The Office Club, Inc. and Office Depot, Inc. v. Name Holding Company c/o Name Holding
Claim Number: FA0910001287148
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 <officedpot.com>, registered with Answerable.com (I) Pvt. Ltd.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 2, 2009.
On October 6, 2009, Answerable.com (I) Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <officedpot.com> domain name is registered with Answerable.com (I) Pvt. Ltd. and that Respondent is the current registrant of the name. Answerable.com (I) Pvt. Ltd. has verified that Respondent is bound by the Answerable.com (I) Pvt. Ltd. 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 October 8, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of October 28, 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@officedpot.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <officedpot.com> domain name is confusingly similar to Complainant’s OFFICE DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <officedpot.com> domain name.
3. Respondent registered and used the <officedpot.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Office Club, Inc. and Office Depot, Inc., is an international office products retailer that promotes and markets its office 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 since at least as early as 1986, and now sells over $14 billion worth of merchandise per year.
Respondent registered the <officedpot.com> domain name on May 4, 2000. The disputed domain name resolves to a website that advertises goods and services that compete with Complainant’s office products and services.
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 United States Patent and Trademark Office (“USPTO”) (Reg.
No. 1,449,065 issued July 21, 1987). See Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
("Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently
distinctive."); see also Paisley
Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005)
(finding that the complainant had established rights in the PAISLEY PARK mark
under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which the respondent operates;
therefore it is sufficient that the complainant can demonstrate a mark in some
jurisdiction).
Complainant contends that
Respondent’s <officedpot.com> domain
name is confusingly similar to its OFFICE DEPOT mark. The <officedpot.com> domain name differs from Complainant’s mark in three ways:
(1) the space has been removed from the mark; (2) the second letter “e” has
been removed from the mark; and (3) the generic top-level domain (“gTLD”) “.com”
has been added. The Panel finds that the
removals of spaces and single letters do not sufficiently distinguish a domain
name from an incorporated mark for the purposes of Policy ¶ 4(a)(i). See Down E. Enter. Inc. v. Countywide Commc’ns, FA
96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name
<downeastmagazine.com> confusingly similar to the complainant’s common
law mark DOWN EAST, THE MAGAZINE OF MAINE);
see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb.
Forum Feb. 25, 2002) (finding that the domain name <compq.com> is
confusingly similar to the complainant’s COMPAQ mark because the omission of
the letter “a” in the domain name does not significantly change the overall
impression of the mark). The Panel also finds that the addition of a gTLD does not
reduce the likelihood of confusion between the domain name and the mark because
every domain name must contain a gTLD. See Jerry Damson, Inc. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <officedpot.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”).
Respondent has failed to reply in this case. Therefore, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name. Nonetheless, the Panel will proceed to examine the record in consideration of the elements listed under Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known
by the <officedpot.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 the registrant as “Name Holding Company c/o Name Holding.” Because Respondent is not identified as any
variant on the OFFICE DEPOT mark and has failed to show any evidence contrary
to Complainant’s contentions, the Panel finds that Respondent is not commonly
known by the <officedpot.com> domain
name pursuant to Policy ¶
4(c)(ii). See Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the
disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also RMO, Inc. v.
Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶
4(c)(ii) "to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail").
The <officedpot.com> domain name resolves to a website that redirects Internet users to a website that features advertisements for goods and services that are in competition for market share with Complainant’s offerings. The Panel finds Respondent’s competitive offering of office products and services to Internet users constitutes 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 ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The confusingly similar disputed domain name directs Internet customers to Respondent’s website that resolves from the disputed domain name, where they are advertising office products and services competing with Complainant’s products and services. The Panel finds that Respondent is disrupting Complainant’s business by its competitive activity, and therefore, that Respondent’s registration and use of the disputed domain name is 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, and the Panel presumes, that Respondent gains commercially from its sales of competing office products and services at the website resolving from the disputed domain name. The Panel finds that Respondent is intentionally using 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), this use is also evidence of Respondent’s registration and use in bad faith. See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
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 <officedpot.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 16, 2009
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