Viking Office Products, Inc. v. Multisys Computers Limited
Claim Number: FA1104001385981
Complainant is Viking Office Products, Inc. (“Complainant”), represented by Paul D. McGrady of Greenberg Traurig, LLP, Illinois, USA. Respondent is Multisys Computers Limited (“Respondent”), represented by Kevin Parnham of Hepworth Browne, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <viking-office.com>, <vikingstationery.com>, and <vikingsupplies.com> registered with TUCOWS, INC.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 27, 2011; the National Arbitration Forum received payment on April 29, 2011.
On April 27, 2011, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <viking-office.com>, <vikingstationery.com>, and <vikingsupplies.com> domain name are registered with TUCOWS, INC. and that Respondent is the current registrant of the names. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 May 5, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 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@viking-office.com, postmaster@vikingstationery.com, and postmaster@vikingsupplies.com. Also on May 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 May 25, 2011.
An Additional Submission from the Complainant was received on May 27, 2011, and determined to have been received in a timely manner according to The Forum's Supplemental Rule #7.
On June 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Petter Rindforth as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
The Complainant states that it is the owner of the U.S. trademark registration No. 1,775,567 VIKING (stylized), registered on June 8, 1993 for services in Intl Class 42, with the date of first use of March 15, 1960 (Exhibit C of the Complaint). In addition, the Complainant is the owner of a number of UK trademark registrations, incorporating the marks VIKING, such as: No 693 872 VIKING, registered November 15, 1950, and a number of other ones as shown by Exhibit D of the Complaint.
The Complainant informs that it is a global supplier of office products and services, and is an affiliate of Office Depot which has sold billion of dollars of products and services to consumers and businesses of all sizes through its three business segments: North American Retail Division, North American Business Solutions Division and International Division. Viking operates various websites, including one located at www.viking.com, through which it sells various goods and services.
The Complainant points out that the Respondent has registered each of the disputed domain names many years after the Complainant registered and began using its VIKING marks. At least <viking-office.com> and <vikingstationery.com> have been used for commercial websites, which compete directly with Complainant (Exhibit E of the Complaint). As of the date of the filing of this Complaint, all three domain names are being held passively and Respondent has failed to comply with Complainant’s transfer demand. In addition to the three disputed domains, the Respondent has also registered the following country code domain names, which are the subject of a co-pending Nominet complaint: vikingdepot.co.uk; vikingoffice.co.uk; vikingofficesupplies.co.uk; vikingstationery.co.uk; vikingsupplies.co.uk.
The Complainant states that the disputed domain names are confusingly similar to Complainant’s VIKING trademark since the only differences are that all spaces have been removed, the inclusion of generic industry related terms like “office”, “stationery” and “supplies, and the inclusion of the .com top level domain name.
The Complainant has not given Respondent any license, permission, or authorization by which the Respondent could make any use of any of Complainant’s marks. The Complainant further concludes that Respondent has no rights or legitimate interests in the disputed domain names. Respondent, who refers to itself in the WHOIS record as “Multisys Computers Limited” has never been commonly known as any of the disputed domain names and has never used any trademark or service mark similar to the disputed domain names by which it may have come to be known. The Respondent has never operated any bona fide or legitimate business under the disputed domain names, and is not making a protected non-commercial or fair use of them – the Respondent only passively holds the domain names.
Finally, the Complainant argues that the Respondent registered and used the disputed domain names in bad faith. Complainant has priority since its marks were registered with the UK trademarks office at the time the domain names were registered. The totality of the circumstances indicate the Respondent knew of the Complainant and its various marks at the time of registration of the disputed domain names, since they are identical and confusingly similar to the Complainant’s VIKING trade mark. Even if the Panel were to decide that the Complainant’s use and rights are insufficient to establish trade mark rights prior to the date of registration of the disputed domain names, Complainant’s potential rights in them would be sufficient for a finding of bad faith registration.
According to the Complainant, Respondent has used the disputed domain names to attract Internet traffic to its website by creating confusion with Complainant and its marks. In addition, given the large number of domain names Respondent has registered, it appears that they are designed to be blocking registrations in order to prevent Complainant from reflecting its mark in the domain names. This activity is one of the four explicit examples of bad faith registration and use found in the Policy. Further, Respondent holds the disputed domain names passively, which also supports a finding of bad faith registration and use.
B. Respondent
The Respondent informs that it is a software developer and systems support company. According to Respondent, it brought and registered a number of domain names in 2002 on behalf of the established UK based company Viking Office Supplies Limited which had traded under the mark VIKING since at least 1974 under that name Viking Office Supplies and predecessors.
