Staples, Inc. and Staples the Office Superstores, LLC v. FCS Holdings Corp / Carolina Rodrigues
Claim Number: FA1202001428752
Complainant is Staples, Inc. and Staples the Office Superstores, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is FCS Holdings Corp / Carolina Rodrigues (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <stpples.com>, <stapiles.com>, <stapales.com>, and <sptaples.com>, registered with Power Brand Center Corp.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2012; the National Arbitration Forum received payment on February 8, 2012.
On February 14, 2012, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <stpples.com>, <stapiles.com>, <stapales.com>, and <sptaples.com> domain names are registered with Power Brand Center Corp. and that Respondent is the current registrant of the names. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 February 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2012 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@stpples.com, postmaster@stapiles.com, postmaster@stapales.com, and postmaster@sptaples.com. Also on February 28, 2012, 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 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed as Panelist The Honourable Neil Anthony Brown QC.
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
Complainant alleges that:
1. Staples the Office Superstore, LLC is a wholly-owned subsidiary of Staples, Inc., and that both corporations have sufficient interest in the disputed domain names to be joined in this action (collectively “Complainant”).
2. Complainant provides office supplies, office equipment, computer hardware, copiers, telephones, and office furniture under the STAPLES mark.
3. Complainant owns trademark registrations for the STAPLES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,438,390 registered April 28, 1987).
4. Respondent registered the <stpples.com> domain name on October 28, 2006,the <stapiles.com> domain name on July 14, 2006, the <stapales.com> domain name on November 24, 2005, and the <sptaples.com> domain name on August 10, 2004.
5. The disputed domain names are confusingly similar to Complainant’s STAPLES mark.
6. Respondent is not commonly known by the disputed domain names.
7. The <stapiles.com>, <stapales.com>, and <sptaples.com> domain names resolve to websites featuring generic links to third-party sites, some of which directly compete with Complainant’s business.
8. Respondent commercially benefits from these sites through the collection of click-through fees.
9. The <stpples.com> domain name redirects users to Complainant’s own website, in violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant.
10. Respondent’s registration of the disputed domain name evidences typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Staples the Office Superstore, LLC .and Staples Inc have sufficient interest in the disputed domain names to be joined in this action as Complainants
(“Complainant”).
2. Complainant is a successful and well-known provider of office supplies and related products under the STAPLES mark.
3. Complainant owns several trademark registrations for the STAPLES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,438,390 registered April 28, 1987) and internationally. Complainant is also the registrant of the domain name <staples.com> which it uses widely in the course of its business.
4. Respondent registered the <stpples.com> domain name on October 28, 2006, the <stapiles.com> domain name on July 14, 2006, the <stapales.com> domain name on November 24, 2005, and the <sptaples.com> domain name on August 10, 2004.
5. The <stapiles.com>, <stapales.com>, and <sptaples.com> domain names resolve to websites featuring generic links to third-party sites, some of which directly compete with Complainant’s business.
6. The <stpples.com> domain name redirects users to Complainant’s own website, in violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of 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."
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.
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.”).
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter, Staples, Inc. and Staples the Office Superstores, LLC. Complainant’s evidence is that Staples the Office Superstore, LLC is a wholly-owned subsidiary of Staples, Inc., and that both corporations have sufficient interest in the disputed domain names to be joined in this action.
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.”
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.”
