Staples, Inc. and Staples The Office Superstores, LLC v. Abadaba S.A.
Claim Number: FA1308001516838
Complainant is Staples, Inc. and Staples The Office Superstores, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Abadaba S.A. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stapless.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 27, 2013; the National Arbitration Forum received payment on August 27, 2013.
On August 28, 2013, Fabulous.Com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <stapless.com> domain name is registered with Fabulous.Com Pty Ltd and that Respondent is the current registrant of the name. 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 September 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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@stapless.com. Also on September 13, 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 October 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Staples, Inc. and Staples the Office Superstores, LLC. Complainant contends that Staples, Inc. and its subsidiaries or licensees have provided retail services for office supplies and equipment under the STAPLES mark since 1985.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Inks., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
As the Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it will treat them all as a single entity in this proceeding. Accordingly, the Complainants will be collectively referred to as “Complainant” in this decision.
Complainant made the following contentions
i. Complainant owns the STAPLES mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,438,390, registered April 28, 1987).
ii. Complainant uses the STAPLES mark in connection with office supplies, equipment, and furniture, as well as related services.
iii. Complainant is the world’s largest office products company. Complainant operates in 26 countries throughout North and South America, Europe, Asia and Australia.
iv. Complainant has spent millions of dollars in the advertising and promotion of its mark and has generated substantial goodwill in the mark as a result, such that the STAPLES mark has become famous world-wide.
i. Policy ¶ 4(a)(i)
1. The <stapless.com> domain name is confusingly similar to the STAPLES mark as the domain name merely includes the generic top-level domain (“gTLD”) “.com” and differs from the mark by the addition of one character.
ii. Policy ¶ 4(a)(ii)
1. Respondent has not been commonly known by the disputed domain name. Further, Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
2. Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent uses the disputed domain name in connection with a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from the linked websites.
iii. Policy ¶ 4(a)(iii)
1. Respondent is a recalcitrant, serial typosquatter as evidenced by prior adverse UDRP decisions against Respondent. See Complainant’s Ex. N. Further, Respondent holds registrations to other domain names that appear to be straightforward examples of typosquatting, but are not directly involved in the instant Complaint. See Complainant’s Ex. O.
2. Respondent’s bad faith is demonstrated by Respondent’s use of the domain name in connection with a website that advertises links to websites that promote products that compete with Complainant. The resulting disruption of Complainant’s business constitutes bad faith. See Complainant’s Ex. H.
3. Respondent’s bad faith is demonstrated by Respondent’s use of the domain name in connection with generating revenue as a click through website. Respondent is misleading users and taking advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercially gain. See Complainant’s Ex. H.
4. Respondent had actual knowledge of Respondent’s rights in the STAPLES mark. Such knowledge is further evidence of Respondent’s bad faith. See Complainant’s Ex. H.
5. Respondent’s typosquatting behavior is evidence of bad faith in and of itself.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company whose well known business is the provision of office supplies, equipment, furniture and related services.
2. Complainant owns the STAPLES mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,438,390, registered April 28, 1987).
3. Respondent registered the <stapless.com> domain name on October 25, 2003. Respondent uses the disputed domain name in connection with a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
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.”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s STAPLES mark. Complainant argues that the <stapless.com> domain name is confusingly similar to the STAPLES mark as the domain name merely includes the gTLD “.com” and differs from the mark by the addition of one character. The Panel notes that specifically, the disputed domain name adds another letter “s” to the end of the STAPLES mark. Previous panels have determined that such alterations are insufficient to differentiate the resulting domain name from the incorporated mark pursuant to Policy ¶ 4(a)(i). For example, in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel concluded that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis. Further, in T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007), the panel determined that the addition of the letter “s” to a registered trademark in a contested domain name was not enough to avoid a finding of confusing similarity under Policy ¶ 4(a)(i)). Past decisions demonstrate that the additions of the letter “s” and “.com” do not negate confusing similarity. As such, the Panel finds that the <stapless.com> domain name is confusingly similar to the STAPLES mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s STAPLES mark and to use it in its domain name, merely adding the letter “s” to the trademark;
(b) Respondent uses the disputed domain name in connection with a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business;
(c) Respondent has engaged in these activities without the consent or
approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the <stapless.com> domain name. In so arguing, Complainant contends that Respondent has not been commonly known by the disputed domain name as demonstrated by the WHOIS information. The Panel notes that the WHOIS information indicates that “Abadaba S.A.” is the registrant of the disputed domain name. Further, Complainant contends that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. The Panel notes that Respondent failed to submit a Response in the proceeding, and therefore, has not refuted Complainant’s contentions. As such, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record);
(e) Additionally, Complainant argues that Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant urges that Respondent is using the <stapless.com> domain name in connection with a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant also presumes that Respondent receives pay-per-click fees from the linked websites. The Panel notes that Complainant includes screenshots of the websites reachable through the disputed domain name in Exhibit H. The resolving page includes links to Complainant’s <staples.com> website, as well as <clickinks.com>, which offers ink cartridges and other office supplies in competition with Complainant. Previous panels have found that resolving websites that promote links to the complainant and its competitors does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel may find that this use of the disputed domain name does not constitute 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 Panel finds that Respondent is not using the <stapless.com> domain name to provide 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) by causing the disputed domain name to resolve to a webpage promoting Complainant’s own website, as well as websites belonging to competitors.
