The Office Club, Inc. and Office Depot, Inc. v. Ilie Razvan [P.F.]
Claim Number: FA1103001381128
Complainant is The Office Club, Inc. and Office Depot, Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Ilie Razvan [P.F.] (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officedepot.ro>, registered with ROTLD.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2011; the National Arbitration Forum received payment on March 31, 2011.
On March 31, 2011, ROTLD confirmed by e-mail to the National Arbitration Forum that the <officedepot.ro> domain name is registered with ROTLD and that Respondent is the current registrant of the name. ROTLD has verified that Respondent is bound by the ROTLD 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 April 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 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.ro. Also on April 5, 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 and determined to be complete on April 22, 2011.
On April 27, 2011, the Complainant filed an Additional Submission, which complies with Supplemental Rule 7.
On April 27, 2011, the Respondent filed an Additional Submission, which complies with Supplemental Rule 7.
On April 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant contends that:
· Office Depot, Inc. is a global supplier of office products and services, which was incorporated in 1986.
· In fiscal year 2008, it sold $14.5 billion of products and services to consumers and businesses of all sizes in North America but also internationally, through multiple channels, including Internet sites.
· It operates various websites, including one located at <officedepot.com>, through which it sells various goods and services.
· It holds various trademark registrations:
- U.S. Reg. No. 1,449,065 for the mark OFFICE DEPOT covering “retail and online retail store services featuring office supplies, office machines, and office furniture” having a registration date of July 21, 1987; and
- CTM Reg. No. 991869 filed on February 6, 1999 and registered on August 17, 2000 for the mark OFFICE DEPOT EXPRESS covering different international classes referring to office equipment, materials and furniture
· On February 7, 2006, the Respondent registered the Disputed Domain.
· The Disputed Domain, <officedepot.ro> is identical to Complainant’s OFFICE DEPOT mark since the only differences are that all spaces have been removed and the top level extension “.ro” has been added.
· The Disputed Domain, <officedepot.ro> is confusingly similar to Complainant’s OFFICE DEPOT EXPRESS mark since the only differences are that all spaces and the element “express” have been removed and the top level extension ”.ro” has been added.
· Complainant has not given Respondent any license, permission, or authorization by which Respondent could make any use of any of its marks.
· Respondent is known as “Ilie Razvan” and has never has been commonly known as “officedepot.ro” and has never used any trademark or service mark similar to the Disputed Domain by which it may have come to be known, other than the infringing use.
· Respondent has never operated any bona fide or legitimate business under the Disputed Domain, and is not making a protected non-commercial or fair use of the Disputed Domain.
· Respondent has registered the Disputed Domain specifically targeting the Complainant’s trademark, in order to sell it back to Complainant for EUR10,000 or in the alternative to obtain a valuable business relationship with the Complainant, action which represents bad faith registration and use.
B. Respondent
By its Response, the Respondent contended that:
· It registered different domain names in 2006, among which the disputed domain name and some consisting of descriptive words in Romanian language.
· He registered other domain names in 2007 consisting of descriptive words in the Romanian language.
· The said registered domain names suggests a clear meaning and have been bought with the purpose of developing a business around them at a certain right moment.
· All the registered domain names consist of words or combination of common words in the current language or in the commercial practices and have no distinctive character.
· The disputed domain name is not even similar with the OFFICE DEPOT EXPRESS trademark, which at the date of the disputed domain name registration was not registered on the Romanian territory.
· He holds legitimate rights or interests in the disputed domain name as the latter had been bought in 2006 with the clear intent to develop an online shop which was supposed to integrate the sale of the office products together with office connected services, by developing a business around different domain names, further to be integrated to the disputed domain name. From this project and until now, it succeeded to develop only the office cleaning services through a Romanian company called Afro Cleaning SRL. Moreover, the Respondent is the administrator of the Romanian company Afro Trading SRL which has as main trade products related with furniture industries.
· It did not know about the Complainant’s trademarks when it registered the disputed domain name as they were totally unknown back in 2006 in Romania.
· The price of EUR10,000 was proposed by the Respondent for the disputed domain name in order for him to give up to the business plan imagined by him and it is ridiculous for the expenses already incurred by the Respondent.
