Staples, Inc. and Staples the Office Superstores, LLC v. Domain Administrator
Claim Number: FA1408001576018
Complainant is Staples, Inc. and Staples the Office Superstores, LLC (“Com-plainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Administrator (“Respondent”), Belgium.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <staplas.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on August 20, 2014; the National Arbitration Forum received payment on August 20, 2014.
On August 21, 2014, GODADDY.COM, LLC confirmed by e-mail message addressed to the National Arbitration Forum that the <staplas.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the cur-rent registrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 enti-ties and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@staplas.com. Also on August 22, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addres-ses 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 Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant has used the STAPLES mark in connection with its retail operations for many years.
The STAPLES service mark has been registered by Complainant with the United States Patent and Trademark Office ("USPTO"), as Registry No. 1,438,390, registered April 28, 1987.
Respondent registered the <staplas.com> domain name on June 13, 2007.
The domain name is confusingly similar to Complainant’s STAPLES mark.
Respondent has not been commonly known by the disputed domain name.
Respondent has not been authorized by Complainant to use the STAPLES mark.
Respondent has no rights to or legitimate interests in the domain name.
Respondent uses the domain name to promote on-line businesses operating in competition with Complainant.
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Respondent presumably receives income in the form of pay-per-click fees from these the operation of its linked websites. |
The domain name is an example of typo-squatting.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent has registered and uses the disputed <staplas.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the STAPLES service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark author-ity, the United States Patent and Trademark Office ("USPTO"). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant has acquired rights in its mark by virtue of its registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Belgium). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in its mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <staplas.com> domain name is confusingly similar to Complainant’s STAPLES service mark. The domain name contains the entire mark, with only the substitution of the letter “a” for the letter “e” and the addition of the Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a tendency to be confusingly similar to the mark). See also Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) (finding that a disputed domain name was confusingly similar to the mark of a UDRP complainant despite the misspelling of the mark by omitting letters and the addition of a generic top-level domain).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <staplas.com> domain name, and also that Complainant has not authorized Respondent to use the STAPLES mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Domain Administrator,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the contested domain name so as to have ac-quired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See, for example, Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration inform-ation, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
We next observe that Complainant asserts, without objection from Respondent, that the <staplas.com> domain name resolves to a website promoting products sold under the brand OFFICEMAX, which directly compete with the business of Complainant, and that Respondent presumably profits from the operation of this website. Such a use of the domain name is neither a bona fide offering of goods or service under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (finding, under
Policy ¶ 4(c)(i) and (iii), that a UDRP respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name where “the website re-solving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
The Panel therefor finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s employment of the dis-puted <staplas.com> domain name as alleged in the Complaint disrupts Com-plainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in the registration and use of the domain name. See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using a website resolving from a contested domain name to divert Internet users to the websites of a UDRP complainant’s commercial competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
We are also convinced by the evidence that Respondent uses the <staplas.com> domain name, which is confusingly similar to Complainant’s STAPLES service mark, to profit by creating a likelihood of confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name. Under Policy ¶ 4(b)(iv), this too is proof of Respondent’s bad faith in the registration and use of the domain name. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel there finding, under Policy ¶ 4(b)(iv), bad faith regis-tration and use of a domain name which was confusingly similar to a UDRP com-plainant’s mark to promote the sale of goods of that complainant’s commercial competitors.
In addition, it is plain from the record that Respondent’s <staplas.com> domain name is an example of typo-squatting, i.e.: the practice of creating a domain name that is a deliberate misspelling of the mark of another in order to take ad-vantage of typing mistakes commonly made by Internet users in entering into web browsers the names of trademark owners with which they wish to do bus-iness. Typo-squatting is itself evidence of bad faith in the registration and use of a domain name. See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. For-um July 15, 2005) (finding, under Policy ¶ 4(a)(iii), that a UDRP respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typo-squatting).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <staplas.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 19, 2014
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