The Respondent questions how a company (the Complainant), incorporated in 1960, can claim to have registered a trademark in 1959 with the United Kingdom Intellectual Property Office (“UKIPO”) (Reg. No. 693,872 issued Nov. 15, 1950), pointing out that this registration – with a very limited specification of goods – is the only UK registered trade mark that pre-dates the acknowledged use of the mark VIKING by Viking Office Supplies Limited.
Respondent refers to the fact that the company Viking Office Supplies Limited was incorporated by change of name on October 29, 1987, and all other UK Registered Trade Marks alleged to be owned and relevant to this Complaint are dated after incorporation and first use of the mark VIKING by Viking Office Supplies Limited. The company Viking Office Supplies Limited, its successors and assigns, have used the mark VIKING and domain names including VIKING at least in the period of November 18, 2002 and May 9, 2008. According to the Respondent, the Complainant has made no pre-dispute contact with Viking Office Supplies Limited, its successors, assignees or associates.
Respondent points out that the word VIKING has a well-known historical meaning and that there are other highly successful businesses using VIKING as part of their brand such as VIKING Press, VIKING Tyres, VIKING Airlines and VIKING Bikes, most of which were established long before the Complainant. The Complainant is not in the same position as a famous mark such as COCA-COLA or the like.
The Respondent argues that the prior use by, and goodwill of, Viking Office Supplies Limited in the UK and elsewhere before the effective rights of the Complainant would prevent any successful legal action for trademark infringement even over the relatively narrow range of goods/services for which the Complainant can allege any rights. It is submitted the Complainant is aware of this so did not launch such legal action.
The Respondent claims that, as a result of disputes between the successors and assigns of Viking Office Supplies Limited, there may be legal proceedings with regard to assets including goodwill. The domain names are part of those assets. The Respondent - acting as custodian of the domain names - cannot allow the domain names to lapse or be expunged based upon a flawed presentation of the facts particularly as the Respondent may be subject to legal action for such loss. The disputed domain names were filed in good faith on behalf of a company with a legitimate right to register the domain names and the Complainant has provided no substantive evidence to deny that Viking Office Supplies Limited did not have rights to have the domain names at the date of registration.
Respondent makes the conclusion that the objective of Complainant’s actions is to frustrate the normal legitimate business of goodwill transfer from the successors and assigns of Viking Office Supplies Limited to others and threaten such transfer without due cause. The behaviour of the Complainant in terms of lack of contact prior to the Complaint would suggest they believe expeditious vexatious behaviour now, as compared to lack of action previously due to no basis, will result in removal of a business rival as a successor/assign of Viking Office Supplies Limited rather than a real threat to the on-going business of the Complainant.
C. Additional Submissions
Complainant’s Additional Submission
In its Additional Submission, the Complainant points out the fact that the disputed domain names have at all material times been registered in the name of the Respondent, and that Respondent claims that they were registered on behalf of another company that no longer exists, and provides no evidence of any trust arrangement.
The Complainant points out that Respondent has both – in its argumentation – stated that there may be legal proceedings in relation to the disputed domain names, but at the same time stated that Respondent is not aware of any actual legal proceedings involving the domain names.
The Complainant submits that the reference to a company (Viking Office Supplies Limited) which no longer exists and which is not and has never been recorded as registrant of the disputed domain names is irrelevant.
Complainant summarize that Respondent has submitted no evidence of use of the disputed domain names, and that at no time has the Complainant permitted use of any of the domain names.
The Complainant is the owner of the U.S. trademark registration
No, 1, 775,567 VIKING (stylized), registered on June 8, 1993 for services in Intl Class 42, with the date of first use of March 15, 1960 (Exhibit C of the Complaint).
The Complainant is also the owner of the following UK trademark registrations:
No. 693,872 VIKING, Registered November 15, 1950
No. 1,426,448 VIKING, Registered May 1, 1990
No. 2,025,546 VIKING, Registered June 30, 1995
No. 2,251,342 VIKING, Registered November 3, 2000
No. 1,497,442 VIKING DIRECT, Registered April 9, 1992
No. 1,497,444 VIKING DIRECT, Registered April 9, 1992
No. 1,497,445 VIKING DIRECT, registered April 9, 1992
No. 2,025,747 VIKING DIRECT, Registered June 30, 1995
No. 2,146,932 VIKING DIRECT, Registered October 3, 1997
(As shown by Exhibit D of the Complaint)
The Respondent registered the disputed domain names <viking-office.com>, <vikingstationery.com>, and <vikingsupplies.com> on September 13, 2002.
Reverse Domain Name Hijacking
The Panel notes that the Respondent makes the conclusion that the objective of Complainant’s actions is “to frustrate the normal legitimate business of goodwill transfer from the successors and assigns of Viking Office Supplies Limited to others and threaten such transfer without due cause”. As this may be seen as Respondent’s suggestion/claim that Complainant is guilty of Reverse Domain Name Hijacking, the Panel will herewith, in good order, handle this specific issue separately:
Rule ¶ 1 defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule ¶ 15(e) further defines the situation as filing the complaint “in bad faith, for example in an attempt to harass the domain-name holder.”
