Xerox Corporation v. NetCentrix Domain Leasing / Nex Centrix
Claim Number: FA1205001441854
Complainant is Xerox Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is NetCentrix Domain Leasing / Nex Centrix (“Respondent”), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xeroxlaserprinters.com> and <xeroxlaserprinter.com>, registered with Enom, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2012; the National Arbitration Forum received payment on May 4, 2012.
On May 2, 2012, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <xeroxlaserprinters.com> and <xeroxlaserprinter.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 29, 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@xeroxlaserprinters.com and postmaster@xeroxlaserprinter.com. Also on May 9, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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
1. Respondent’s <xeroxlaserprinters.com> and <xeroxlaserprinter.com> domain names are confusingly similar to Complainant’s XEROX mark.
2. Respondent does not have rights or legitimate interests in the <xeroxlaserprinters.com> and <xeroxlaserprinter.com> domain names.
3. Respondent registered and used the <xeroxlaserprinters.com> and <xeroxlaserprinter.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Xerox Corporation, owns multiple registrations for the XEROX mark issued by the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 525,717 registered May 30, 1950). Complainant uses the mark to support and promote its copier and document solutions business.
Respondent, NetCentrix Domain Leasing / Nex Centrix, registered the disputed domain names on October 10, 2008. Respondent’s disputed domain names redirect Internet users to a commercial website listed titled “Online Supply Store,” which sells Complainant’s products as well as the products of its competitors.
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.
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.”).
Complainant claims that it established its rights in the XEROX mark when it registered the mark with the USPTO (e.g., Reg. No. 525,717 registered May 30, 1950). Complainant submitted multiple trademark certificates issued by the USPTO, which the Panel deems sufficient to establish Complainant’s claims under this provision. Therefore, the Panel concludes that Complainant has established its rights in the XEROX mark under Policy ¶ 4(a)(i) by registering it with the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant also claims that Respondent’s <xeroxlaserprinters.com> and <xeroxlaserprinter.com> domain names are confusingly similar to Complainant’s XEROX mark. The disputed domain names both include the entire mark, while adding the descriptive term “laser” and the generic top-level domain (“gTLD”) “.com.” The domain names separately include either the descriptive term “printer” or “printers,” as well. The Panel determines that the terms added, “laser,” “printer,” and/or “printers,” are descriptive of Complainant’s business because Complainant sells laser printers and similar products from its own business. The Panel finds that Respondent has failed to sufficiently differentiate its disputed domain names from Complainant’s XEROX mark, thereby making them confusingly similar under Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant has made a prima facie case, the burden of proof under this provision shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain names. See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). However, due to Respondent’s failure to file a response in this matter the Panel may assume Respondent lacks rights and legitimate interests in the disputed domain names unless Complainant submitted evidence that clearly contradicts such a finding. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Therefore, the Panel will thoroughly examine the evidence on record to determine whether or not Respondent has rights and legitimate interests in the disputed domain names in accordance with the guidelines provided by Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies the registrant of the disputed domain names as “NetCentrix Domain Leasing / Nex Centrix,” which the Panel notes bears no resemblance to the <xeroxlaserprinters.com> and <xeroxlaserprinter.com> domain names. Given Respondent’s failure to provide any contradictory evidence, the Panel concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii) based upon the WHOIS information and the lack of other evidence on record. 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 also argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Complainant submits screenshots from the resolving website, which demonstrate that the disputed domain names redirect Internet users to a commercial website titled “Online Supply Store.” From this website, Internet users may purchase Complainant’s goods, as well as the goods of Complainant’s competitors. The Panel determines that this use does not qualify as 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 under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
Complainant claims that Respondent is attempting to commercially gain from the disputed domain names by confusing Internet users into buying products from Respondent. As noted above, Respondent redirects Internet users to a website that offers Complainant’s printers, copiers, and accessories for sale alongside those of Complainant’s competitors. It is likely that Respondent generates revenue by charging Internet users to purchase the products it offers. Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also Whirlpool Props., Inc. v. Ace Appliance Parts & Serv., FA 109386 (Nat. Arb. Forum May 24, 2002) (holding that the respondent’s use of the <whirlpoolparts.com> domain name to operate a website selling the complainant’s products constituted bad faith registration and use under the Policy, despite the fact that the respondent operated a storefront business for 27 years selling the complainant’s parts and appliances).
Complainant also claims that Respondent had constructive and actual knowledge of Complainant’s rights in the XEROX mark when it registered the disputed domain names. Complainant states that its trademark registrations gave Respondent constructive notice of Complainant’s rights in the XEROX mark. Complainant also states that due to the fame and notoriety of its XEROX mark, Respondent must have been aware of Complainant’s rights in the mark. While constructive notice is not sufficient to support a finding of bad faith registration and use, the Panel finds that Respondent had actual knowledge of Complainant’s rights in XEROX mark when it registered the disputed domain names. Therefore, the Panel concludes that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has established Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xeroxlaserprinters.com> and <xeroxlaserprinter.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 7, 2012
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