Xerox Corporation v. meiguoshileguojijituan c/o hepengfei
Claim Number: FA1004001320263
PARTIES
Complainant is Xerox Corporation (“Complainant”), represented by Steven
M. Levy,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usa-xerox.com>, registered with Xin Net Technology Corporation.
PANEL
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.
Mr. Li Hu as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 20, 2010. The Complaint was submitted in both Chinese and English.
On April 20, 2010, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <usa-xerox.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation 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 April 30, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2010 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@usa-xerox.com. Also on April 30, 2010, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2010, pursuant to Complainant’s request to have the
dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Mr. Li Hu 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" through submission of a Written Notice, as defined in Rule 1. 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The Complainant owns the XEROX trademarks (the “Marks”) and makes
extensive use of them such that they have become famous throughout the world.
Complainant is a global leader in
the document management field, offering a wide array of products including
copiers, printers, fax machines, scanners, desktop software, digital printing
and publishing systems, and related supplies. Complainant also offers a variety
of comprehensive services relating to its document-management business.
Complainant has continually used
the Marks in commerce since 1948. Complainant extensively promotes its XEROX
Marks through print, radio, television and internet advertising as well as
sponsorship of sporting events and appearances at trade shows around the world.
Although Complainant is a US-based
company, its activities in
As a result of Complainant’s long
usage and promotion of the Marks, they have become famous and are widely
recognized by consumers.
Complainant’s XEROX marks are
aggressively protected through registration and enforcement. Amongst others, Complainant owns
2. Respondent’s registration of the <usa-xerox.com>
violates the Policy.
(a) The <usa-xerox.com> domain is identical or confusingly
similar to the Marks under Policy ¶4(a)(i).
Respondent’s domain
<usa-xerox.com> is confusingly similar, on its face, to Complainant’s
registered XEROX trademarks. Since the word XEROX is an arbitrary, coined term
and has no generic meaning in any language known to Complainant, searchers will
likely be confused into believing that there is a connection of source,
sponsorship, affiliation or endorsement between Complainant
and Respondent by Respondent’s use of the domain name <usa-xerox.com>.
It has been held, in decisions too
numerous to mention, that the mere addition of generic or other short words or
letters to a trademark creates a confusingly similar domain name. The Respondent in the present dispute
merely adds the prefix characters “
Further, Respondent has created
initial interest confusion. Respondent prominently uses the Marks in its site’s
domain name as well as in the title and body of its website. It only makes sense that if searchers see the
Marks listed in the body of the <usa-xerox.com> web page searchers will
be confused and led to believe that, even if the goods and services of
Respondent are not those of Complainant, they are at least affiliated with,
endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the domain
name <usa-xerox.com> Under Policy ¶ 4(a)(ii).
Respondent’s actions are not a bona fide offering of goods or services
under Policy ¶4(c)(i).
Respondent is not affiliated with, or authorized by Complainant to use
the XEROX name in the
Furthermore, a respondent has no
rights or legitimate interest in a domain where the respondent made no efforts
to avoid registering and using a domain name that is identical or confusingly
similar to marks held by others and where the domain is identical or
confusingly similar to a famous or distinctive trademark. Had Respondent done even the most cursory
search on Google, Yahoo, Baidu or any similar search engine, or had it done a
search of the US or Chinese trademark registries, it would have quickly learned
that Complainant’s XEROX trademark is world famous, is covered by many
registrations, and is not available for use by Respondent.
Respondent is not commonly known by
the name <usa-xerox.com> and so its actions do not fall within Policy ¶
4(c)(ii). Upon
information and belief, due to its infringing use of the trademark, Respondent
is not legally commonly known by the name “XEROX” or “USA XEROX” nor does
Respondent legitimately operate a business or other organization under this
mark or name and does not own any trademark or service mark rights in the XEROX
name. There mere existence of the <usa-xerox.com> website does not,
itself, demonstrate otherwise.
Respondent is not making a
legitimate noncommercial or fair use of the <usa-xerox.com> domain
without intent for commercial gain, and so its actions do not fall within
Policy ¶4(c)(iii).
Instead, Respondent is using the domain name to confuse and misleadingly
divert consumers, or to tarnish the Marks.
Lastly, Respondent’s use has
tarnished and diluted the Marks.
Respondent has diminished consumers’ capacity to associate the Marks
with the quality products and services offered under the Marks by Complainant
by using the Marks in association with a site which provides services not
associated with or related to Complainant’s quality branded products. Respondent’s use creates the very real risk
that Complainant’s trademarks are not only being associated with numerous
products and services not related to Complainant’s branded products, but also
to products and services over which Complainant has no quality control.
(c) Respondent Registered The Domain In Bad Faith Under Policy ¶
4(a)(iii).
Given the international fame of
Complainant’s coined XEROX Marks, it is inconceivable that Respondent was not
aware of their existence. Nearly every
business office has, at some time or another, owned or used a XEROX branded
photocopier, printer or scanner. Thus,
Respondent must have intentionally registered and used the
<usa-xerox.com> domain in bad faith. In numerous UDRP decisions the
international fame of a trademark has been held, alone, sufficient to find bad
faith.
Even, assuming, arguendo, that Respondent had no actual
knowledge of Complainant’s Marks, such Marks are so famous and widely
registered that Respondent should have known of them.
Here, Respondent was put on
constructive notice of Complainant’s rights in the XEROX Marks through
Complainant’s US and Chinese Trademark Registrations, all of which long predate
the creation date of the <usa-xerox.com> domain. Therefore, Respondent
knowingly and intentionally used the Marks in violation of Complainant’s rights
in the Marks. Even if Respondent somehow obtained a license from the Chinese
government to operate its business the use of a blatant infringement on a
world-famous trademark can only highlight its bad faith.