Such a claim is frequently made by respondents, but a finding of Reverse Domain Name Hijacking is rarely granted. To prevail, the Respondent must show that Complainant knew of Respondent’s unassailable right or legitimate interest or of the clear lack of Respondent’s bad faith registration and use but nevertheless brought the Complaint in bad faith. See Rohl, LLC v. ROHL SA, D2006-0645 (WIPO July 12, 2006) (“Allegations of reverse domain name hijacking have been upheld in circumstances where a respondent’s use of a domain name could not, under any fair interpretation of the facts, have constituted bad faith, and where a reasonable investigation would have revealed the weaknesses in any potential complaint under the Policy”).
In this case, the Panel finds that the Complainant has satisfied all of the elements of Policy ¶ 4(a), see further details under “Discussion”. The Panel therefore finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
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.
The Complainant asserts rights in the VIKING trademark through its registration of the mark with United States Patent and Trademark Office (“USPTO”) (Reg. No. 1, 775,567 issued on June 8, 1993), as well as a number of UK trademark registrations with UKIPO (e.g., Reg. No. 693,872 issued on Nov. 15, 1950). The Panel finds that these trademark registrations sufficiently prove Complainant’s rights in the VIKING mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also 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).
The Complainant also asserts that Respondent’s disputed domain names are confusingly similar to its VIKING mark, claiming that the domain names incorporate the entire VIKING mark and differ only by adding a hyphen, the descriptive words “office,” “stationary” or “supplies,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a hyphen and gTLD do not adequately disintinguish the disputed domain names from Complainant’s mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Further, the Panel finds that the addition of descriptive words which, here, may relate to Complainant’s business of providing office supplies, does not necessarily avoid a finding of confusing similarity – in fact they may even make the similarity closer. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).
Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s VIKING mark according to Policy ¶ 4(a)(i).
Complainant’s assertion that Respondent lacks rights or legitimate interests in the disputed domain names, together with the fact that the WHOIS information lists “Multisys Computers Limited” as the registrant of the disputed domain names, which the Panel finds is not similar to any of the disputed domain names, establishes a prima facie case under the Policy.
Once a prima facie case has been established, the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests pursuant to Policy ¶ 4(c). 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.”).
The fact that Respondent is not commonly known by any of the disputed domain names, indicates that Respondent does not have rights or legitimate interests 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 asserts that Respondent’s <viking-office.com> and <vikingstationary.com> domain names were previously used to operate commercial websites in direct competition with Complainant’s office supply company. The Panel finds that Respondent’s use of the disputed domain names to operate a website which redirects Internet users to Complainant’s competitors and for Respondent’s benefit, 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 Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).
The Complainant also asserts that as of the date of filing Complaint, all three disputed domain names were being held passively, with no active content. The Panel finds that no active use does not establish rights or legitimate interests under Policy ¶ 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Respondent argues that it has a client company called Viking Office Supplies Limited, claimed to be commonly known by the disputed domain names as the company was incorporated by change of name in 1987 and the descriptive words “office” “supplies” and “stationary” relate to its business as well. Respondent claims that Viking Office Supplies Limited has generated goodwill in the VIKING mark from its use since 1974 or at least the date of incorporation, that the goodwill has been transferred to the VIKING marks successors and assigns, with Respondent believing the latest owner is in administration under UK law, and claims to be under a duty of care to protect, as a service provider, the assets of its client company, including the goodwill and disputed domain names until released by the administrator or receiver under UK law. However, the Panel notes that no specific evidence has been provided by the Respondent, which could have been very easy to provide – should the claimed position be a legal fact.
Accordingly, the Panel has found no reason to see that Respondent has any legitimate rights or interests in the disputed domain names.
The Panel finds that Respondent’s registration and use of the disputed domain names <viking-office.com> and <vikingstationary.com> to solicit Complainant’s customers to its competing website is evidence of bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also 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).
The Panel further finds that Respondent’s registration and previous use of the confusingly similar disputed domain names <viking-offie.com>, <vikingstationary.com>, and <vikingsupplies.com> takes advantage of the potential for online customers to be confused as to Complainant’s association or affiliation with the domain names and competing services offered, which is another evidence of bad faith under 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 Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services).
Complainant maintains that given the totality of the circumstances, Respondent knew of Complainant and its VIKING mark at the time of the registration of the disputed domain names since the names are confusingly similar and some were used to potentially solicit business from Complainant. The Panel agrees, finding that Respondent had actual or at least constructive notice of the disputed domain names based on these claims and Complainant’s registered VIKING trademark, according to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <viking-office.com>, <vikingstationery.com>, and <vikingsupplies.com> domain names be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 15, 2011
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