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. On the other hand, some contrary observations were made in AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
In the present proceeding, the Panel accepts that the evidence adduced by Complainant in the Complaint is sufficient to establish a nexus or link between the two Complainants and thus proposes to allow the Complaint to go forward in the names of the two Complainants. Clearly, both parties are involved in a significant way in the proceedings, as Staples the Office Superstores, LLC. is the registered owner of the USPTO trademarks relied on by Complainant and Staples, Inc. is the registrant of Complainant’s domain name <staples.com>. The case also comes within the meaning of the second leg of the National Arbitration Forum’s Supplemental Rule 1(e) which includes in the definition of “The Party Initiating a Complaint Concerning a Domain Name Registration” , “… multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” There is a sufficient nexus between the two companies, as Staples the Office Superstore, LLC is a wholly-owned subsidiary of Staples, Inc. Moreover, each company can claim to have rights to the disputed domain names, the former because it is the owner of the trademarks that are pivotal to the proceeding and the latter because it is the source of that right, can control the way its subsidiary exercises it and is itself the registrant of the domain name <staples.com> which the Panel has decided has been the target of typosquatting by Respondent. This decision is also within the meaning of UDRP Rule 3(a), as the expression “(a)ny person or entity” is wide enough to include two or more persons or entities with substantially the same interest. The Complaint has thus been properly brought and should go forward in the names of the two companies.For ease of reference, the two Complainants will be collectively referred to as “Complainant.”
Complainant contends that it has established rights in the STAPLES mark through its registration of the mark with the USPTO. Complainant has presented the Panel with evidence of its trademark registrations for the STAPLES mark with the USPTO (e.g., Reg. No. 1,438,390 registered April 28, 1987) which the Panel accepts. The Panel therefore finds that Complainant’s registrations with the USPTO establish its rights in the mark under Policy ¶ 4(a) (i), despite the fact that Complainant has registered its mark in a country other than that in which Respondent operates. 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 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 KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant then contends that each of the <stpples.com>, <stapiles.com>, <stapales.com>, and <sptaples.com> domain names is confusingly similar to Complainant’s STAPLES mark under Policy ¶ 4(a) (i). Each disputed domain name attaches the generic top-level domain (“gTLD”) “.com” to a misspelling of Complainant’s mark. The affixation of a gTLD is not relevant to confusingly similar analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel notes that the <stpples.com> domain name replaces the “a” in Complainant’s mark with a “p”. Further, the Panel also notes that each of the <stapiles.com>, <stapales.com>, and <sptaples.com> domain names add an extra letter to Complainant’s mark. The Panel also notes that the <stapiles.com> domain name adds an “i”, the <stapales.com> adds an extra “a”, and the <sptaples.com> domain name adds an extra “p.” Previous panels have found that a disputed domain name that misspells a complainant’s mark and differs by only one letter is confusingly similar to the complainant’s mark under Policy ¶ 4(a) (i). See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the marks and the disputed domain names.”); see also 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 finds accordingly. Moreover, it is apparent from looking at the disputed domain names and comparing them with the STAPLES mark that each of them is confusingly similar to the mark .Complainant has thus made out the first of the three elements that it must establish.
It is now well-established that 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.”).
Applying that principle, the Panel finds that Complainant has made out a prima facie case as required. The prima facie case is based on the following considerations:
(a) Respondent has chosen to use in its domain names Complainant’s STAPLES trademark and has embodied the whole of the mark into the domain name, adding only the generic Top Level Domain “.com”;
(b) Respondent uses the <stapiles.com>, <stapales.com>, and <sptaples.com> domain names to resolve to websites featuring generic links to third-party sites, some of which directly compete with Complainant’s business. Previous panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent uses a disputed domain name to operate a website containing competing commercial links. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 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)). The Panel holds that Respondent’s use of the disputed domain names does not constitute 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). Complainant further contends that Respondent’s use of the disputed domain names cannot be considered a bona fide offering of goods or services under Policy ¶ 4(c) (i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii). The Panel may find that
(c) Respondent’s <stpples.com> domain name redirects users to Complainant’s own website, in violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant. The Panel finds this further demonstrates Respondent’s lack of rights or legitimate interests under Policy ¶ 4(c) (i) and Policy ¶ 4(c) (iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services).
(d) Moreover, the clearly intentional misspelling of Complainant’s trademark to create the disputed domain names shows that Respondent is guilty of typosquatting, providing further evidence of Respondent’s failure to use the disputed domain names in connection with 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). The Panel finds that each disputed domain name differs from Complainant’s STAPLES mark by a single letter, while also adding a gTLD. These are classic cases of typosquatting, which negates any notion of 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 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”).
