Staples, Inc. and Staples the Office Superstore, LLC v. Nijat Hassanov
Claim Number: FA1103001378255
Complainant is Staples, Inc. and Staples the Office Superstore, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Nijat Hassanov (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sataples.com>, registered with Moniker.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 16, 2011; the National Arbitration Forum received payment on March 16, 2011.
On March 18, 2011, Moniker confirmed by e-mail to the National Arbitration Forum that the <sataples.com> domain name is registered with Moniker and that Respondent is the current registrant of the name. Moniker has verified that Respondent is bound by the Moniker 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 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 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@sataples.com. Also on March 28, 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 April 21, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <sataples.com> domain name is confusingly similar to Complainant’s STAPLES mark.
2. Respondent does not have any rights or legitimate interests in the <sataples.com> domain name.
3. Respondent registered and used the <sataples.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Staples, Inc. and Staples the Office Superstore, LLC, owns the STAPLES mark and uses the mark in connection with its worldwide retail office supply stores. Complainant holds numerous trademark registrations for its STAPLES mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,428,390 issued April 28, 1987).
Respondent, Nijat Hassanov, registered the <sataples.com> domain name on May 2, 2003. The disputed domain name resolves to a website which features third-party links to websites directly competing with Complainant’s office supply business.
Respondent was the respondent in at least two prior UDRP proceedings which resulted in transfers of the disputed domain names in those cases to the respective complainants. See The Gap, Inc. v. Hassanov, FA 1342404 (Nat. Arb. Forum Sept. 28, 2010); see also Am. Airlines v. Hassanov, FA 1345979 (Nat. Arb. Forum Oct. 25, 2010).
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 maintains that it has established rights in the STAPLES mark. Previous panels have concluded that a complainant may establish rights by registering its mark with a trademark authority. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); 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.”). Here, Complainant holds multiple trademark registrations for its STAPLES mark with the USPTO (Reg. No. 1,428,390 issued April 28, 1987). Therefore, the Panel concludes that Complainant has demonstrated its rights in the STAPLES mark, according to Policy ¶ 4(a)(i), through its registration with a trademark authority.
Complainant also maintains that Respondent’s <sataples.com> domain name is confusingly similar to its STAPLES mark. The disputed domain name incorporates Complainant’s mark and distinguishes itself only by inserting an additional letter “a,” and by adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a single letter does not sufficiently distinguish the disputed domain name from Complainant’s mark. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel also finds that the inclusion of a gTLD does not remove the domain name from the realm of confusing similarity. 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 concludes that Respondent’s <sataples.com> domain name is confusingly similar to Complainant’s STAPLES mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant alleges that Respondent lacks rights and legitimate interests in the <sataples.com> domain name. In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel said, “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.” Here, Complainant has made a prima facie showing in support of its claims. Respondent failed to submit a timely response to the Complaint. The Panel may interpret the lack of response as evidence that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, the Panel will look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Nijat Hassanov,” which is not similar to the <sataples.com> domain name. Complainant further points out that it has not given Respondent permission or authorization to use its STAPLES mark within the domain name. The Panel finds that Respondent is not commonly known by the domain name, under Policy ¶ 4(c)(ii), as there is no information in the record which indicates otherwise. See 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); 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).
Respondent’s disputed domain name resolves to a website featuring links to third-party sites, some of which directly compete with Complainant’s office supply business. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain name, which redirects Internet users to Complainant’s competitors in the office supply industry, 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Complainant argues that Respondent is offering to sell the disputed domain name. Complainant claims that Respondent has listed the <sataples.com> domain name for sale on <sedo.com>. The Panel finds that Respondent’s general offer to sell the disputed domain name is evidence that Respondent lacks rights and legitimate interests in the name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
The <sataples.com> domain name includes only Complainant’s mark and simply adds a single letter “a” to make a common typographical error. Complainant asserts that the typographical error capitalizes on Internet users making a typing mistake by redirecting them to Respondent’s website. The Panel finds that Respondent’s use of the disputed domain name is additional evidence that Respondent does not have rights or legitimate interests pursuant to 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).”); IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant contends that Respondent offered to sell its <sataples.com> domain name to the public on <sedo.com>. The Panel finds that Respondent’s general offer to sell and dispose of its rights in the disputed domain name is evidence of bad faith use and registration under Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Complainant argues that Respondent has engaged in a pattern of bad faith registration. Respondent has at least two prior UDRP proceedings that resulted in findings of bad faith and transfer of the disputed domain names from Respondent to the respective complainants in those cases. See The Gap, Inc. v. Hassanov, FA 1342404 (Nat. Arb. Forum Sept. 28, 2010); see also Am. Airlines v. Hassanov, FA 1345979 (Nat. Arb. Forum Oct. 25, 2010). The Panel finds that such a pattern of bad faith registration indicates that Respondent registered the <sataples.com> domain name in bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
Complainant argues that Respondent’s use of the disputed domain name disrupts its business. Internet users intending to purchase office supplies or related products from Complainant may find Respondent’s website instead due to the confusingly similar domain name. Users may then purchase similar supplies from one of the competing third-party links. The Panel finds that such use does disrupt Complainant’s business, which is evidence of bad faith under Policy ¶ 4(b)(iii). See 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)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel assumes that Respondent generates click-through fees from the previously mentioned third-party links. Respondent uses the <sataples.com> domain name to redirect Internet users to third-party sites, which also sell office supply products, in competition with Complainant. The confusingly similar domain name and links offered are likely to mislead users as to Complainant’s sponsorship of, or affiliation with, the resolving website and products offered by the third-party websites. Respondent attempts to profit from this confusion through the receipt of click-through fees. The Panel concludes that Respondent’s registration and use of the disputed domain name constitutes 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 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).
As mentioned above, Respondent’s disputed domain name takes advantage of Internet users making a common typographical error. The disputed domain name includes Complainant’s mark and merely adds another letter “a” which constitutes typosquatting. The Panel finds that Respondent’s registration and use of the disputed domain name evidences bad faith under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sataples.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 4, 2011
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