The Office Club, Inc. and Office Depot, Inc. v. 齐燕杰 c/o 唐王中拓科技
Claim Number: FA0912001299748
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 <wwwofficedepot.com>, registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically December 18, 2009; the National Arbitration Forum received a hard copy of the Complaint December 21, 2009. The Complaint was submitted in both Chinese and English.
On December 31, 2009, Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp confirmed by e-mail to the National Arbitration Forum that the <wwwofficedepot.com> domain name is registered with Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp and that Respondent is the current registrant of the name. Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp verified that Respondent is bound by the Xiamen Ename Network Technology Corporation Limited d/b/a Ename Corp registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On January 12, 2010, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 1, 2010, 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@wwwofficedepot.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 8, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Pursuant to Rule 11(a) the Panel determines that
the language requirement has been satisfied through the Chinese language
Complaint and Commencement Notification and, absent a Response, determines that
the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <wwwofficedepot.com>, is confusingly similar to Complainant’s OFFICE DEPOT mark.
2. Respondent has no rights to or legitimate interests in the <wwwofficedepot.com> domain name.
3. Respondent registered and used the <wwwofficedepot.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., markets and sells office products and services. Complainant began operation in 1986. Complainant offers its office products and services through retail stores, catalogues, and an internet website. Complainant markets and sells these products and services under the OFFICE DEPOT mark. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office ("USPTO") for its OFFICE DEPOT mark (e.g., Reg. No. 1,449,065 issued July 21, 1987).
Respondent registered the <wwwofficedepot.com>
domain name
September 26, 2008. The disputed domain
name resolves to a website featuring offers for unauthorized coupons for
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 contends it has established rights in the OFFICE
DEPOT mark. Previous panels have found
that trademark registration with a federal trademark authority is sufficient to
establish rights in a mark.
Complainant claims that Respondent’s <wwwofficedepot.com> domain name is
confusingly similar to Complainant’s OFFICE DEPOT mark. The disputed domain name contains
Complainant’s entire mark, except for removing the space between the
terms. The disputed domain name removes
the period between the prefix “www” and Complainant’s mark. Finally, Respondent adds the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that the removal of a space from Complainant’s mark, the removal of
the period between the domain name and the prefix “www,” and the addition of a
gTLD are insufficient to adequately distinguish the disputed domain name from
Complainant’s mark. See Am. Int’l Group, Inc. v. Domain
Admin. Ltd.,
FA 1106369 (Nat. Arb. Forum Dec. 31,
2007) (finding that “spaces are impermissible and a generic top-level domain,
such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is
required in domain names. Therefore, the
panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the
complainant’s [AMERICAN GENERAL] mark.”); see
also Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000)
(finding that the respondent’s domain name <wwwbankofamerica.com> is
confusingly similar to the complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”); see also Neiman Marcus Group, Inc. v. S1A,
FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been
established because the prefix “www” does not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS
mark); see also Jerry Damson, Inc. v.
Thus, the Panel finds that Respondent’s <wwwofficedepot.com> domain name is confusingly similar to Complainant’s OFFICE DEPOT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <wwwofficedepot.com> domain name. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant made a prima facie case. Respondent’s failure to respond to the Complaint permits the Panel to presume that Respondent does not have rights or legitimate interests in the <wwwofficedepot.com> domain name. However, this Panel also examines the record to determine whether evidence in the record suggests that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); 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.”).
Respondent offers no evidence to suggest that Respondent is commonly known by the <wwwofficedepot.com> domain name. Furthermore, the Panel found no evidence in the record that suggested that Respondent is commonly known by <wwwofficedepot.com> domain name. Complainant asserts that it never authorized Respondent to use the OFFICE DEPOT mark. The WHOIS information does not reflect that the domain name registrant is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has failed to establish that it is commonly known by the <wwwofficedepot.com> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant also contends that Respondent is attempting to pass itself off as Complainant on the website resolving from the <wwwofficedepot.com> domain name. The disputed domain name resolves to a website featuring unauthorized coupons for Complainant’s office products and services. It also contains a hyperlink to an unauthorized version of Complainant’s website. The Panel finds that Respondent’s attempt to pass itself off as Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent uses the <wwwofficedepot.com>
domain name to resolve to a website offering unauthorized coupons for
Complainant’s office products and services.
The resolving website also contains a hyperlink to a copy of
Complainant’s website. Internet users
may attempt to use the unauthorized coupons offered by Respondent, which forces
Complainant to either accept the coupons—providing Internet users with a
discount based on the counterfeit coupons—or refuse to honor the coupon,
potentially harming the relationship with Complainant’s customers. The Panel finds that Respondent’s use of the
disputed domain name disrupts Complainant’s office product and services
business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v.
calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007)
(finding that the respondent’s registration and use of the disputed domain
name, which displayed a website virtually identical to the complainant’s
website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent
registered each of the disputed domain names in order to gain customers and to disrupt
Complainant's business of authorizing dealers to sell its CATERPILLAR
equipment.”).
Respondent’s website resolving from the <wwwofficedepot.com> domain name offers unauthorized coupons for Complainant’s office products and services and provides a hyperlink to a nearly identical version of Complainant’s website. Internet users interested in Complainant’s office products and services may become confused as to Complainant’s affiliation with and sponsorship of the disputed domain name and resolving website. Complainant argues, and the Panel agrees, that Respondent likely profits from this confusion. The Panel finds that Respondent’s use of the disputed domain name permits findings of bad faith registration and use under 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 Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.").
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwofficedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 22, 2010
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