Staples, Inc. and Staples the Office Superstore, LLC v. Acme Mail c/o Site Admin
Claim Number: FA1360303
Complainant is Staples, Inc. and Staples the Office Superstore, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Acme Mail c/o Site Admin (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <stples.com>, registered with Directnic, Ltd.
The undersigned certifies that he acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2010; the National Arbitration Forum received payment on November 24, 2010.
On November 24, 2010, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <stples.com> domain name is registered with Directnic, Ltd and that Respondent is the current registrant of the names. Directnic, Ltd has verified that Respondent is bound by the Directnic, 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 November 30, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 20, 2010 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@stples.com. Also on November 30, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 December 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 makes the following assertions:
1. Respondent’s <stples.com> domain name is confusingly similar to Complainant’s STAPLES mark.
2. Respondent does not have any rights or legitimate interests in the <stples.com> domain name.
3. Respondent registered and used the <stples.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Staples, Inc. and Staples the Office Superstore, LLC, originated the office superstore concept in 1986. Complainant uses its STAPLES mark in connection with its office supply retail stores and office supply goods and services. Complainants hold numerous trademark registrations for its STAPLES mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,459,182 issued September 29, 1987).
Respondent, Acme Mail c/o Site Admin, registered the <stples.com> domain name on October 27, 2010. The disputed domain name resolves to a directory website with links to third-party sites, some of which directly compete with Complainant’s office supply business.
Several UDRP decisions involving Respondent have resulted in findings of bad faith and transfers of the disputed domain names to the respective complainants. See Citigroup Inc. v. Acme Mail, FA 241987 (Nat. Arb. Forum Apr. 12, 2004); see also Univision Communications Inc. v. Acme Mail, FA 1322077 (Nat. Arb. Forum June 3, 2010).
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."
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.”).
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.
Complainant contends that it has established rights in its STAPLES mark. In Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), the panel found that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i). Here, Complainant does hold trademark registration for its STAPLES mark (e.g. Reg. No. 1,459,182 issued September 29, 1987). Therefore, the Panel concludes that Complainant has established rights in the STAPLES mark according to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <stples.com> domain name is confusingly similar to Complainant’s STAPLES mark. The disputed domain name incorporates Complainant’s mark and differs only by the deletion of the letter “a” and the addition of a generic top-level domain (“gTLD”) “.com.” The Panel finds that the deletion of a single letter and the addition of a gTLD are not adequate to properly distinguish the disputed domain name from Complainant’s mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel finds that Respondent’s <stples.com> disputed domain name is confusingly similar to Complainant’s STAPLES mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant maintains that Respondent has no rights or legitimate interests in the <stples.com> domain name. The panel established in Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), that the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” Complainant, here, has made a prima facie case in support of its allegations. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent has no rights or legitimate interests under Policy ¶4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will check the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <stples.com> domain name. The WHOIS information indicates that registrant of the disputed domain name is “Acme Mail,” which is not similar to the disputed domain name. Complainant asserts that it has not given Respondent any authorization to use or register the disputed domain name. The Panel finds no additional evidence that would support a conclusion that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also 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).
Respondent uses the disputed domain name to direct Internet users to a directory website which lists third-party links, some of which compete with Complainant’s office supply business. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the confusingly similar disputed domain name to operate a website which links Internet users to the website of Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Respondent’s <stples.com> domain name includes only Complainant’s mark while deleting one letter to make a typographical error. Complainant alleges that the typographical error in the disputed domain name takes advantage of Internet users who make common typing mistakes by redirecting them the Respondent’s website. The Panel finds that Respondent has engaged in typosquatting which indicates that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
Complainant alleges that Respondent has engaged in a pattern of bad faith use and registration. Several UDRP decisions involving Respondent have resulted in findings of bad faith and transfers of the disputed domain names to the respective complainants. See Citigroup Inc. v. Acme Mail, FA 241987 (Nat. Arb. Forum Apr. 12, 2004); see also Univision Communications Inc. v. Acme Mail, FA 1322077 (Nat. Arb. Forum June 3, 2010). The Panel finds that prior decisions against the Respondent resulting in transfer of the disputed domain name are evidence of a pattern of bad faith registration under Policy ¶ 4(b)(ii). 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); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant argues that Respondent’s use of the <stples.com> domain name disrupts its business. Respondent uses the disputed domain name to operate a directory website which links Internet users to third-party sites, some of which directly compete with Complainant’s office supply business. Internet users intending to purchase Complainant’s goods and services may instead purchase similar goods and services from a competitor as a result of Respondent’s use of the disputed domain name. The Panel finds that Respondent’s <stples.com> domain name does disrupt Complainant’s business under policy ¶ 4(b)(iii), which is evidence of bad faith use and registration. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
The Panel infers that Respondent likely receives click-through fees from the aforementioned links. The disputed domain name resolves to a website featuring links to third-party sites, some of which compete with Complainant’s office supply business. Internet users searching for Complainant’s website may instead find Respondent’s website as a result of Respondent’s use of a confusingly similar disputed domain name. Internet users may become confused as to Complainant’s affiliation with the disputed domain name, resolving website, and products sold by the third-party links. Respondent profits from this confusion by receiving click-through fees. The Panel finds that Respondent’s use of the confusingly similar disputed domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“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).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Respondent’s disputed domain name includes Complainant’s mark while only deleting one letter to make a typographical error. Complainant alleges that the typographical error in the disputed domain name capitalizes on Internet users who make common typing mistakes by redirecting them the Respondent’s website. The Panel finds that Respondent’s use of a typosquatted domain name is further evidence of bad faith use and registration under policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
The Panel finds that the elements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <stples.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 30, 2010
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