· The Respondent offered to the Complainant also the alternative of business cooperation for the transfer of the disputed domain name.
C. Additional Submissions
By its Additional Submission, the Complainant comments on the Respondent’s Response that:
· Respondent does not deny that it knew about the Complainant’s trademark at the time of the registration of the disputed domain name.
· Respondent had not brought any evidence of the business plan imagined by him.
· The disputed domain name does not consist of common Romanian words.
In his Additional Submissions, the Respondent commented also on the Complainant’s Additional submissions and further stated that:
· He found out only in 2010 about a Romanian company OFFICE DEPOT SERVICE CENTER SRL which is not the Complainant in these proceedings.
· The Complainant’s marks were not notorious in 2006.
· The disputed domain name consists of words so generic that even if they are English words, anybody in Romania would understand them.
The Complainant is a global supplier of office products and service, sold not only in North America but also internationally. It is the holder of OFFICE DEPOT trademark registered in the U.S. and also of OFFICE DEPOT EXPRESS trademark registered as a community trademark long before the registration of the disputed domain name. The disputed domain name is identical or confusingly similar with the Complainant’s trademarks. The disputed domain name was registered in 2006 by a natural person, who contends without providing evidences that such registration was part a business plan. The Panel finds that the Respondent cannot justify any rights or legitimate interest in the disputed domain name and performed the registration with knowledge of the Complainant’s trademarks.
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.
Preliminary Issue: Language of the Procedure
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
In these proceedings, there are two Complainants: The Office Club, Inc. and Office Depot, Inc. The Complaint states that Complainants are corporate affiliates.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated: “It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.”
According to the public internet sources, Office Depot, inc. acquired Office Club, Inc in 1991. Therefore, according to ICANN Rule 12, the Panel accepts that there is a sufficient nexus or link between the Complainants, to treat them all as a single entity in these proceedings, and to refer to the Complainants collectively as “Complainant.”
Complainant asserts it is a global supplier of office products and supplies and uses the OFFICE DEPOT mark for retail and online retail services featuring office supplies, office machines, and office furniture. Complainant claims rights in the OFFICE DEPOT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,449,065 issued July 21, 1987). In addition, Complainant claims rights in the OFFICE DEPOT EXPRESS mark through its registration of the mark with the Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 991,869 issued August 17, 2000). The Panel finds that the Complainant’s trademark registrations with the USPTO and OHIM sufficiently prove its rights in the OFFICE DEPOT and OFFICE DEPOT EXPRESS marks pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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). Respondent registered the disputed domain name prior to Romania joining the European Union. The Panel finds it is irrelevant whether Complainant registered the OFFICE DEPOT or OFFICE DEPOT EXPRESS marks with the trademark authority in the country in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The Panel agrees with the Complainant that the disputed domain name is identical to its OFFICE DEPOT mark and similar with its OFFICE DEPOT EXPRESS mark. The disputed domain name fully incorporates the OFFICE DEPOT mark and the main part of the OFFICE DEPOT EXPRESS mark, merely omitting the space between the terms in the mark. The addition of the country-code top-level domain (“ccTLD”) “.ro” to the Complainant’s mark is irrelevant to the Policy ¶ 4(a)(i) identical or confusingly similar analysis. The Panel finds that Respondent’s changes fail to distinguish its 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)); see also Euro car Int’l SA v. New Media Research in Romania SRL, FA 123906 (Nat. Arb. Forum Nov. 4, 2002) (“Respondent’s <europcar.ro> domain name is identical to Complainant’s EUROPCAR mark. Respondent’s domain name incorporates Complainant’s mark in its entirety, and only deviates with the addition of the Romanian country-code of “.ro.” Because top-level domains are required of domain name registrants, their addition has been determined to be inconsequential when conducting an identical analysis under Policy ¶ 4(a)(i).”).
Therefore, it is the Panel conclusion that the Complainant has proved the first element under Policy ¶ 4(a)(i).
The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that it has not given Respondent license, permission, or authorization to use any of its marks. Moreover, the WHOIS information lists “Ilie Razvan [P.F.]” as the registrant of the <officedepot.ro> domain name, which the Panel finds is not similar to the disputed domain name. The Complainant’s assertion combined with the WHOIS registrant information indicates in the opinion of the Panel that Respondent is not commonly known by the <officedepot.ro> domain name under Policy ¶ 4(c)(ii). 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 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).
