Office Depot, Inc. v. NA Main Street - Emile Caram Building ()
Claim Number: FA1303001489308
Complainant is Office Depot, Inc. (“Complainant”), represented by Paul D. McGrady of Winston & Strawn, Illinois, USA. Respondent is NA Main Street - Emile Caram Building () (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officedwpot.com>, registered with ENOM, INC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2013; the National Arbitration Forum received payment on March 12, 2013.
On March 12, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <officedwpot.com> domain name is 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 March 18, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@officedwpot.com. Also on March 18, 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 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
A. Complainant
a. Complainant and Its Marks.
Office Depot, Inc. is a global supplier of office products and services. The company was incorporated in 1986 with the opening of its first retail store in Fort Lauderdale, Florida. In fiscal year 2008, it sold $14.5 billion of products and services to consumers and businesses of all sizes through our three business segments: North American Retail Division, North American Business Solutions Division and International Division. Sales are processed through multiple channels, consisting of office supply stores, a contract sales force, an outbound telephone account management sales force, internet sites, direct marketing catalogs and call centers, all supported by a network of crossdocks, warehouses and delivery operations. In addition to its large traditional retail store footprint, Complainant also operates various websites, including one located at www.officedepot.com, through which it sells various goods and services.
b. Respondent and Its Actions.
1. Respondent registered the Disputed Domain on August 14, 2001. The Disputed Domain was registered well after Complainant began extensive marketing of its services under its marks and the registration of its marks in the U.S. Complainant has not given Respondent any license, permission, or authorization by which Respondent could make any use of any of its marks.
2. The Disputed Domain name is used to redirect consumers to Complainant’s own website located http://www.officedepot.com/. Respondent has no authority to make any such redirection and presumably is doing this presumably for a nefarious purpose.
3. Complainant has not given Respondent any license, permission, or authorization by which Respondent could make any use of any of its marks.
a.
The
Disputed Domain is nearly identical and confusingly similar
to the OFFICE DEPOT MARKS. (ICANN Rule 3(b)(ix)(1); ICANN Policy ¶4(a)(i)).
The Disputed Domain is confusingly similar to Complainant’s OFFICE DEPOT marks since the only difference is the deletion of an “e” and the addition of a “w.” See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). This particular typo variant is especially confusing, given the proximity between the “e” and the “w” keys on a QWERTY keyboard.
b. Respondent has no rights or legitimate interests in the Disputed Domain. (ICANN Rule 3(b)(ix)(2); ICANN Policy ¶4(a)(ii))
Respondent lacks rights or legitimate interest in the Disputed Domain. Respondent is not and never has been commonly known as “officedwpot” and has never used any trademark or service mark similar to the Disputed Domain by which it may have come to be known, other than the infringing use noted herein. See Citigroup Inc. v. Horoshiy, Inc. a/k/a Horoshiy, FA0406000290633 (Aug. 11, 2004) (finding that Respondent had not established rights or legitimate interests in the disputed domain name where there was no evidence that Respondent was commonly known by the domain names); Citigroup Inc. v. Acme Mail, FA 0402000241987 (Nat. Arb. Forum Apr. 12, 2004) (finding that respondent had not established rights or legitimate interests in the disputed domain name where “[r]espondent has no proof and there is no evidence in the record to suggest that [r]espondent is commonly known by <citiban.com>“); McClatchy Management Services, Inc., v. Peter Carrington a/k/a Party Night Inc., FA 0304000155902 (Nat. Arb. Forum June 2, 2003) (finding that respondent failed to establish rights to or legitimate interests in the disputed domain names where respondent was not commonly known as “Startribun” or “Stratribune”); See also GlaxoSmithKline Biologicals S.A. v. David Pfeffer c/o JeMM Productions, FA467340 (Nat. Arb. Forum June 10, 2005) (in which the Panel ordered transfer of <cervarix.us> based in part upon a finding that the respondent lacked rights or legitimate interests in the domain name).
Respondent has never operated any bona fide or legitimate business under the Disputed Domain, and is not making a protected non-commercial or fair use of the Disputed Domain. As noted above, Respondent is using the Disputed Domain to redirect Internet users to <www.officedepot.com> without authorization and presumably for a nefarious purpose. Such a use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Past panels have found that a respondent’s use of a domain name that is confusingly similar to Complainant’s mark to divert Internet users for commercial gain does not constitute 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). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Metropolitan Life Insurance Company v. Robert Bonds, FA873143 (Nat. Arb. Forum February 16, 2007) (ordering transfer of <metropolitanlife.us> based in part upon a finding that using the domain name in conjunction with pay-per-click advertising scheme “is diverting Internet users for commercial gain and that such use does not represent a bona fide offering of goods or services under Policy ¶4(c)(ii) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶4(c)(iv).”).
