national arbitration forum

 

DECISION

 

Xerox Corporation v. Primeroprint / Simon Naylor

Claim Number: FA1206001448783

 

PARTIES

Complainant is Xerox Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA.  Respondent is Primeroprint / Simon Naylor (“Respondent”), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <everythingzerox.com>, registered with eNom, Inc.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2012; the National Arbitration Forum received payment on June 20, 2012.

 

On June 14, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <everythingzerox.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  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 June 20, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 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@everythingzerox.com.  Also on June 20, 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 July 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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 bring the Complaint to Respondent’s notice.  Respondent replied to the Forum in response to an email bringing the Complaint to its notice stating: “This is my personal email address and nothing to do with Everythingzerox, stop sending crap through to it or i’ll report as spam abuse.”  The email address used by the Forum was listed in the WHOIS data for Respondent.  Accordingly, the Panel has issued this 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

Complainant asserts trademark rights in the word XEROX and alleges that the disputed domain name is confusingly similar to its trademark. 

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.    Complainant uses the trademark XEROX in connection with its copying and printing machine business and is the owner, inter alia, of United Kingdom Trademark Reg. No. 710961 registered September 29, 1952 for XEROX.

2.    The disputed domain name was registered on September 21, 2011.

3.    There is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.

4.    The domain name resolves to a website that features various copying and printing machines as later described.

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.

 

Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights.  It is well established by former decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights.  Since Complainant provides evidence of its UK registration of the trademark the Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).

 

Panel is also satisfied that the disputed domain name is confusingly similar to Complainant’s trademark.  The gTLD is non-distinctive (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)) as is the descriptive word “everything”.  The domain name replaces the letter “x” of Complainant’s trademark by the letter “z” but the term “zerox” is a phonetically identical substitute for the way in which the trademark is pronounced.

 

Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. 

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006);  see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).

 

The publicly available WHOIS information identifies Respondent as ““Primeroprint / Simon Naylor” and so there is no prima facie evidence that Respondent might be commonly known by the disputed domain name, nor is there any indication that Respondent might be known by the name “everything zerox”.  There is no evidence that Respondent has any trademark rights.  There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.

 

There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute.  The evidence shows that the domain name resolves to a website which states that “EverythingZerox sell genuine products for Canon, Konica Minolta and Xerox® digital presses.”  The website further states that Respondent is a “third party supplier” of those goods.  Complainant additionally claims that Respondent is using the disputed domain name to sell not only competing goods, but counterfeit or unauthorized versions of Complainant’s products.

 

It has been consistently held by former UDRP panelists that any of those usages is unlikely to constitute bona fide use for the purposes of this aspect of the Policy (see, for example, Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use; see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”); and see finally, Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), which established four criteria for a reseller of a complainant’s goods to meet, namely, (1) the respondent must actually be offering the goods of the complainant; (2) the respondent must use the website to sell only the trademarked goods of the complainant; (3) the website of the respondent must accurately disclose the registrant’s relationship with the trademark owner; and (4) the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name (emphasis added by Panel )).

 

Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.  In the absence of a Response, that onus is not rebutted and so Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. 

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.

 

The four specified circumstances are:

 

‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’

 

Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above.  Panel has already found the disputed domain name to be confusingly similar to Complainant’s trademark.  Complainant has provided evidence of a website corresponding with the disputed domain name showing goods offered for sale in competition with Complainant’s products.  The very nature of the website is commercial and intended for financial gain.  In terms of paragraph 4(b)(iv) of the Policy, Panel finds that it virtually indisputable that Respondent is using the domain name to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark (see, amongst others, Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant.  Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”);  see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).

 

Panel finds registration and use in bad faith.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <everythingzerox.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Debrett G. Lyons, Panelist

Dated:  July 15, 2012

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page