Corporate Express US Inc. v. Domain Administration Limited c/o David Halstead
Claim Number: FA0807001217889
Complainant is Corporate Express US Inc. (“Complainant”), represented by Sarah
J. Miller, of Sheridan Ross P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <corporateexpres.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 26, 2008
by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <corporateexpres.com> domain name is confusingly similar to Complainant’s CORPORATE EXPRESS mark.
2. Respondent does not have any rights or legitimate interests in the <corporateexpres.com> domain name.
3. Respondent registered and used the <corporateexpres.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Express US Inc., provides retail supply services consisting of business and
office products. Complainant has
expended substantial money and effort promoting its CORPORATE EXPRESS family of
marks in the twenty years that it has been in operation. In association with its business, Complainant
owns several trademark registrations with the United States Patent and
Trademark Office (“USPTO”) including the CORPORATE EXPRESS mark accepted for
Respondent registered the <corporateexpres.com>
domain name on
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the 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 domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the CORPORATE EXPRESS mark
through registration of the mark with the USPTO. The Panel finds that Complainant has
established rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bin g Glu,
FA 874496 (Nat Arb. Forum Feb. 13, 2007) (finding rights in the METLIFE mark as
a result of its registration with the
domain name is confusingly similar to Complainant’s CORPORATE EXPRESS mark as
the disputed domain name contains the dominant portion of Complainant’s mark,
omits the letter “s” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that these minor differences
are insufficient means of distinguishing Respondent’s domain name from
Complainant’s mark pursuant to Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and
legitimate interests in the <corporateexpres.com>
domain name. In instances such as this
where Complainant has established a prima
facie case against Respondent, the burden of proof shifts from Complainant
to Respondent to bring forth its evidence of rights or legitimate interests
under Policy ¶ 4(a)(ii). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent is not commonly known by the <corporateexpres.com> domain
name. The WHOIS information for the
disputed domain name lists the registrant as “Domain
Administration Limited c/o David Halstead.”
Moreover, Complainant contends that it has not licensed the CORPORATE
EXPRESS mark for Respondent’s use and that no
other evidence exists to demonstrate that Respondent is commonly known by the <corporateexpres.com>
domain name. As a result, the Panel
finds that Respondent has not established rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See
Charles Jourdan Holding AG v. AAIM, D2000-0403
(WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the
respondent is not a licensee of the complainant; (2) the complainant’s prior
rights in the domain name precede the respondent’s registration; (3) the
respondent is not commonly known by the domain name in question); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum
Complainant has submitted evidence that Respondent is using its <corporateexpres.com> domain name to resolve to a website that features links to various websites offering competing office supply and printing products. The Panel infers from Respondent’s use that it is collecting referral fees for each redirected Internet user. The Panel finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ (c)(iii). See Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <corporateexpres.com> domain name to operate websites that provide Internet users with links to various competing office supply and printing products. The Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business and evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Furthermore, Respondent’s use will likely cause confusion as to Complainant’s sponsorship of and affiliation with the resulting disputed domain name and corresponding website. The Panel finds that the use of a confusingly similar domain name for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <corporateexpres.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 18, 2008
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