Staples, Inc. and Staples the Office Superstores, LLC v. by Proxy, Inc. Domain Names / domainnamesbyproxy.com Inc.
Claim Number: FA1405001557060
Complainant is Staples, Inc. and Staples the Office Superstores, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is by Proxy, Inc. Domain Names / domainnamesbyproxy.com Inc. (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <sfaples.com> and <ztaples.com>, registered with DNC Holdings, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 1, 2014; the National Arbitration Forum received payment on May 1, 2014.
On May 6, 2014, DNC Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <sfaples.com> and <ztaples.com> domain names are registered with DNC Holdings, Inc. and that Respondent is the current registrant of the names. DNC Holdings, Inc. has verified that Respondent is bound by the DNC Holdings, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 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@sfaples.com, postmaster@ztaples.com. Also on May 7, 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 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant
a) Complainant is the world’s largest office products company and second largest internet retailer. Complainant does business in at least twenty-three countries across the world, including some Asian countries.
b) Complainant has rights in the STAPLES mark, used in connection with office products and retail. Complainant owns registrations for the STAPLES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,438,390 registered April 28, 1987).
c) Respondent’s <sfaples.com> and <ztaples.com> domain names are confusingly similar to Complainant’s STAPLES mark. The disputed domain names each differ from Complainant’s mark by a single letter, and they also each include the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights or legitimate interests in the <sfaples.com> and <ztaples.com> domain names.
a. Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its STAPLES mark in any way.
b. Respondent is using the <sfaples.com> and <ztaples.com> domain names to redirect Internet users to a website featuring generic third-party links, some of which directly compete with Complainant’s business. See Complainant’s Exhibit H.
e) Respondent registered and is using the <sfaples.com> and <ztaples.com> domain names in bad faith.
a. Respondent is disrupting Complainant’s business by using the disputed domain name to divert Internet users to a website that displays third-party links to some of Complainant’s competitors. See Complainant’s Exhibit H.
b. Respondent is using the <sfaples.com> and <ztaples.com> domain names to attract and mislead consumers for Respondent’s own profit. Respondent is using the <sfaples.com> and <ztaples.com> domain names to operate a pay-per-click website from which Complainant presumes that Respondent receives revenue for each misdirected Internet user. See Complainant’s Exhibit H.
c. Respondent’s conduct constitutes typosquatting, which is evidence of bad faith.
f) Respondent registered the <sfaples.com> and <ztaples.com> domain names on December 15, 2005.
Respondent
a) Respondent did not submit a response in this proceeding.
1. Respondent’s <sfaples.com> <ztaples.com> domain names are confusingly similar to Complainant’s STAPLES mark.
2. Respondent does not have any rights or legitimate interests in the <sfaples.com> <ztaples.com> domain names.
3. Respondent registered or used the <sfaples.com> <ztaples.com> domain names 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 contends it has rights in the STAPLES mark, used in connection with office products and retail. Complainant states it owns registrations for the STAPLES mark with the USPTO (e.g., Reg. No. 1,438,390 registered April 28, 1987). Therefore, the Panel finds that Complainant has rights in the STAPLES mark pursuant to Policy ¶ 4(a)(i) because Complainant holds valid trademark registrations for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <sfaples.com> and <ztaples.com> domain names are confusingly similar to Complainant’s STAPLES mark. Complainant observes that the disputed domain names each differ from Complainant’s mark by a single letter, and they also each include the gTLD “.com.” The Panel notes that the <sfaples.com> domain name replaces the letter “t” with the letter “f,” while the <ztaples.com> domain name replaces the “s” with the letter “z.” First, the Panel finds that a disputed domain name that differs from a trademark by a single letter does not avoid a finding of confusing similarity. 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”). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well -established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, Respondent’s <sfaples.com> and <ztaples.com> domain names are confusingly similar to Complainant’s STAPLES mark pursuant to Policy ¶ 4(a)(i).
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.”).
Complainant contends that Respondent does not have any rights or legitimate interests in the <sfaples.com> and <ztaples.com> domain names. Complainant states that Respondent is not commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its STAPLES mark in any way. The Panel notes that the WHOIS record for the disputed domain names lists “by Proxy, Inc. Domain Names” as the domain name registrant and “domainnamesbyproxy.com Inc.” as the registrant organization. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the STAPLES mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <sfaples.com> and <ztaples.com> domain names under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is using the <sfaples.com> and <ztaples.com> domain names to redirect Internet users to a website featuring generic third-party links, some of which directly compete with Complainant’s business. See Complainant’s Exhibit H. The Panel notes that the links include “Office Depot Online,” “HP Desktops,” and “Officemax Office Supplies.” Id. Past panels have found that such conduct does not demonstrate a bona fide offering of goods and 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 finds 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).”). Therefore, the Panel finds that Respondent is not making 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) because the <sfaples.com> and <ztaples.com> domain names resolves to a website featuring generic third-party links, some of which directly compete with Complainant.
Complainant contends that Respondent registered and is using the <sfaples.com> and <ztaples.com> domain names in bad faith. Complainant asserts that Respondent is disrupting Complainant’s business by using the disputed domain names to display third-party links to some of Complainant’s competitors. See Complainant’s Exhibit H. The Panel notes that the links include “Office Depot Online,” “HP Desktops,” and “Officemax Office Supplies.” Id. Past panels have found that using a confusingly similar domain name to promote links to a complainant’s competitors constitutes a bad faith disruption pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Therefore, the Panel finds that Respondent registered and is using the <sfaples.com> and <ztaples.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iii) because Respondent is using the disputed domain names to promote Complainant’s competitors.
Complainant alleges that Respondent is using the <sfaples.com> and <ztaples.com> domain names to attract and mislead consumers for Respondent’s own profit. Complainant states that Respondent is using the <sfaples.com> and <ztaples.com> domain names to operate a pay-per-click website from which Complainant presumes that Respondent receives revenue for each misdirected Internet user. See Complainant’s Exhibit H. The Panel notes that the links include “Office Depot Online,” “HP Desktops,” and “Officemax Office Supplies.” Id. In similar cases, panels have held that using a confusingly similar domain name to operate a pay-per-click website demonstrates bad faith via attraction for commercial gain pursuant to 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).”). Therefore, the Panel finds that Respondent registered and is using the <sfaples.com> and <ztaples.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is using a confusingly similar domain names to operate a pay-per-click website for Respondent’s own commercial gain.
Complainant argues that Respondent’s conduct constitutes typosquatting, which is demonstrative of bad faith. In Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), the panel defined typosquatting as the “registration of a disputed domain name that capitalizes on Internet users’ typographical errors.” The Panel notes that the <sfaples.com> and <ztaples.com> domain names each differ from Complainant’s STAPLES mark by a single letter. Past Panels have found that typsquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). The Panel finds that Respondent is typosquatting and finds Respondent registered and is using the <sfaples.com> and <ztaples.com> domain names in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sfaples.com> and <ztaples.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 10, 2014
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