Complainant alleges Respondent is passively holding the disputed domain name. On the other hand, Respondent claims he registered the <officedepot.ro> domain name with the intention of using the domain name in connection with the development of a future business. Specifically, Respondent alleges he bought the domain name in order to develop a shop online for the sale of office products and related office supplies. So far, from this project, Respondent claims he has developed only office cleaning services through a company called Afro Cleaning SRL. Respondent also alleges he is the owner of AFRO Trading SRL, which is a business related to furniture activities, and is how he formed an interest in creating a business related to office furniture. No evidences are provided by the Respondent in order to support the alleged business plan. The Panel cannot help to note that from the domain names chosen to be developed in the Respondent’s alleged business plan, the only one consisting of English words is the disputed domain name, the other consisting only from Romanian words. Moreover, part of the alleged described business plan resembles very much the services and products offered by the Complainant under its trademarks. All these circumstances together cannot be held by the Panel as supporting a finding 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) in the Respondent’s use of the disputed domain name.
Respondent argues “office” and “depot,” the terms in the disputed domain name, are usual words and not distinctive. The Panel finds this statement rather peculiar, as the Respondent, himself, alleged that the disputed domain name was intended to be developed into a business for the Romanian market. The Panel cannot agree with the Respondent that the combination of the two words is so nondistinctive and common that any average Romanian would understand that it refers to office related products and services.
Moreover, the Complainant claims Respondent registered the disputed domain name in order to sell it to Complainant for €10,000 or in the alternative to obtain a valuable business relationship with Complainant. Complainant submits an email signed by “Razvan Illie” that contains the following message:
“We understand your wish to take over this domain from us, and we might agree to give up our plans to develop the online store and transfer the domain to you if you can find a way to get into a contractual collaboration with us for the Bucharest area (distribution, structuring, service, etc.) or pay us a €10,000 financial compensation, which would cover expenses already incurred on this project.”
The Panel finds that the Respondent offered to sell the disputed domain name to Complainant for more than its out-of-pocket costs and concludes that this offer provides evidence supporting the lack of the Respondent’s rights and legitimate interests in the <officedepot.ro> domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
Therefore, it is the conviction of the Panel that the Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and the Respondent has not rebutted it.
The circumstances of the case indicate, in the opinion of the Panel, that the disputed domain name was registered in bad faith and is being used in bad faith.
There is little doubt that the Respondent had actual knowledge about the Complainant’s trademarks when he registered the disputed domain name. The Complainant’s trademarks have been registered and used internationally for a long a time. The fact that they were not registered in Romania at the date of the domain name registration is irrelevant.
As in other UDRP decisions, the Panel considers that, in light of existing domain name registration regulations and the body of Policy-based administrative decisions, before registration of a domain name there exists a reasonable due diligence obligation of the registrant to check whether the domain name to be registered infringes a third party’s trademark rights. See Kabushiki Kaisha ASICS v. SC Gaticonstruct, DRO2008-0010 (WIPO, Sept. 10, 2008). In this case, the exercise of such due diligence would have revealed the existence of the Complainant’s trademarks and the potential for infringement of such trademarks rights by registering a domain name comprising such trademark.
Moreover, as previously discussed, Complainant contends that Respondent offered to transfer the <officedepot.ro> domain name to Complainant if Complainant paid Respondent €10,000 or entered into a business relationship with Respondent. The Panel cannot agree that this is a ridiculous low price in comparison with the expenses initiated by the Respondent while no evidences of such expenses were provided. The Panel considers this offer as an indication of the fact that Respondent registered the disputed domain name primarily for the purpose of selling the domain name for more than his out-of-pocket costs. Therefore, the Panel concludes Respondent has engaged in registration and use in bad faith under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent’s requests for money as well as advice from professors at the complainant’s university in exchange for transferring the disputed domain name suggested bad faith registration and use under Policy ¶ 4(b)(i)).
Therefore, the Panel finds that also the third element of the Policy has been proven by the Complainant.
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.ro> domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka - Panelist
Dated: May 10, 2011
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