As noted above, Respondent’s Disputed Domain is confusingly similar to the Complainant’s mark. In addition, Respondent was undoubtedly aware of the OFFICE DEPOT mark prior to the registration of the Disputed Domain, given the considerable registration and/or use, as set forth in detail above. Further, because Respondent directed users to Complainant’s U.S. website, Respondent had at least constructive notice of Complainant’s U.S. rights. Because Respondent had notice of the Complainant’s trademark rights when registering domain names nearly identical and/or confusingly similar to those marks, Respondent has no rights or legitimate interest in the Disputed Domain. See Sony Kabushiki Kaisha a/t/a Sony Corporation v. John Zuccarini d/b/a Rave Club Berlin, FA 0204000109040 (Nat. Arb. Forum May 23, 2002) (finding that respondent had no legitimate rights or interest in domain name incorporating famous SONY marks); Bank of America Corporation v. BanofAmerica, FA 0203000105885 (Nat. Arb. Forum Apr. 12, 2002) (finding that respondent had no legitimate rights or interest in domain name incorporating variant of famous BANK OF AMERICA marks).
Complainant has not granted Respondent any license, permission, or authorization by which it could own or use any domain name registrations which are confusingly similar to any of Complainant’s marks. See Amazon.com, Inc. v. Rayaneh Net, FA 0309000196217 (Nat. Arb. Forum October 28, 2003) (finding no legitimate rights in the “amazoniran.com” domain name, in part, because complainant did not grant respondent a license to use the AMAZON.COM mark); see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding absence of license permitting respondent to use complainant’s trademark in domain name evidence of respondent’s illegitimate interests).
c. Respondent registered and used the Disputed Domain in bad faith. (ICANN Rule 3(b)(ix)(3); ICANN Policy ¶4(a)(iii))
As the facts set forth above reveal, Respondent registered and used the Disputed Domains in bad faith.
1. Bad Faith Registration. At the time that the Respondent registered the Disputed Domain, Respondent, who redirects traffic via the Disputed Domain to Complainant’s website without authorization and presumably for a nefarious purpose, had at least constructive knowledge of the Complainant’s marks because of Complainant’s registration of its marks with the USPTO. See Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D. Fla. 2001) (noting that “a Principal Register registration of a trademark or service mark is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the U.S.P.T.O., a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).
2. Even if Respondent were able to claim lack of knowledge, bad faith can exist when a search of the trademarks registry would reveal the registration rights of a Complainant. See, e.g., Kate Spade, LLC v. Darmstadter Designs, D2001-1384 (WIPO Jan. 3, 2002) (“Had Respondent done a trademark search at the time Respondent registered the domain name at issue, Respondent would have received notice of Complainant's pending application for registration. … It is fair to apply United States principles of constructive notice to this situation”).
3. Bad Faith Use. Use of the Complainant’s mark in this domain name to redirect traffic in such a manner has been found by past panelists to constitute bad faith use. See 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 P 4(b)(iv) by redirecting its users to the complainants <deluxeforms.com> domain name, thus receiving a commission from the complainant through its affiliate program); see also Cricket Commcns, 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 complainants mark after enrolling in the complainants affiliate program).
4. Furthermore, Respondent has engaged in typosquatting through its use of the disputed domain name, which is a misspelling of Complainants OFFICE DEPOT mark. Therefore, the Panel finds Respondents use of the disputed domain names constitutes bad faith registration and use pursuant to Policy P 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy P 4(a)(iii).); Natl Assn of Profl Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (Typosquatting is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 rights in the OFFICE DEPOT service mark based on its registration of the mark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 1,449,065 registered July 21, 1987) for its retail office supply services. Complainant’s registration of a mark with the USPTO is sufficient to evidence rights in the mark under Policy ¶4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Further, the Panel may note that past panels have found that a complainant need not register its mark in the country of a respondent to demonstrate rights in the mark. 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). Therefore, the Panel finds Complainant has established rights under Policy ¶4(a)(i) in the OFFICE DEPOT mark.
