Xerox Corporation v. printers
Claim Number: FA1108001403229
Complainant is Xerox Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is printers (“Respondent”), British Columbia, Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xeroxvancouver.com> and <vancouverxerox.com>, registered with Wild West Domains, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 15, 2011; the National Arbitration Forum received payment on August 22, 2011.
On August 16, 2011, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <xeroxvancouver.com> and <vancouverxerox.com> domain names are registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 August 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 12, 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@xeroxvancouver.com and postmaster@vancouverxerox.com. Also on August 23, 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 September 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <xeroxvancouver.com> and <vancouverxerox.com> domain names are confusingly similar to Complainant’s XEROX mark.
2. Respondent does not have any rights or legitimate interests in the <xeroxvancouver.com> and <vancouverxerox.com> domain names.
3. Respondent registered and used the <xeroxvancouver.com> and <vancouverxerox.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Xerox Corporation, uses its XEROX mark in the paper and digital document management business, including photocopiers, facsimile systems, and printers. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its XEROX mark (e.g., Reg. No. 525,717 registered May 30, 1950). Complainant also holds multiple trademark registrations with the Canadian Intellectual Property Office (“CIPO”) for its XEROX mark (e.g., Reg. No. UCA43818 registered September 19, 1952).
Respondent, printers, registered the <xeroxvancouver.com> and <vancouverxerox.com> domain names on June 26, 2009. The <xeroxvancouver.com> domain name resolves to a website under the title “Automation One Business Systems Inc.,” which appears to sell products that compete with Complainant’s products. The <vancouverxerox.com> domain name resolves to a website under the title “Vanprint” that also appears to offer printers and other office electronic equipment that compete with the products offered by Complainant.
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 provides evidence of its trademark registrations for its XEROX mark with both the USPTO (e.g., Reg. No. 525,717 registered May 30, 1950) and CIPO (e.g., Reg. No. UCA43818 registered September 19, 1952). The Panel finds that this evidence is sufficient to establish Complainant’s Policy ¶ 4(a)(i) rights in its XEROX mark. 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); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <xeroxvancouver.com> and <vancouverxerox.com> domain names contain Complainant’s entire XEROX mark, with the geographic term “vancouver” and the generic top-level domain (“gTLD”) “.com” added to Complainant’s mark. The Panel finds that such additions do not remove the disputed domain names from the realm of confusing similarity with Complainant’s XEROX mark under Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also 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 finds Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(i) and provides evidence and arguments in support of this assertion. The Panel determines that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests, which shifts the burden of proof to Respondent. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). In this case, Respondent has failed to respond to the Complaint and has failed to present any affirmative evidence of rights and legitimate interests in the <xeroxvancouver.com> and <vancouverxerox.com> domain names. While the Panel may infer from this lack of a response that Respondent lacks rights and legitimate interests in the disputed domain name, the Panel chooses instead to conduct an analysis under Policy ¶ 4(c) in the interest of fairness. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Complainant asserts that Respondent is not commonly known by the <xeroxvancouver.com> and <vancouverxerox.com> domain names. Complainant claims that Respondent is not affiliated with Complainant and is not authorized to use Complainant’s XEROX mark. The WHOIS information lists “printers” as the registrant of the disputed domain names. Respondent has not contradicted any of this evidence. The Panel has examined the record and has failed to find any evidence that Respondent is commonly known by the disputed domain name, which leads this Panel to hold that Respondent has not demonstrated rights and legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant makes unspecific arguments as to Respondent’s use of the <xeroxvancouver.com> and <vancouverxerox.com> domain names. However, Complainant does provide screen shots of the websites resolving from the disputed domain names. The <xeroxvancouver.com> domain name resolves to a website entitled “Automation One Business Systems,” which appears to offer products that compete with Complainant’s products. The <vancouverxerox.com> domain name resolves to a website entitled “Vanprint” that also offers competing products. Complainant implies that Respondent may also sell some of Complainant’s products at both of the resolving websites. The Panel determines that such a use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or 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 Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant does not allege that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iii). However, the Panel determines that Respondent’s use of the <xeroxvancouver.com> and <vancouverxerox.com> domain names competes with Complainant’s business and disrupts Complainant’s business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under 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).
Complainant claims, and the Panel infers, that Respondent commercially benefits from the offering of competing products at the resolving websites. Complainant contends that Respondent is attempting to create confusion as to Complainant’s affiliation with the <xeroxvancouver.com> and <vancouverxerox.com> domain names. As Respondent is attempting to commercially profit from this confusion, the Panel holds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the XEROX mark. While constructive notice has not generally been held to suffice for a finding of bad faith registration and use, the Panel may nonetheless find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); 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). The Panel finds that Respondent had actual notice of Complainant’s XEROX mark as evidenced by Respondent’s sale of directly competing products. Thus, the Panel concludes that Respondent registered and uses the <xeroxvancouver.com> and <vancouverxerox.com> domain names in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xeroxvancouver.com> and <vancouverxerox.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 26, 2011
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