOT Mark became well known, recognized and registered, thus resulting in Respondent’s bad faith.
Third, Respondent has engaged in typosquatting, which, in and of itself, is evidence of bad faith. See Morgan Stanley v. Hom, FA 200100187796 (Forum Feb. 9, 2020) (registration and use of <morganstlanley.com> was a misspelling of MORGAN STANLEY mark and thus constituted typosquatting and evidence of bad faith); Hilton Int’l Holding LLC v. Tamm, FA1809001809730 (Forum Nov. 5, 2018) (registration and use of <hitlon.com> was a misspelling of the HILTON trademark and thus constituted typosquatting and evidence of bad faith).
Fourth, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006). Therefore, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Finally, the Panel finds that Respondent has an established pattern of bad faith registration due to prior UDRP decisions that have resulted in transfer of the domain names in those proceedings. A pattern of bad faith registration may be established under Policy ¶ 4(b)(ii) when a respondent has been a party in multiple previous UDRP decisions that resulted in the transfer of the disputed domain name. See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondent’s previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Such pattern of cybersquatting is demonstrative of bad faith. This Panel has decided several cases in which the Respondent in the current case was also the Respondent in those cases. See, e.g., 7-Eleven, Inc. v. Milen Radumilo, FA2108001958008 (Forum Sept. 9, 2021). Thus, the Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <0fficedepot.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: February 10, 2022
[i] This misspelling is an example of typosquatting, a situation in which a disputed domain name includes a misspelled term.
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