The Office Club, Inc. and Office Depot, Inc. v. Greg Cook
Claim Number: FA0908001281801
Complainant is The Office Club, Inc. and Office
Depot, Inc. (“Complainant”),
represented by Paul D. McGrady, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <openofficedepot.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on August 28, 2009.
On August 27, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <openofficedepot.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 28, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 2009 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 postmaster@openofficedepot.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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 <openofficedepot.com> domain name is confusingly similar to Complainant’s OFFICE DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <openofficedepot.com> domain name.
3. Respondent registered and used the <openofficedepot.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Office Club, Inc. and Office Depot, is a global supplier of office products and services. Complainant promotes its products and services under the OFFICE DEPOT mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on July 21, 1987 (Reg. No. 1,449,065). Complainant has used the OFFICE DEPOT mark continuously in commerce to advertise its products and services since at least as early as 1986, and now has stores worldwide with sales of $14.5 billion in 2008.
Respondent, Greg Cook, registered the <openofficedepot.com> domain name on April 30, 2009. The disputed domain name has in the past resolved to a website containing links to websites advertising software products that compete with some of Complainant’s products; the website is now disabled.
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.
The Panel finds that Complainant has established rights in
the OFFICE DEPOT mark for purposes of Policy ¶ 4(a)(i) through its trademark
registration with the USPTO (Reg. No. 1,449,065 issued July 21, 1987). See
Miller Brewing
Complainant contends that
Respondent’s <openofficedepot.com>
domain name is confusingly similar to
Complainant’s OFFICE DEPOT mark. The <openofficedepot.com>
domain name differs from Complainant’s
mark in three ways: (1) the space between the terms has been removed; (2) the
generic term “open” has been added to the beginning of the mark; and (3) the
generic top-level domain (“gTLD”) “.com” has been added to the mark. The Panel finds that removing a space from a
mark does nothing to sufficiently distinguish a domain name from that mark for
the purposes of Policy ¶ 4(a)(i), nor does adding a generic term. See
Body Shop Int’l PLC v. CPIC NET, D2000-1214
(WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com>
is confusingly similar to the complainant’s THE BODY SHOP trademark); see also Am.
Express Co. v. MustNeed.com, FA
257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s
<amextravel.com> domain name confusingly similar to Complainant’s AMEX
mark because the “mere addition of a generic or descriptive word to a
registered mark does not negate” a finding of confusing similarity under Policy
¶ 4(a)(i)). The Panel
also finds that the addition of a gTLD is also inconsequential when considering
whether a domain name is confusingly similar to a mark. See Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb.
Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name
is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore,
the Panel finds that despite these changes, the disputed domain name has not been
sufficiently distinguished from Complainant’s mark, and thus, Respondent’s
disputed domain name remains confusingly similar to Complainant’s OFFICE
DEPOT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <openofficedepot.com> domain name. Under Policy ¶ 4(a)(ii), if the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Respondent has failed to submit a Response in these proceedings, and so Complainant’s contentions are uncontested. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Complainant contends that Respondent is not commonly known
by the <openofficedepot.com> domain
name nor has it ever been the owner or licensee of the OFFICE DEPOT mark. The WHOIS record for the disputed domain name
lists Respondent as “Greg Cook,” and there
is no evidence in the record that Respondent has ever been known by any variant
on the OFFICE DEPOT mark. Therefore, the
Panel finds that Respondent is not commonly known by the <openofficedepot.com> domain name pursuant to Policy ¶
4(c)(ii). See Foot Locker Retail,
Inc. v. Gibson, FA 139693
(Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER
family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce
Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of
the disputed domain names prior to their registration, and concludes that
Policy ¶ 4(c)(ii) does not apply to Respondent.”); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name).
Complainant contends that Respondent has used the <openofficedepot.com> domain name to host a website advertising products that compete with Complainant’s own products. The Panel finds that the sale of competing products by Respondent is evidence that Respondent’s use of the <openofficedepot.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has used the <openofficedepot.com> domain name (registered
April 30, 2009) to direct Internet customers to the website that resolved from
the disputed domain name. Complainant
also contends that Respondent was intentionally disrupting Complainant’s
business by selling products that compete with Complainant for sales. The Panel finds that Respondent’s competing
commercial activity was disrupting Complainant’s business, and therefore, that
Respondent’s registration and use of the disputed domain name has been in bad
faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com
Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28,
2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s
customers to Respondent’s competing business.
The Panel finds this diversion is evidence of bad faith registration and
use pursuant to Policy ¶ 4(b)(iii).”); see
also Jerie v. Burian, FA 795430 (Nat. Arb. Forum
Oct. 30, 2006) (concluding that the respondent registered and used the
<sportlivescore.com> domain name in order to disrupt the complainant’s
business under the LIVESCORE mark because the respondent was maintaining a
website in direct competition with the complainant).
Complainant also contends that Respondent has commercially
benefitted from this diversion of Internet users, who were enticed to purchase
products from Respondent. The obvious
commercial benefit of these sales compels the Panel to find that Respondent has
intentionally used the disputed domain name for commercial gain by creating a
likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶
4(b)(iv), the Panel finds that this use is also
evidence of Respondent’s registration and use of the <openofficedepot.com> domain name in bad faith.
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 <openofficedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 5, 2009
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