Staples, Inc. and Staples the Office Superstores, LLC v. Domain Administrator / Eighty Business Names
Claim Number: FA1404001556945
Complainant is Staples, Inc. and Staples the Office Superstores, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Administrator / Eighty Business Names (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <etaples.com>, registered with Rebel.com.
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 April 30, 2014; the National Arbitration Forum received payment on April 30, 2014.
On May 1, 2014, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <etaples.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2014 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@etaples.com. Also on May 1, 2014, 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 May 22, 2014, 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. It is apparent from the evidence that Complainant Staples, Inc. and its subsidiaries or licensees have provided retail services for office supplies and equipment under the STAPLES mark since 1985 and that there is a nexus between both Complainant.
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.
A. Complainant
Complainant made the following contentions.
1. Policy ¶ 4(a)(i)
i. Complainant, Staples, Inc. and Staples the Office Superstores, LLC, is the world’s largest office products company and second largest Internet retailer.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the STAPLES mark (e.g., Reg. No. 1,438,390, registered April 28, 1987).
iii. The disputed domain name is confusingly similar to Complainant’s mark because it differs by only a single character.
2. Policy ¶ 4(a)(ii)
i. Respondent has no rights or legitimate interests in the disputed domain name.
ii. Respondent has not been commonly known by the disputed domain name.
iii. Respondent is using the disputed domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
3. Policy ¶ 4(a)(iii)
i. The disputed domain name should be considered as having been registered and being used in bad faith.
ii. Respondent is a recalcitrant, serial cybersquatter.
iii. Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant.
iv. Respondent is using the disputed domain name to attract and mislead consumers for its own profit.
v. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
4. Respondent registered the <etaples.com> domain name on July 28, 2004.
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 <etaples.com> domain name on July 28, 2004.
4. Respondent is using the disputed domain name to redirect unsuspecting Internet users to 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it can rely. Complainant alleges that it is the world’s largest office products company and second largest Internet retailer. Complainant contends that it is the owner of trademark registrations with the USPTO for the STAPLES mark (e.g., Reg. No. 1,438,390, registered April 28, 1987). See Complainant’s Exhibit E. The Panel notes that although Respondent resides in the Cayman Islands, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country of Respondent’s residence. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel concludes that Complainant’s USPTO registration of the STAPLES mark evidences its rights in the mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s STAPLES mark. Complainant argues that Respondent’s <etaples.com> domain name is confusingly similar to Complainant’s mark because it differs by only a single character. The Panel notes that Respondent replaces the letter “s” in Complainant’s STAPLES mark with the letter “e” when creating the domain name. The Panel determines that Respondent’s substitution of one letter for another does not distinguish the domain name from the mark under Policy ¶ 4(a)(i). 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”). The Panel observes that Respondent adds the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. The Panel holds that Respondent’s inclusion of a gTLD to a mark does not prevent a panel from finding confusing similarity under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Consequently, the Panel determines that Respondent’s <etaples.com> domain name is confusingly similar to Complainant’s STAPLES mark under 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 replacing the letter “s” in the trademark with the letter “e” in the domain name;
(b) Respondent is using the disputed domain name to redirect unsuspecting Internet users to 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 asserts that Respondent has not been commonly known by the <etaples.com> domain name. Complainant claims that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant argues that it has not given Respondent permission to use its mark in any way. The Panel observes that the WHOIS information reveals that the registrant is “Domain Administrator / Eighty Business Names.” See Complainant’s Exhibit I. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that 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. Therefore the Panel concludes that Respondent is not commonly known by the <etaples.com> domain name under Policy ¶ 4(c)(ii);
(e) Complainant argues that Respondent is using the <etaples.com> domain name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business in the office supply industry. The Panel notes that Respondent’s disputed domain name diverts consumers to a webpage containing competing advertisements titled “OFFICE DEPOT ONLINE,” “OFFICE SUPPLIES – QUILL,” “Office Supplies Products,” and more. See Complainant’s Exhibit H. Past UDRP panels have concluded that a respondent’s use of a confusingly similar domain name to offer competing links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Therefore, the Panel determines that Respondent is not using the <etaples.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
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 cybersquatter. Complainant asserts that searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. See Complainant’s Exhibit N, which includes prior UDRP decisions adverse to Respondent: Univision Communications Inc. v. Eighty Business Names / Domain Administrator, FA 1414256 (Nat. Arb. Forum Dec. 8, 2011); Pittsburgh Associates v. Eighty Business Names / Domain Administrator, FA 1389242 (Nat. Arb. Forum June 22, 2011); General Motors LLC v. Eighty Business Names, D2013-0438 (WIPO May 15, 2013). In Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007), the panel held that prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations. Therefore, the Panel finds that Respondent has registered and is using the <etaples.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).
Secondly, Complainant contends that Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant, which disrupts Complainant’s operations. Complainant argues that this disruption demonstrates Respondent’s bad faith. The Panel notes that Respondent is using the <etaples.com> domain name to operate a hyperlink directory which features links that directly compete with Complainant’s business. These links include “OFFICE DEPOT ONLINE,” “OFFICE SUPPLIES – QUILL,” and “Office Supplies Products.” See Complainant’s Exhibit H. As the Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business, the Panel finds that Respondent has registered and is using the <etaples.com> domain name in bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. 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).”).
Thirdly, Complainant asserts that Respondent is using the <etaples.com> domain name to attract and mislead consumers for its own profit. Complainant argues that Respondent is using the disputed domain name to operate a click-through website with competing links such as “Office Supplies Products,” “Office Paper,” “Office Furniture Supply,” and more. See Complainant’s Exhibit H. Complainant claims that Respondent receives referral fees from its use of the disputed domain name. Prior UDRP panels have held that a respondent’s use of a disputed domain name to offer competing links and mislead users to its website for commercial profit shows bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). Accordingly, the Panel finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iv).
Fourthly, Complainant further alleges that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel recalls that Respondent replaces the letter “s” in Complainant’s STAPLES mark with the letter “e” in the disputed domain name. The Panel observes that prior panels have typically found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark, and that the practice evinces 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).”). Thus, the Panel concludes that Respondent has engaged in typosquatting, demonstrating bad faith use and registration under Policy ¶ 4(a)(iii).
Fifthly, 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 <etaples.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 23, 2014
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