Respondent is seeking to obtain
commercial gain from its use of the <usa-xerox.com> website. When a
searcher reaches the <usa-xerox.com> site, it is presented with a
promotional pitch for Respondent’s business under the infringing XEROX name.
Finally, as more fully set forth
above, by infringing upon Complainant’s internationally famous XEROX
trademarks, Respondent intentionally uses the Marks in its domain name to
attract Internet searchers by creating a likelihood of confusion with
Complainant’s XEROX Marks. Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered
and used the <usa-xerox.com> domain in bad faith.
B. Respondent
No response was received from the Respondent
in this case proceeding.
FINDINGS
Complainant is a well-known corporation in the
document management field, offering a wide array of products including copiers,
printers, fax machines, scanners, desktop software, digital printing and
publishing systems, and related supplies,
and also offers a variety of comprehensive services relating to its
document-management business.
The Complainant since 1950 owns
The Complainant began its commercial activities in Asia in
the 1960’s and in
The Respondent registered the disputed
domain name on October 28, 2009.
The Respondent was not previously known as,
or associated with the mark XEROX.
The Respondent used the disputed domain name
to resolve to a web site where it is presented with a promotional pitch for
Respondent’s business under the Complainant’s XEROX name “USA Xerox
Int’l Group Limited”.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2)
the
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 Complainant asserts rights in the
XEROX mark through its registration of its mark with the United States Patent
and Trademark Office ("USPTO") (e.g.,
Reg. No. 1,661,698 issued October 22, 1991).
The Panel determines
that Complainant has established rights in the XEROX mark through its
registration with the USPTO pursuant to Policy ¶ 4(a)(i)
even if the mark is not registered in the same country that Respondent resides
in. See Expedia,
Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the
[complainant’s] mark is registered with the USPTO, [the] complainant has met
the requirements of Policy ¶ 4(a)(i).”); 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).
The Complainant contends Respondent’s
<usa-xerox.com> domain name is confusingly similar to its XEROX
mark. Complainant claims that Respondent replicates Complainant’s mark in its
entirety in the disputed domain name. Complainant argues that Respondent then
adds a hyphen and the geographic abbreviation “
The disputed domain name is therefore confusingly
similar to the Complainant’s XEROX mark.
The Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then
the burden shifts to Respondent to show it does have rights or legitimate
interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25,
2006) (“Complainant must first make a prima facie showing that Respondent does
not have rights or legitimate interest in the subject domain names, which
burden is light. If Complainant
satisfies its burden, then the burden shifts to Respondent to show that it does
have rights or legitimate interests in the subject domain names.”).
In the case, the Complainant asserts
that Respondent is not affiliated with Complainant nor is Respondent permitted
to use the XEROX mark in a domain name.
Furthermore, the WHOIS information lists the domain name registrant as
“meiguoshileguojijituan.” Without evidence to the contrary, the Panel hereby finds that Respondent is not commonly known by the <usa-xerox.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum
July 7, 2006) (concluding that the respondent was not commonly known by the
disputed domain names where the WHOIS information, as well as all other
information in the record, gave no indication that the respondent was commonly
known by the disputed domain names, and the complainant had not authorized the
respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not
commonly known by the <lilpunk.com> domain name as there was no evidence
in the record showing that the respondent was commonly known by that domain
name, including the WHOIS information as well as the complainant’s assertion
that it did not authorize or license the respondent’s use of its mark in a
domain name).
Complainant alleges that Respondent uses the <usa-xerox.com>
domain name to resolve to Respondent’s website, unrelated to the Complainant,
that Respondent commercially benefits from. The Panel finds that
the content of the resolving website does provide evidence that Respondent’s
use of the disputed domain name is not a bona
fide offering of goods or services pursuant Policy ¶ 4(c)(i)
nor a legitimate noncommercial
or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See
Summit Group, LLC v. LSO, Ltd.,
FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the
respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect
Internet users to respondent’s own website for commercial gain does not
constitute either 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 also Am. Int’l Group, Inc. v. Benjamin,
FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr.,
dissenting) (finding that the respondent’s use of a confusingly similar domain
name to advertise real estate services which competed with the complainant’s
business did not constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i),
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain
name to redirect Internet users to a financial services website, which competed
with the complainant, was not a bona fide offering of goods or
services).
The Panel holds that Complainant has met its
burden of proof, and then the burden shifts to Respondent to show that
it does have rights or legitimate interests in the disputed domain name.
Respondent did not deny Complainant’s assertions and also did not give any
evidence to show that it does have rights or legitimate interests in the
disputed domain name.
The Panel further holds that the Respondent has no rights or legitimate
interests in respect of the disputed domain name
Considering the
fact that Complainant’s XEROX
Marks are famous throughout the
world and Complainant has begun its commercial activities in
Complainant alleges
that Respondent profits from its use of the <usa-xerox.com> domain
name. Complainant contends that the disputed domain name resolves to Respondent’s
website where Respondent commercially profits from Internet users accessing the
resolving website. Taking into
consideration the fact that the Respondent used the disputed domain name to
resolve to a web site where it is presented with a promotional pitch for
Respondent’s business under the Complainant’s XEROX name, the Panel
finds that Respondent registered and used the <usa-xerox.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v.
Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the
respondent is appropriating the complainant’s mark in a confusingly similar
domain name for commercial gain, which is evidence of bad faith registration
and use pursuant to Policy ¶4(b)(iv).”).
The Panel holds that the disputed domain name has been registered and is being used in bad faith
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usa-xerox.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dr. Li Hu, Panelist
Dated: June
17, 2010
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