Office Depot, Inc. v. Virtual Services Corporation
Claim Number: FA1303001488267
Complainant is Office Depot, Inc. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is Virtual Services Corporation (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officedepotcoupon.com>, registered with FABULOUS.COM PTY LTD.
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.
Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2013; the National Arbitration Forum received payment on March 4, 2013.
On March 3, 2013, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <officedepotcoupon.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the names. FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 March 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2013 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@officedepotcoupon.com. Also on March 7, 2013, 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 April 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (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 name be transferred from Respondent to Complainant.
i. Respondent is not and never has been commonly known as “officedepotcoupon.”
ii. Respondent includes links in the disputed domain to pay-per-click advertisements featuring office supplies stores, many of which are direct competitors of Complainant, in a pay-per-click scheme.
i. Respondent’s disputed domain has been put to use to intentionally attempt to attract, for commercial gain, Internet users for Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark.
ii. Respondent had at least constructive knowledge of the Complainant’s marks because of Complainant’s registration of its marks with the USPTO.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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, Office Depot, Inc., contends that it is a global supplier of office products and services. Complainant asserts that it also operates various websites, including one located at <officedepot.com> through which it sells various goods and services. Complainant asserts that it is the owner of trademark registrations with the USPTO for the OFFICE DEPOT mark (Reg. No. 1,449,065, registered July 21, 1987. The Panel finds that although Respondent appears to reside in Germany, the Panel finds that Complainant does not need to register its mark in the country that Respondent operates in. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Thus, the Panel finds that Complainant’s registration of the OFFICE DEPOT mark with the USPTO demonstrates Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant claims that Respondent’s <officedepotcoupon.com> domain name is confusingly similar to Complainant’s OFFICE DEPOT mark because it incorporates Complainant’s mark in its entirety. Complainant argues that the only difference between Complainant’s product name including the OFFICE DEPOT mark, and Respondent’s domain, is the addition of the generic term “coupon.” Complainant contends that the term “coupon” is a voucher entitling the holder to a discount off a particular product, and is a marketing device currently offered by Complainant to its customers. The Panel finds that the addition of a generic or descriptive term is inconsequential to Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Respondent removes the spaces in Complainant’s OFFICE DEPOT mark and adds the generic top-level domain “.com.” The Panel finds that the elimination of spaces and a gTLD does not distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel agrees and finds that Respondent’s <officedepotcoupon.com> domain name is confusingly similar to Complainant’s OFFICE DEPOT mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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.”).
Complainant claims that Respondent is not and never has been commonly known as “officedepotcoupon.” The Panel notes that the WHOIS information identifies “Virtual Services Corporation” as the registrant of the disputed domain name. Complainant asserts that Respondent has never used any trademark or service mark similar to the disputed domain by which it may have come to be known. The Panel notes that Respondent has not provided any additional evidence showing that it is known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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 argues that Respondent includes links in the disputed domain to pay-per-click advertisements featuring office supplies stores, many of which are direct competitors of Complainant, in a pay-per-click scheme. The Panel notes that Respondent’s disputed domain name resolves to a website that features links to competing and unrelated hyperlinks, including “Office Depot Online,” “Sephora Official Website,” “Free Printable Coupons,” and others. The Panel finds that Respondent’s use of the disputed domain name to provide a web directory with competing and unrelated hyperlinks is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Complainant has proven this element.
Complainant contends that Respondent’s disputed domain has been put to use to intentionally attempt to attract, for commercial gain, Internet users for Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark. Respondent’s disputed domain name resolves to a website that features links to competing and unrelated hyperlinks, including “Office Depot Online,” “Sephora Official Website,” “Free Printable Coupons,” and others. Complainant argues that given the directly competing goods and services offered on the advertising found on the website associated with the disputed domain name, such use could only be in bad faith. The Panel determines that Respondent’s use of the disputed domain name to provide competing and unrelated hyperlinks demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Complainant claims that at the time the Respondent became the registrant of the disputed domain name, Respondent, who has made available an English language website accessible within the U.S. through the disputed domain name, had at least constructive knowledge of the Complainant’s marks because of Complainant’s registration of its marks with the USPTO. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to Respondent’s listing of Complainant’s business and competing businesses on its webpage, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <officedepotcoupon.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 10, 2013
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