Xerox Corporation v. Premier Printer Services, Inc.
Claim Number: FA1305001499686
Complainant is Xerox Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Premier Printer Services, Inc. (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <xerox-hp-lexmark-printerrepair-florida.com>, <xerox6360.com>, <xerox8560.com>, <xeroxfuser.com>, <xeroxphaser6280.com>, <xeroxphaser7400.com>, <xeroxphaser7700.com>, <xeroxphaser7750.com>, and <xeroxphaser7760.com>, registered with WILD WEST DOMAINS, LLC.
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 May 14, 2013; the National Arbitration Forum received payment on May 17, 2013.
On May 14, 2013, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <xerox-hp-lexmark-printerrepair-florida.com>, <xerox6360.com>, <xerox8560.com>, <xeroxfuser.com>, <xeroxphaser6280.com>, <xeroxphaser7400.com>, <xeroxphaser7700.com>, <xeroxphaser7750.com>, and <xeroxphaser7760.com> domain names are registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the names. WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, LLC 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 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@xerox-hp-lexmark-printerrepair-florida.com, postmaster@xerox6360.com, postmaster@xerox8560.com, postmaster@xeroxfuser.com, postmaster@xeroxphaser6280.com, postmaster@xeroxphaser7400.com, postmaster@xeroxphaser7700.com, postmaster@xeroxphaser7750.com, postmaster@xeroxphaser7760.com. Also on May 20, 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 June 18, 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant owns the XEROX and PHASER trademarks (the “Marks”) and makes extensive use of them such that they have become famous throughout the world.
Complainant Owns The Marks Complainant is a global leader in the document management field, offering a wide array of products including copiers, printers, fax machines, scanners, desktop software, digital printing and publishing systems, and related supplies. Complainant also offers a variety of comprehensive services relating to its document-management business.
The Marks Are Extensively Used, Promoted and Protected. Complainant has continually used the Marks in commerce since 1948. Complainant was the world’s first commercial producer of copiers based on work by American inventor Chester Carlson. Since that time it has grown and expanded its offerings into other areas of paper and digital document management and now has worldwide revenues of US$17.6 Billion, employs 130,000 people and provides goods and services under the XEROX trademark in 160 countries. Its stock is publicly traded on the New York Stock Exchange under ticker symbol XRX and it was ranked at number 131 on the 2013 Fortune 500 list of companies. It was also named as No. 1 in Fortune Magazine’s 2008-09 World’s Most Admired Companies. Complainant extensively promotes its XEROX Marks through print, radio, television and Internet advertising as well as sponsorship of sporting events and appearances at trade shows around the world.
Complainant generates significant sales revenue as a result of the advertising and marketing it conducts on its various websites including <xerox.com>, <xerox.ca>, <xerox.com.cn>, and many others. Through these various websites, Complainant provides information to prospective customers in many different languages. As a result, the Marks serve to identify and indicate the source of Complainant’s goods and services to the consuming public, and to distinguish its goods and services from those of others. As a result of Complainant’s long usage and promotion of the Marks, they have become famous and are widely recognized by consumers.
Complainant’s XEROX and PHASER marks are aggressively protected through registration and enforcement. Amongst others, Complainant owns United States Trademark Registrations for the Marks as follows:
XEROX IC 016. US 038. G & S: Copies of typewritten or printed matter, drawings, maps, or any other records, sold as such, made by an electrophotographic process. FIRST USE: 19480903. FIRST USE IN COMMERCE: 19480903 0525717 (US) May 30, 1950
XEROX (Logo) IC 001. US 006. G & S: Developers consisting of a mixture of electroscopic powder and granular material used for producing powder images in making electrophotographic copies, and toners comprising electroscopic powder used in connection with granular material to produce developer powders used for making electrophotographic copies. FIRST USE: 19490622. FIRST USE IN COMMERCE: 19490622 0576118 (US) June 6, 1953
XEROX IC 003. US 052. G & S: Film removers comprising liquid solvents capable of dissolving or emulsifying the films of foreign material which accumulate on electrophotographic plates during use. FIRST USE: 19490622. FIRST USE IN COMMERCE: 19490622 0580296 (US) September 22, 1953
XEROX IC 009. US 026. G & S: Digital computers and associated peripheral devices. FIRST USE: 19710907. FIRST USE IN COMMERCE: 19710907 0957267 (US) April 17, 1973
XEROX IC 009. US 026. G & S: Electrophotographic copying machines [ ; and equipment for recording x-ray images-namely, processors for electrostatically charging xeroradiographic plates and conditioners for producing positive or negative prints ]. FIRST USE: 19490622. FIRST USE IN COMMERCE: 19490622 1000990 (US) January 7, 1975
XEROX IC 016. US 002 005 022 023 029 037 038 050. G & S: photocopy and bond paper. FIRST USE: 19490622. FIRST USE IN COMMERCE: 19490622 1661698 (US) October 22, 1991
PHASER IC 002. US 006 011 016. G & S: toner, dry ink, printers ink, solid ink, namely for use in printers. FIRST USE: 19881107. FIRST USE IN COMMERCE: 19881107 2935148 (US) March 22, 2005
Respondent’s registration of the Disputed Domains violates the Policy.