Complainant claims the <officedwpot.com> domain name is confusingly similar to its OFFICE DEPOT mark. The addition of a gTLD such as “.com,” as well as the deletion of the space between the words in Complainant’s mark, is irrelevant to a Policy ¶4(a)(i) confusing similarity comparison. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The disputed domain name duplicates Complainant’s entire mark, merely replacing the letter “e” with the letter “w.” A slight misspelling is not sufficient to distinguish a domain name from a complainant’s mark. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Therefore, the Panel finds the <officedwpot.com> domain name is confusingly similar to Complainant’s OFFICE DEPOT mark for the purposes of Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 argues Respondent has not been commonly known by the disputed domain name and has therefore not demonstrated rights or legitimate interests in the disputed domain name under Policy ¶4(c)(ii). The WHOIS records identify “NA Main Street - Emile Caram Building ()” as the registrant. Complainant is not affiliated with Respondent and has not authorized Respondent to use its OFFICE DEPOT mark. Nominally unsupportive WHOIS information and a lack of authorization is prima facie evidence that a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests pursuant to Policy ¶4(c)(ii).
Respondent is using the disputed domain name to redirect users to Complainant’s own web page, <officedepot.com>, and that this does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii). Redirection to Complainant’s own site fails to demonstrate a bona fide offering of goods or services. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶4(c)(i) or ¶4(c)(iii) . . .”). However, there could well be a legitimate non-commercial or fair use to simply re-direct this disputed domain name to Complainant’s web site. For example, Respondent could have a typing problem and often makes the same typographical error. Rather than build a short cut into Respondent’s browser, it bought the disputed domain name. While this might be improbable, Complainant has not made a prima facie case it isn’t true. While courts may default a respondent for failing to respond and ipso facto find liability, Panels must still make an independent assessment on the merits based upon the information provided to them.
There is a saving argument which is obvious from Complainant’s paperwork, even though Complainant does not make the argument. Respondent lists its name as NA, which this Panel takes to mean “not applicable”. That is obviously not Respondent’s real name. This means Respondent has not fulfilled its obligation to provide its correct name and contact information for the WHOIS, which is a violation of its obligations when it bought the disputed domain name. Therefore, Respondent cannot have acquired any rights to the domain name because Respondent has concealed its identity.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant’s complaint fails to adequately address this issue. For example, Policy ¶4(b)(i) provides “(i) circumstances indicating that [Respondent] have registered or [Respondent] have 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 [Respondent’s] documented out-of-pocket costs directly related to the domain name.” Complainant presents no evidence on this point.
Policy ¶4(b)(ii) provides “(ii) [Respondent] have 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 you have engaged in a pattern of such conduct.” Once again, Complainant presents no evidence on this point.
Policy ¶4(b)(iii) provides “[Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor.” Complainant submits no evidence on this point.
Policy ¶4(b)(iv) provides “by using the domain name, [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 [Respondent] web site or location or of a product or service on [Respondent] web site or location.” Once again, Complainant presents no evidence on this point. The domain name forwards to Complainant’s web site. Respondent has no web site. This sounds like a mitzvah on Respondent’s part (although such actions are admittedly as rare as a unicorn in today’s commercial market).
Complainant vociferously claims Respondent is “typosquatting”. So? Typosquatting is not a separate ground for finding bad faith registration and use. Typosquatting can only be a ground for finding bad faith registration and use IF AND ONLY IF it is used as a shorthand reference for a finding of bad faith registration and use. Complainant failed to prove any of the four items in Policy ¶4(b). In fact, Respondent is doing Complainant a favor by redirecting internet users who have made typographical errors to Complainant’s web site. Complainant asserts Respondent is acting nefariously in doing so. Without some facts to support this conclusion, the Panel must conclude it is absurd on its face. No one is claiming Respondent is diverting traffic from Complainant. To the contrary, it is sending Complainant the traffic. Complainant would get no more traffic if it owned the domain name. Complainant cannot object to its own web site being associated with its own trademark. Where is the confusion? Is Respondent making any money from its actions? Complainant has not said so. Complainant suggests Respondent is redirecting traffic to its web site without Complainant’s permission. So? No permission is necessary. Complainant has not suggested Respondent is involved in some sort of a denial of service attack. Respondent has done Complainant a favor and Complainant objects. No has said Complainant needed to be grateful. Might Respondent act improperly in the future? Certainly, but the Panel can only deal with the existing facts as presented.
However, Complainant’s papers provide a factual basis for a finding of bad faith registration and use. Respondent has not properly provided its WHOIS contract information for the disputed domain name. In the commercial context, this raises the rebuttable presumption Respondent has registered and used the domain name in bad faith. Respondent has done nothing to rebut this presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <officedwpot.com> domain name be transferred to Complainant..
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, May 2, 2013
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