(e) Complainant asserts that Respondent is not commonly known by any of the <stpples.com>, <stapiles.com>, <stapales.com>, or <sptaples.com> domain names for the purposes of Policy ¶ 4(c) (ii). Complainant also asserts that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel notes that Respondent has failed to satisfy its burden of providing the Panel with a Response in this case, meaning that there is no evidence in the record to refute Complainant’s claims. Additionally, the WHOIS information for the disputed domain names identifies the domain name registrant as “FCS Holdings Corp / Carolina Rodrigues.” The Panel declines to find any similarity between the registrant and any of the <stpples.com>, <stapiles.com>, <stapales.com>, or <sptaples.com> domain names. In light of these findings, the Panel concludes that Respondent is not commonly known by the disputed domain names for the purposes of Policy ¶ 4(c) (ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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).
These matters go to establish the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and that they have also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
Complainant alleges that Respondent’s use of the <stapiles.com>, <stapales.com>, and <sptaples.com> domain names to resolve to websites featuring competing third-party links constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). The Panel draws the inference from the evidence that Respondent’s purpose in registering a confusingly similar domain name was to redirect users seeking information about Complainant’s products to Respondent’s sites, which feature the competing links. When users who were originally seeking Complainant’s website are instead exposed to competing websites, the Panel finds that Complainant’s business has been disrupted in 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).
Complainant further alleges that Respondent’s use of the <stapiles.com>, <stapales.com>, and <sptaples.com> domain names to resolve to websites featuring competing third-party links constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). The Panel draws the inference from the evidence that Respondent is using these domain names in connection with generating revenue as a click-through its websites. The Panel also draws the inference that Respondent’s selection of confusingly similar domain names was meant to create confusion as to Complainant’s affiliation with the websites housed at the disputed domain names and as a consequence wrongfully to usurp Complainant’s goodwill. The Panel finds that Respondent’s creation of confusion in order to generate a commercial gain exhibits bad faith within the meaning of Policy ¶ 4(b) (iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b) (iv).”); 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).
With respect to Respondent’s use of the <stpples.com> domain name to redirect users to Complainant’s own website, Complainant maintains that this is in violation of the affiliate agreement which governs Respondent’s relationship as an affiliate of Complainant and that as a consequence it constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). The Panel finds that by registering a confusingly similar domain name as a member of Complainant’s affiliate program, Respondent has attempted to benefit from its registration and use of the disputed domain name opportunistically and at Complainant’s expense. Previous panels have found bad faith under Policy ¶ 4(b) (iv) where a respondent redirects users to the complainant’s domain name, thus receiving a commission from the complainant through its affiliate program. See Cricket Commc’ns, Inc. v. Oliver, FA 954005 (Nat. Arb. Forum May 29, 2007) (finding bad faith registration and use where the respondent registered domain names containing the complainant’s mark after enrolling in the complainant’s affiliate program); see also Deluxe Corp. v. Dallas Internet, FA 105216 (Nat. Arb. Forum Apr. 10, 2002) (finding the respondent registered and used the <deluxeform.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by redirecting its users to the complainant’s <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program). The Panel thus finds that Respondent’s registration and use of the <stpples.com> domain name constitutes bad faith attraction for commercial gain under Policy ¶ 4(b) (iv).
Finally, Complainant argues that Respondent’s typosquatting activity is evidence of bad faith under Policy ¶ 4(a) (iii) in and of itself. The Panel also finds bad faith registration and use of each disputed domain names on this basis. See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a) (iii).”).
In addition and having regard to the totality of the evidence, the Panel finds that Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stpples.com>, <stapiles.com>, <stapales.com>, and <sptaples.com> domain names be TRANSFERRED from Respondent to Complainant, Staples, Inc.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: April 4, 2012
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