The Disputed Domains are identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s Disputed Domains are confusingly similar, on their face, to Complainant’s registered XEROX, and in some cases PHASER trademarks. Since the word XEROX is an arbitrary, coined term and has no generic meaning in any language known to Complainant, and since the term PHASER is distinctive as applied to toner and ink used for printers, searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the Disputed Domains.
It has been held, in decisions too numerous to mention, that the mere addition of generic or other short words or letters to a trademark creates a confusingly similar domain name. For example, in DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that the <dishdirectv.com> domain name contains Complainant’s mark in its entirety and only adds the generic word ‘dish.’ Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).” The Panel held that the domain is “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., WIPO Case No. D2001-0075 the Panel found that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense.
Similarly to the above-cited decisions, the Respondent in the present dispute merely adds terms such as “printerrepair”, “fuser” and the brands of competing companies after Complainant’s XEROX trademark and, in some cases, adds the PHASER trademark. In addition, the Respondent has inserted numbers such as “6280” and “7400” that are model numbers for Xerox products and well-known to Xerox customers around the world. The use of terms such as these only enhances consumer confusion since Complainant sells and services document printers.
Further, Respondent has created initial interest confusion. As reasoned in Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923, even if searchers eventually discover they are not at Complainant’s site, they may be led to believe that Complainant endorsed, sponsored or affiliated themselves with the good and services offered at the websites to which the Disputed Domains resolve. Similar to the facts in Athanasios, Respondent prominently uses the Marks in its site’s domain names as well as in the title and body of the Disputed Domains websites. It only makes sense that if searchers see the Marks listed in the body of a domain name such as <xeroxfuser.com>, web page searchers will be confused and led to believe that, even if the goods and services of Respondent are not those of Complainant, they are at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the Disputed Domains Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the Disputed Domains. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Respondent is not affiliated with, or authorized by Complainant to use the XEROX or PHASER names and its website gives the false impression that it is so affiliated. Even assuming, arguendo, that Respondent’s business does actually use, sell, or service some XEROX brand products, the appearance of products from other competing copier and printer brands on websites such as <xeroxfuser.com> (e.g., HP, Lexmark) is a clear infringement upon the world-famous trademark rights of Complainant. See, 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 24:70 (4th ed.) As such, Respondent’s use is neither bona fide nor legitimate under both the UDRP or the trademark laws of the USA. In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the Panelist set out a test for whether use of a mark by a respondent claiming to sell or service products of the mark owner. This test requires that “the respondent must use the website to sell only the trademarked goods of the complainant”, that “the website of the respondent must accurately disclose the registrant’s relationship with the trademark owner”, and that “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.” Id. In the present case, the Respondent fails at least the first and second parts of the Oki Data test since it offers products and services on its websites which compete with Complainant and, although its sites show the notice “HP Authorized Printer, Plotter & Multifunction Machine Service” this has no bearing on Complainant and does not, in any way, disclose Respondent’s relationship (or lack thereof) with Complainant.
Furthermore, a respondent has no rights or legitimate interest in a domain where the respondent made no efforts to avoid registering and using a domain name that is identical or confusingly similar to marks held by others and where the domain is identical or confusingly similar to a famous or distinctive trademark. Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964. Even if the XEROX trademark did not appear on Respondent’s website to indicate its awareness of the brand, had Respondent done even the most cursory search on Google, Yahoo, Bing or any similar search engine, or had it done a search of the US or other countries’ trademark registries, it would have quickly learned that Complainant’s XEROX trademark is world famous, is covered by many registrations, and is not available for use by Respondent.
