Staples, Inc. and Staples the Office Superstores, LLC v. Virtual Services Corporation
Claim Number: FA1408001575923
Complainant is Staples, Inc. and Staples the Office Superstores, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Virtual Services Corporation (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <staplesw.com>, registered with Name.com, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2014; the National Arbitration Forum received payment on August 20, 2014.
On August 21, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <staplesw.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 August 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@staplesw.com. Also on August 22, 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 September 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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
1. Respondent’s <staplesw.com> domain name is confusingly similar to Complainant’s STAPLES mark.
2. Respondent does not have any rights or legitimate interests in the <staplesw.com> domain name.
3. Respondent registered and uses the <staplesw.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds registrations with the United States Patent and Trademark Office ("USPTO"), dating back to 1985, for its STAPLES and related marks, used in connection with retail supply stores.
Respondent registered the <staplesw.com> domain name on July 9, 2006, and uses it to compete with Complainant.
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 uses the STAPLES mark in connection with its retail stores throughout the world. The STAPLES mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,438,390 registered Apr. 28, 1987). The Panel finds that this trademark registration is sufficient to illustrate Policy ¶ 4(a)(i) rights in the STAPLES mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Respondent’s <staplesw.com> domain name simply adds one letter and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark, not enough to distinguish the disputed domain name from Complainant’s mark. See Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain). The Panel finds that the domain name is confusingly similar to the STAPLES mark.
The Panel fins that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 claims Respondent is not commonly known by this domain name nor is it authorized to make use of the STAPLES mark. The WHOIS information lists “Virtual Services Corporation” as the registrant of record for the <staplesw.com> domain name. The Panel determines that there is nothing in the record to support a finding under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name under Policy ¶ 4(c)(ii) as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that Respondent is not making a legitimate use of the <staplesw.com> domain name. The Panel notes that the disputed domain name resolves to a website promoting OFFICE DEPOT products, among others. This Panel finds that offering competing hyperlinks at the disputed domain name is not a Policy ¶ 4(c)(i) bona fide offering or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel fins that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent is in the business of registering infringing domain names and cites previous UDRP decisions against Respondent. See e.g., Alaska Air Group, Inc. v. Visual Services Corp., FA 1510955 (Nat. Arb. Forum Aug. 22, 2013). The Panel agrees and finds Policy ¶ 4(b)(ii) bad faith. See Bullock v. Network Operations Ctr., FA 1269834 (Nat. Arb. Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”).
Respondent’s use of the disputed domain name to compete with Complainant is disruptive of Complainant’s business. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel also finds Policy ¶ 4(b)(iv) bad faith where there is a likelihood that Internet users will be confused by the <staplesw.com> domain name, containing links to Complainant’s competitors. In Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel agreed there could be bad faith through a likelihood of confusion when a domain name—which was confusingly similar to the complainant’s mark—was used to promote the goods of that complainant’s competitors.
Respondent’s <staplesw.com> domain name is little more than an exercise in typosquatting, the practice of introducing a common error into the spelling of a trademark to divert Internet users to the respondent’s website. 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). The Panel finds that Respondent’s typosquatting is evidence of general Policy ¶ 4(a)(iii) bad faith.
Complainant also argues that Respondent registered the disputed domain name with actual notice of Complainant’s rights in the STAPLES mark. Based on the fame of Complainant’s STAPLES mark, the Panel agrees and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration”).
The Panel fins that Complainant has satisfied 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 <staplesw.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 21, 2014
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