The Office Club, Inc. and Office Depot, Inc. v. Okane
Claim Number: FA1103001375614
Complainant is The Office Club, Inc. and Office Depot, Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Okane (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officedepro.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Linda M. Byrne 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, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <officedepro.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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@officedepro.com. 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.
A timely Response was received on March 8, 2011.
On March 16, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Linda M. Byrne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant argues that Respondent’s <officedepro.com> domain name is confusingly similar to Complainant’s OFFICE DEPOT mark. The Complainant argues that the only differences are that the “t” has been replaced by an “r” (a neighboring key to the “t” on a qwerty keyboard) and then switched in position with the “o” and the addition of the <.com> top level domain. The Complainant argues that these changes do not avoid likelihood of confusion between the OFFICE DEPOT trademark and the <officedepro.com> domain name.
Complainant contends that Respondent has never been and is not commonly known as <officedepro.com>, and that Respondent operates no bona fide or legitimate business under the domain name.
The Complainant argues that Respondent has registered and used the <officedepro.com> domain name in bad faith by using Complainant’s mark without authorization to sell office products.
B. Respondent
In a document titled “Response,” Respondent makes no contentions with respect to Policy ¶ 4(a)(i), ¶ 4(a)(ii), and ¶ 4(a)(iii). In an e-mail to the National Arbitration Forum’s Domain Dispute Case Coordinator Supervisor, Respondent stated: “I delete all articles already, I don’t know is domain name relate in trademark I’m so sorry you can check it now its clear. If you want anything else please let’s me know best regard.” In this e-mail, Respondent evidently contends that Respondent did not realize it was infringing on Complainant’s OFFICE DEPOT mark, and contends that any infringing content has been removed from <officedepro.com>.
This Panel finds:
1) Complainant is the owner of the OFFICE DEPOT trademark, which is the subject of Complainant’s United States registration (e.g., Reg. No. 1,449,065, issued July 21, 1987). This registration covers “retail and on-line retail store services featuring office supplies, office machines, and office furniture.”
2) Respondent’s <officedepro.com> domain name resolved to a commercial website that offered office products for sale.
3) Respondent is not commonly known by the <officedepro.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Okane.”
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."
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.
This panel concludes that Complainant owns the OFFICE DEPOT mark with respect to the retail and on-line sale of office products, as demonstrated by Complainant’s U.S. registration for OFFICE DEPOT. 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).
Moreover, Respondent’s <officedepro.com> domain name is confusingly similar to Complainant’s OFFICE DEPOT mark. The disputed domain name differs from the OFFICE DEPOT mark only by deleting a space between the words of the mark, misspelling the word “depot,” and adding the generic top-level domain (“gTLD”) “.com.” The misspelling of a term does not allow Respondent to avoid a finding of confusing similarity. See The Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”).
This Panel concludes that <officedepro.com> is confusingly similar to the OFFICE DEPOT mark under Policy ¶ 4(a)(i).
Respondent is using <officedepro.com> to host a website that promotes a variety of office products in competition with Complainant’s products. This Panel concludes that Respondent’s use of the <officedepro.com> domain name to sell office supplies in competition with Complainant’s business is not 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 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
The <officedepro.com> domain name contains a typographical error with respect to Complainant’s OFFICE DEPOT trademark. In view of the evidence of typosquatting, this Panel concludes that Respondent’s use of the disputed domain name further demonstrates that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
This Panel concludes that Respondent has no rights or legitimate interests with respect to the <officedepro.com> domain name under Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered the disputed domain name to disrupt its business. Complainant alleges that the disputed domain name is used to sell office supplies in direct competition with Complainant’s retail business. This Panel agrees that Respondent’s use of the <officedepro.com> domain name disrupts Complainant’s business, which is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See 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); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Additionally, Complainant claims that Respondent’s disputed domain name, which misspells Complainant’s mark, takes advantage of Internet users making common typographical errors. This Panel concludes that <officedepro.com> is evidence of typosquatting such that Respondent’s use of the domain name constitutes bad faith use and registration pursuant to Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
This Panel concludes that Respondent has registered and used <officedepro.com> in bad faith under 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 <officedepro.com> domain name be TRANSFERRED from Respondent to Complainant.
Linda M. Byrne, Panelist
Dated: March 25, 2011
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