Respondent is not commonly known by the Disputed Domains and so its actions do not fall within Policy ¶4(c)(ii). Upon information and belief, due to its infringing use of the trademark, Respondent is not legally commonly known by the names “XEROX” or “PHASER” nor does Respondent legitimately operate a business or other organization under these marks or names and does not own any trademark or service mark rights in the XEROX or PHASER names. The mere existence of the Disputed Domains websites do not, themselves, demonstrate otherwise. See, Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847 (October 16, 2000). Also see, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name.
Respondent is not making a legitimate noncommercial or fair use of the Disputed Domains without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain names to confuse and misleadingly divert consumers, or to tarnish the Marks. Even if Respondent does, in fact, use and service some XEROX or PHASER branded products, its use of the Marks to promote the general printing service business carried out at its <PremierPrinterServices.com> website or its promotion of service capabilities for competing brands is clearly infringing and neither legitimate nor fair. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id. See also, Amazon.com, Inc. v. Dynamic Ventures c/o Yitzchak (Itzak) Ehrlich, NAF Claim No. FA0711001112201 (2008) (“Moreover, while Respondent might be asserting a nominative fair use argument based on its need to inform users that it is developing software for Amazon.com, it is clear from Respondent’s website that it is providing general software development, and does not limit its business to developing software solely in connection with Complainant.”).
Further, in Focus Do It All Group v. Athanasios Sermbizis, infra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s XEROX or PHASER goods and services, who used any of the Disputed Domains would be confused and think they were visiting a site of the Complainant’s, or an authorized company, until they discovered that they were in a site of an unrelated company. Such use cannot be considered fair. See, Société pour l’œuvre et la mémoire d’Antoine de Saint Exupéry-Succession Saint Exupéry - D’Agay v. The Holding Company, WIPO Case No. D2005-0165 (Confusingly similar name and the commercial activity on respondent’s websites would lead to visitors being diverted away from complainant’s legitimate website even after such visitors realized they were not on the legitimate site), and Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052 (Respondent’s use of optiononelending.com was not bona fide nor legitimate where such domain was nearly identical to Complainant’s trademark).
Lastly, Respondent’s use has tarnished and diluted the Marks. Respondent has diminished consumers’ capacity to associate the Marks with the quality products and services offered under the Marks by Complainant by using the Marks in association with sites which provide services that are not exclusively associated with or related to Complainant’s quality branded products. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services over which Complainant has no quality control. Complainant is proud of its exclusive network of service providers and takes a particularly dim view of entities attempting to claim membership in this network.
(c) Respondent Registered The Disputed Domains In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Given the international fame of Complainant’s coined XEROX Marks and the appearance of such Marks on Respondent’s website, it is inconceivable that Respondent was not aware of their existence. Nearly every business office has, at some time or another, owned or used a XEROX branded photocopier, printer or scanner. This, combined with the fact that the Disputed Domains’ websites display names and logos of Complainant’s competitors and the site to which the Disputed Domains forward is focused on the printing service business, clearly proves that Respondent intentionally registered and used the Disputed Domains with full knowledge and in bad faith. Panelists have not hesitated to find bad faith under similar fact patterns where a respondent used a famous trademark to promote its business in which it used, sold or serviced trademarked products as well as those of competitors, See, e.g., Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, supra and Amazon.com, Inc. v. Dynamic Ventures c/o Yitzchak (Itzak) Ehrlich, supra.
Further, in numerous UDRP decisions the international fame of a trademark has been held, alone, sufficient to find bad faith. In DHL Operations B.V. and DHL International GmbH v. Eric White, WIPO Case No. D2010-0016 the Panel found that “[i]t has been established in certain circumstances that when a domain name incorporates a famous mark comprised of a coined or fanciful term, no other action, aside from registering the domain name, is required for demonstrating bad faith.” See also, Alberto-Culver International, Inc. v. Goodsteed Limited / Domains by Proxy, Inc., WIPO Case No. D2009-1643 (Panel agreed with Complainant’s position that “[w]hen a trademark is famous, there is a prima facie inference of bad faith”), citing, Microsoft Corporation v. Charlie Brown, WIPO Case No. D2001-0362.
Here, Respondent was put on both actual as well as constructive notice of Complainant’s rights in the XEROX Marks through Complainant’s extensive use of the Marks and by its US Trademark Registrations, all of which long predate the creation date of the Disputed Domains. See, American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950 (“the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights….”).