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain
name was registered and used in bad faith. That is so for the following
reasons.
First, Complainant argues that Respondent is a recalcitrant, serial typosquatter as evidenced by prior adverse UDRP decisions against Respondent. Complainant argues that Respondent’s pattern of bad faith registration and use is evidence of Respondent’s current bad faith. In Exhibit N, Complainant cites previous UDRP decisions adverse to Respondent. See Target Brands, Inc. v. Abadaba S.A., FA 1505082 (Nat. Arb. Forum July 30, 2013); see also NIC Indus., Inc. v. Abadaba S.A., FA 1448503 (Nat. Arb. Forum July 17, 2012; see also Finish Line, Inc. v. Abadaba S.A., FA 1442808 (Nat. Arb. Forum June 21, 2012. Further, Complainant argues that Respondent’s bad faith is shown by Respondent’s holdings of registrations on other domain names that appear to be straightforward examples of typosquatting, but are not presently in dispute. In Exhibit O, Complainant cites Respondent’s registration of <homedeput.com>, <eqlifax.com>, and <sdate.net> as further evidence of Respondent’s pattern of bad faith registration. The Panel notes that previous panels have generally not found bad faith where a respondent holds domain names that appear to be examples of typosquatting upon the marks of unrelated third-parties, and are not directly at issue. However, previous panels have found evidence of bad faith where a respondent has a history of bad faith as demonstrated by past UDRP decisions. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). The Panel finds evidence of bad faith registration under Policy ¶ 4(b)(ii), based on Complainant’s submitted evidence showing numerous adverse UDRP decisions against Respondent.
Secondly, Complainant argues that Respondent’s bad faith is demonstrated by Respondent’s use of the <stapless.com> domain name in connection with a website that advertises links to websites that promote products that compete with Complainant. Complainant asserts that the resulting disruption of Complainant’s business constitutes bad faith. The Panel again notes that Complainant’s Exhibit H includes a screen shot of the reachable pages, which includes links to Complainant’s <staples.com>, as well as <clickinks.com>, which offers ink cartridges and other office supplies in competition with Complainant. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arc. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds evidence of bad faith registration and use of the <stapless.com> domain name under Policy ¶ 4(b)(iii) because Complainant has provided the Panel with evidence showing Respondent provides links to Complainant’s competitors.
Thirdly, Complainant argues that Respondent’s bad faith is further demonstrated by Respondent’s use of the domain name in connection with generating revenue as a click-through website. See Complainant’s Exhibit H. Complainant contends that Respondent is misleading users and taking advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercially gain. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel wrote, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” The present case is comparable, and the Panel thus finds evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv) because the domain name’s resolving page provides links to Complainant’s competitors offering products that users will likely associate with Complainant, and Respondent likely generates click-through fees from the linked websites.
Fourthly, Complainant argues that Respondent’s typosquatting behavior is evidence of bad faith in and of itself. Past panels have consistently held that typosquatting is a practice that takes advantage of common and basic typographical errors, and is thus motivated by bad faith. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). The Panel finds evidence of bad faith under Policy ¶ 4(a)(iii) as Respondent appears to have registered the domain name to divert Internet users who misspell Complainant’s mark by adding an extra “s” at the end of the STAPLES mark.
Fifthly, Complainant asserts that Respondent had actual knowledge of Respondent’s rights in the STAPLES mark. Complainant argues that such knowledge is further evidence of Respondent’s bad faith. In so arguing, Complainant again relies on its Exhibit H, which shows that the resolving page displays Complainant’s STAPLES mark correctly spelled. The Panel determines that Respondent had actual knowledge of Complainant’s rights in the mark given Respondent’s incorporation of a common misspelling in the domain name and the inclusion of the mark properly spelled on the resolving page. As such, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Sixthly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the STAPLES mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stapless.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: October 14, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page