The Office Club, Inc. and Office Depot, Inc. v. Lim Chu Ltd
Claim Number: FA1103001375599
Complainant is The Office Club, Inc. and Office Depot, Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, Illinois, USA. Respondent is Lim Chu Ltd (“Respondent”), Singapore.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officedepot.co>, registered with Dotster.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2011; the National Arbitration Forum received payment on March 2, 2011.
On March 2, 2011, Dotster confirmed by e-mail to the National Arbitration Forum that the <officedepot.co> domain name is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 2011 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@officedepot.co. Also on March 3, 2011, 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 March 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 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 <officedepot.co> domain name is identical to Complainant’s OFFICE DEPOT mark.
2. Respondent does not have any rights or legitimate interests in the <officedepot.co> domain name.
3. Respondent registered and used the <officedepot.co> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Office Club, Inc., and Complainant, Office Depot, Inc., are corporate affiliates. Hereinafter, the Panel will collectively refer to Complainants as “Complainant.” Complainant uses the OFFICE DEPOT mark for retail and online retail services featuring office supplies, office machines, and office furniture. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the OFFICE DEPOT mark (e.g., Reg. No. 1,449,065 issued July 21, 1987). Complainant also holds a trademark registration with the Intellectual Property Office of Singapore (“IPOS”) (e.g., Reg. No. T9505084F issued May 19, 2000).
Respondent, Lim Chu Ltd, registered the <officedepot.co> domain name on September 2, 2010. The disputed domain name resolves to Complainant’s official website.
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 claims rights in the OFFICE DEPOT mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,449,065 issued July 21, 1987) and the IPOS (e.g., Reg. No. T9505084F issued May 19, 2000). The Panel finds Complainant’s registrations with the USPTO and the IPOS sufficiently prove its rights in the OFFICE DEPOT mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); 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.”).
Complainant contends the <officedepot.co> domain name is identical to its OFFICE DEPOT mark. Respondent fully incorporates Complainant’s mark in the disputed domain name, and then merely omits the space between the words in the mark. In addition, Respondent affixes the country-code top-level domain (“ccTLD”) “.co” to Complainant’s mark. The Panel finds that spaces and ccTLDs are irrelevant to the Policy ¶ 4(a)(i) analysis. 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); see also Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”). Therefore, the Panel concludes Respondent’s <officedepot.co> domain name is identical to Complainant’s OFFICE DEPOT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <officedepot.co> domain name under Policy ¶ 4(a)(ii). The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel may infer from Respondent’s failure to submit a Response that Respondent lacks rights and legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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.”). Although Respondent has failed to respond, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts it has not given Respondent license, permission, or authorization to use its OFFICE DEPOT mark. Furthermore, the WHOIS information lists “Lim Chu Ltd” as the registrant of the disputed domain name, which the Panel finds is not similar to the <officedepot.co> domain name. The Panel finds Complainant’s assertion, combined with the WHOIS registrant information, indicate that Respondent is not commonly known by the disputed domain name under 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 provides evidence that Respondent uses the <officedepot.co> domain name to resolve to Complainant’s official website. The Panel finds that using a domain name that is identical to another’s mark to resolve to the trademark owner’s website does not amount to 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 Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (holding that the respondent was attempting to build up “mistaken confidence” in the disputed domain name by having it resolve to the complainant’s official website and that “an unconnected party has no right or legitimate interest to use an otherwise deceptive trademark, name or indicia to redirect Internet traffic, even if it is directed to the legitimate owner of the trademark”); see also MySpace, Inc. v. Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding that “the linking of the disputed domain name to the Complainant’s commercial website is not a legitimate non-commercial or fair use of the domain name” and that the respondent’s use “cannot give rise to a right or legitimate interest in the disputed domain name”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
The Panel finds that Respondent uses the <officedepot.co> domain name to resolve to Complainant’s official website. Based on precedent, the Panel concludes that this behavior amounts to registration and use in bad faith under Policy ¶ 4(a)(iii). See McKinsey Holdings, Inc. v. Mgr. Jakub Bystron, FA 1330650 (Nat. Arb. Forum July 23, 2010) (finding that Respondent's use of the <mckinsey.us> domain name to resolve to Complainant’s official website was further evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also MySpace, Inc. v. Mari Gomez, D2007-1231 (WIPO Oct. 17, 2007) (finding bad faith when "Respondent has been using the disputed domain name to link to the Complainant’s own website. Inherent in that conduct is the risk that the Respondent may at any time cause Internet traffic to re-direct to a website that is not that of, or associated with, the Complainant.").
The Panel finds Complainant has satisfied 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 <officedepot.co> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 30, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page