Even after Complainant sent demand letters and follow-up letters to Respondent on April 24, 2013 and May 1, 2013 Respondent remained silent and continues to operate its numerous, infringing domain names. All of this evidence clearly demonstrates Respondent’s bad faith registration and use of the Disputed Domains and its intent to profit from the XEROX Marks.
As shown, through its current websites, which feature products of both Complainant and its competitors, Respondent is seeking to obtain commercial gain from its use of the Disputed Domains. When a searcher enters one of the Disputed Domains, it is presented with a sales page for Respondent’s business under the name “Premierprinterservices.com”. In AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, the Panel found that a respondent who intentionally attempts to attract Internet searchers to its infringing website for commercial gain acts in bad faith.
Finally, as more fully set forth above, by infringing upon Complainant’s internationally famous XEROX and PHASER trademarks, Respondent intentionally uses the Marks in its domain names to attract Internet searchers by creating a likelihood of confusion with Complainant’s XEROX and PHASER Marks. See, e.g., DIRECTV, Inc v. Digi Real Estate Foundation. Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the Disputed Domains in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent submitted an email which read:
The domains in question are complete domain names with no trademark words spelled "Xerox" by itself, there is only one domain name that has the word Xerox included in the name as a standalone but notice a hyphen is included does this infringe on there [sic] trademark Xerox-hp-lexmark-printerrepair-florida.com ?
(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 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 it owns the XEROX and PHASER marks and is a global leader in document management under these marks. Complainant demonstrates its rights in XEROX and PHASER through United States Patent & Trademark Office (“USPTO”) trademark registrations. See XEROX (Reg. No. 525,717 registered May 30, 1950); PHASER (Reg. No. 2,935,148 registered Mar. 22, 2005). This is adequate proof of Complainant’s rights under Policy ¶4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶4(a)(i)).
Respondent registered the <xerox-hp-lexmark-printerrepair-florida.com>, <xerox6360.com>, <xerox8560.com>, <xeroxfuser.com>, <xeroxphaser6280.com>, <xeroxphaser7400.com>, <xeroxphaser7700.com>, <xeroxphaser7750.com>, and <xeroxphaser7760.com> domain names. Complainant argues Respondent has simply taken either the XEROX or PHASER marks and made random additions. The addition of hyphens in the <xerox-hp-lexmark-printerrepair-florida.com> domain name must be disregarded in a Policy ¶4(b)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Complainant claims generic terms such as “printerrepair,” “fuser,” and the brands of competing companies do nothing but enhance confusing similarity. The Panel does not accept this argument under the facts of this case. The domain name <xerox-hp-lexmark-printerrepair-florida.com> is not confusingly similar to Complainant’s marks.
In the remainder of the domain names, Respondent added what appear to be random numbers. These numbers are actually designations of particular models of Complainant’s products. The addition of the various model numbers does nothing more than enhance the confusing similarity of each of the <xerox6360.com>, <xerox8560.com>, <xeroxphaser6280.com>, <xeroxphaser7400.com>, <xeroxphaser7700.com>, <xeroxphaser7750.com>, and <xeroxphaser7760.com> domain names. See Xerox Corp. v. CopiersCopiers.com / CopiersCopiers, FA 14819159 (Nat. Arb. Forum Apr. 19, 2013) (finding that the addition of model numbers “such as ‘510,’ ‘6204,’ and ‘8850’” is insufficient to distinguish a domain name from a mark). The addition of the generic top-level domain (“gTLD”) “.com” to each of these domain names must be disregarded for the purposes of a Policy ¶4(b)(i) analysis. The Panel finds the <xerox6360.com>, <xerox8560.com>, <xeroxphaser6280.com>, <xeroxphaser7400.com>, <xeroxphaser7700.com>, <xeroxphaser7750.com>, and <xeroxphaser7760.com> disputed domain names bear confusing similarity to the XEROX or PHASER marks under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) partially 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 claims Respondent is not commonly known by these domain names. There is no evidence to suggest the XEROX or PHASER marks are in anyway related to Respondent’s name. The WHOIS information for all of the domain names lists “Premier Printer Services, Inc.” as the registrant. Based on this record, there is no evidence Respondent has ever been known by any of these disputed domain names as per 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 Respondent has not provided any bona fide offering of goods or services under any of these domain names. All of the domain names but the <xerox-hp-lexmark-printerrepair-florida.com> domain name merely forward Internet users immediately to Respondent’s <premierprinterservices.com> website where Respondent promotes its own products. The record shows the <xerox6360.com>, <xerox8560.com>, <xeroxfuser.com>, <xeroxphaser6280.com>, <xeroxphaser7400.com>, <xeroxphaser7700.com>, <xeroxphaser7750.com>, and <xeroxphaser7760.com> domain names all resolve to Respondent’s website where Respondent purports to offer “Xerox printer repair” as well as repair services for various other competing printers.
