The Office Club, Inc. and Office Depot, Inc. v. Redfire Internet Marketing
Claim Number: FA1010001350208
Complainant is The Office Club, Inc. and Office Depot, Inc. ("Complainant"), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Redfire Internet Marketing ("Respondent"), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officedepotstorelocator.com>, registered with ENOM, INC.
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 October 4, 2010; the National Arbitration Forum received payment October 5, 2010.
On October 5, 2010, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <officedepotstorelocator.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. verified that Respondent is bound by the ENOM, INC. registration agreement and thereby has agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 6, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 26, 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@officedepotstorelocator.com. Also on October 6, 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 November 5, 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <officedepotstorelocator.com> domain name is confusingly similar to Complainant’s OFFICE DEPOT mark.
2. Respondent has no rights to or legitimate interests in the <officedepotstorelocator.com> domain name.
3. Respondent registered and used the <officedepotstorelocator.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., assert that they are corporate affiliates. The Panel chooses to treat the Complainant as a single entity for the purposes of this proceeding. Complainant began doing business in 1986 and has since used its OFFICE DEPOT mark in connection with its office supply retail stores and as a global supplier of office products and services. Complainant has a trademark registration for its OFFICE DEPOT mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No.1,449,065 issued July 21, 1987).
Respondent, Redfire Internet Marketing, registered the <officedepotstorelocator.com> domain name January 26, 2010. The disputed domain name resolves to a website listing advertising links to third-party websites, some of which directly compete with Complainant’s office supply business.
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 that 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 a complainant’s rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Previous panels have also found that it is not necessary for a complainant to register its mark in the country of the respondent. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction.) Complainant holds a trademark registration of its OFFICE DEPOT mark with the USPTO (e.g. Reg. No.1,449,065 issued July 21, 1987). Therefore, the Panel finds that Complainant has established rights in its OFFICE DEPOT mark pursuant to Policy ¶ 4(a)(i) through its trademark registration with the USPTO.
Complainant contends that Respondent’s <officedepotstorelocator.com> domain name is confusingly similar to Complainant’s OFFICE DEPOT mark. The disputed domain name differs from Complainant’s mark only by the addition of the generic terms “store” and “locator”, the deletion of the space between the terms of Complainant’s mark, and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of generic words does not distinguish the disputed domain name from Complainant’s mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). The Panel also finds that the deletion of a space does not distinguish the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Additionally, the Panel finds that the addition of a gTLD does not distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Respondent’s <officedepotstorelocator.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 <officedepotstorelocator.com> domain name. When Complainant makes a prima facie case to support its allegations, the burden of proof shifts to the Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant made a prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights and legitimate interests in the <officedepotstorelocator.com> domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, this Panel still examines the record before determining whether Respondent has rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <officedepotstorelocator.com> domain name. Complainant alleges that Respondent has presented no evidence that would support a finding that Respondent is commonly known as the disputed domain name. The Panel agrees; no evidence in the record supports a finding that Respondent is commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Redfire Internet Marketing,” which is not similar to the disputed domain name. Complainant asserts it has not authorized or licensed Respondent to use or register the <officedepotstorelocator.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the <officedepotstorelocator.com> domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent uses the disputed domain name to resolve to a website containing advertisements and links to third-party websites that offer goods and services in competition with Complainant’s office supply business. Respondent likely receives pay-per-click fees from these links. The Panel finds that Respondent’s use of a confusingly similar domain name to operate a website featuring links to Complainant’s competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does 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)).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s <officedepotstorelocator.com> domain name resolves to a website containing links to third-party websites, some of which resolve to Complainant’s competitors in the office supply industry. Complainant alleges that Respondent’s use of the disputed domain name disrupts its business because Internet users intending to use the office supply goods and services provided by Complainant may instead purchase and use a competitor’s products as a result of Respondent’s use of the disputed domain name. The Panel finds that Respondent’s use of the <officedepotstorelocator.com> domain name disrupts Complainant’s business and supports findings of bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel is permitted to make an inference that Respondent’s use of the disputed domain name results in its receipt of pay-per-click fees from the previously mentioned links. Internet users searching for Complainant may find Respondent’s website instead because of Respondent’s use of a confusingly similar disputed domain name. Internet users may then become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name, resolving website, and featured links. Respondent attempts to profit from this confusion by receiving pay-per-click fees. The Panel finds that Respondent’s use of a confusingly similar disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that the Respondent registered and used the disputed domain name in bad faith; 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 <officedepotstorelocator.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 9, 2010.
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