Xerox Corporation v. Xerox CopyExpress c/o Petronilo Sulit
Claim Number: FA1006001330873
Complainant is Xerox
Corporation (“Complainant”), represented by Steven M. Levy,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <xeroxcopyexpress.com>, registered with FASTDOMAIN, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2010.
On June 22, 2010, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <xeroxcopyexpress.com> domain name is registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the name. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, 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 June 28, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 19, 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@xeroxcopyexpress.com. Also on June 28, 2010, the 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 July 22, 2010, 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" 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <xeroxcopyexpress.com> domain name is confusingly similar to Complainant’s XEROX mark.
2. Respondent does not have any rights or legitimate interests in the <xeroxcopyexpress.com> domain name.
3. Respondent registered and used the <xeroxcopyexpress.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Xerox Corporation, does business in the
document management field, offering products like copiers, printers, fax
machines, scanners, desktop software, digital printing and publishing systems,
and related supplies. Complainant owns
numerous trademark registrations for the XEROX mark with the United States
Patent and Trademark Office (“USPTO”) and the Intellectual Property Office of
the
USPTO
Reg. No. 525,717 issued May 30, 1950;
Reg. No. 576,118 issued June 16, 1953;
Reg. No. 580,296 issued Sept. 22, 1953;
Reg. No. 957,267 issued Apr. 17, 1973;
Reg. No. 1,000,990 issued Jan. 7, 1975;
Reg. No. 1,661,698 issued Oct. 22, 1991;
IPP
Reg. No. 17,187 issued Dec. 27, 1971; and
Reg. No. 42,005,005,378 issued Jan. 21, 2006.
Respondent, Xerox CopyExpress c/o Petronilo Sulit, registered the <xeroxcopyexpress.com> domain name on November 27, 2009. The disputed domain name redirects to Respondent’s own commercial website, advertising its service of obtaining compatible consumables and supplies for Kyocera copier use.
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 owns numerous trademark registrations for the XEROX mark with the USPTO and the IPP:
USPTO
Reg. No. 525,717 issued May 30, 1950;
Reg. No. 576,118 issued June 16, 1953;
Reg. No. 580,296 issued Sept. 22, 1953;
Reg. No. 957,267 issued Apr. 17, 1973;
Reg. No. 1,000,990 issued Jan. 7, 1975;
Reg. No. 1,661,698 issued Oct. 22, 1991;
IPP
Reg. No. 17,187 issued Dec. 27, 1971; and
Reg. No. 42,005,005,378 issued Jan. 21, 2006.
The Panel finds that Complainant’s registrations of its mark
with the
Complainant alleges that Respondent’s <xeroxcopyexpress.com> domain name is confusingly similar to Complainant’s XEROX mark because the disputed domain name consists of Complainant’s mark combined with the generic or descriptive terms “copy” and “express” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that a generic term or a term that describes Complainant’s business fails to prevent a finding of confusing similarity when added to Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). The Panel also finds that the appended gTLD does not affect the confusing similarity analysis under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel therefore concludes that Respondent’s <xeroxcopyexpress.com> domain name is confusingly similar to Complainant’s XEROX mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent does not possess rights and legitimate interests in the disputed domain name. In order to transfer the burden of showing rights and legitimate interests to Respondent, Policy ¶ 4(a)(ii) requires that Complainant put forth a prima facie case. In this case, the Panel finds that Complainant has met this obligation. Respondent, however, in its failure to respond, has neither argued its rights and legitimate interests in the disputed domain name nor contested Complainant’s allegations. The Panel therefore infers that Respondent does not possess rights and legitimate interests and takes Complainant’s assertions as true. 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 Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel elects to consider the evidence presented in light of the Policy ¶ 4(c) factors, however, to fully consider whether Respondent possesses rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent is not commonly known by the <xeroxcopyexpress.com> domain name. Complainant asserts that Respondent is not legally known by the name “Xerox” or “Xerox Copy Express” and does not operate any business under those names. Further, the WHOIS information for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel accordingly finds that Respondent is not commonly known by the <xeroxcopyexpress.com> domain name and thus lacks rights and legitimate interests 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent uses the <xeroxcopyexpress.com> domain name to
direct Internet users to Respondent’s own commercial website, which provides
compatible consumables and supplies for Kyocera copiers. Complainant argues that Respondent uses
Complainant’s mark to market Respondent’s own business and advertise
Complainant’s competitors. The Panel
finds that Respondent’s use of the disputed domain name to sell goods and
services unaffiliated with Complainant is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or 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 Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that the <xeroxcopyexpress.com> domain name resolves to a commercial web page featuring products and services that are related to the products and services offered by Complainant and the general industry in which Complainant operates. The Panel finds that Respondent’s redirection of Internet users to Respondent’s resolving web page is thus a form of competition that disrupts Complainant’s business and shows bad faith registration and use 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 Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Complainant contends that Respondent intentionally included Complainant’s XEROX mark in the <xeroxcopyexpress.com> domain name to attract Complainant’s intending customers. Complainant argues that due to the use of the Complainant’s mark in the disputed domain name and Complainant’s history of joint ventures with other companies, Internet users arriving at the disputed domain name’s resolving website would likely be confused about potential affiliation between Complainant and Respondent. Complainant argues that this confusion could result in financial gain to Respondent and profits lost to Complainant through lost sales and possible tarnishing of Complainant’s mark. The Panel finds that Respondent’s activities in this regard therefore indicate bad faith registration and use for the purposes of Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
The Panel finds 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 <xeroxcopyexpress.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 27, 2010
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