Respondent cannot make a bona fide offering of goods or services through the <xerox6360.com>, <xerox8560.com>, <xeroxfuser.com>, <xeroxphaser6280.com>, <xeroxphaser7400.com>, <xeroxphaser7700.com>, <xeroxphaser7750.com>, and <xeroxphaser7760.com> domain names by merely pointing them to Respondent’s own independent business at the <premierprinterservices.com> domain name’s website; and such a commercial venture is beyond the scope of a Policy ¶4(c)(iii) legitimate noncommercial or fair use. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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 <xerox-hp-lexmark-printerrepair-florida.com> domain name was registered on June 25, 2004 and offers similar kinds of services, but exclusively to the various cities in Florida. This seems to be Respondent’s business, which actually repairs Xerox, HP, and Lexmark printers. The actual use of this domain name is a legitimate noncommercial or fair use under Policy ¶4(c)(iii) of Complainant’s mark (inter alia). In addition, Respondent has been using this disputed domain name for roughly nine years. The record does not show any objection by Complainant until Respondent started using the other domain names. In the intervening time, Respondent has clearly acquired rights and Complainant is guilty of laches.
The Panel finds Policy ¶4(a)(ii) partially satisfied.
Complainant claims Internet users will enter these domain names and believe Respondent must be authorized or licensed to sell or repair Complainant’s goods. Respondent has no affiliation with or official authorization from Complainant.
Once again, we need to break this down by disputed domain name. Complainant contends the Internet user is taken directly from <xerox6360.com>, <xerox8560.com>, <xeroxfuser.com>, <xeroxphaser6280.com>, <xeroxphaser7400.com>, <xeroxphaser7700.com>, <xeroxphaser7750.com>, and <xeroxphaser7760.com> to Respondent’s own domain name and website. Respondent shows the credit cards it accepts, demonstrating Respondent profits commercially from its use of these domain names. This constitutes a Policy ¶4(b)(iv) attempt to confuse Internet users into believing they have arrived at websites that are somehow controlled, associated with, or endorsed by Complainant. See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Accordingly, the Panel finds Respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶4(b)(iv).
Respondent clearly knows about Complainant’s marks because it repairs these types of printers. The facts of this dispute make it clear Respondent had actual knowledge of Complainant’s rights at the time of registration, and thus registered and used the <xerox6360.com>, <xerox8560.com>, <xeroxfuser.com>, <xeroxphaser6280.com>, <xeroxphaser7400.com>, <xeroxphaser7700.com>, <xeroxphaser7750.com>, and <xeroxphaser7760.com> domain names in bad faith under Policy ¶4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
The <xerox-hp-lexmark-printerrepair-florida.com> does not appear to have been registered and used in bad faith. Respondent does not claim to be an authorized service center for Xerox, although it does claim to be an authorized service center for HP. Respondent claims to do preventative maintenance and repair on Xerox printers, which it actually does.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy for the <xerox6360.com>, <xerox8560.com>, <xeroxfuser.com>, <xeroxphaser6280.com>, <xeroxphaser7400.com>, <xeroxphaser7700.com>, <xeroxphaser7750.com>, and <xeroxphaser7760.com> domain names, the Panel concludes relief shall be GRANTED. The balance of the relief requested in the Complaint shall be denied.
Accordingly, it is Ordered the <xerox6360.com>, <xerox8560.com>, <xeroxfuser.com>, <xeroxphaser6280.com>, <xeroxphaser7400.com>, <xeroxphaser7700.com>, <xeroxphaser7750.com>, and <xeroxphaser7760.com> domain names be TRANSFERRED from Respondent to Complainant.
Accordingly, it is Ordered the <xerox-hp-lexmark-printerrepair-florida.com>, REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, July 5, 2013
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