Staples, Inc. and Staples the Office Superstores, LLC v. RICO DEKKER / HCR TRADING
Claim Number: FA1409001578483
Complainant is Staples, Inc. and Staples the Office Superstores, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is RICO DEKKER / HCR TRADING (“Respondent”), NL.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <steples.com>, registered with ENOM, INC..
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 5, 2014; the National Arbitration Forum received payment on September 5, 2014.
On September 10, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <steples.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 September 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@steples.com. Also on September 10, 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 October 2, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant uses the STAPLES mark in connection with its retail store services, mail order catalog services, and computerized retail store services featuring office supplies, office equipment, computer hardware, copiers, telephones, and office furniture. Complainant operates online through <staples.com>, which has been in use since 1995.
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).
The <steples.com> domain name is confusingly similar to Complainant’s mark because Respondent has simply substituted the letter “e” for the “a” in the mark.
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <steples.com> domain name. Respondent is not licensed, authorized, or permitted to register domain names incorporating Complainant’s mark.
Complainant does not make any specific contentions on whether or not Respondent provides any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed domain name.
Respondent has listed the disputed domain name for sale. Respondent uses the disputed domain name to redirect Internet users to Complainant’s own website, in violation of the affiliate agreement between the parties. Respondent’s typosquatting behavior is evidence of bad faith. As a member of Complainant’s affiliate program, Respondent had actual knowledge of Complainant’s rights in the STAPLES mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, in an email from Respondent to the dispute resolution provider, Respondent consents to transfer the at-issue domain name to Complainant.
Complainant has rights in the STAPLES mark through its registration of such mark with the USPTO.
Respondent unequivocally consents to transfer the domain name to 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.”).
Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”) Here, since there is a clear indication that Respondent agrees to transfer the at-issue domain name to Complainant, the Panel follows its rational set out in Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Shirlee Cornejo / Universal Export Import Ltd. FA1471116 (Nat. Arb. Forum January 2, 2013), American Petroleum Institute v. Lynn Matthews, FA1507800 (Nat. Arb. Forum, July 30, 2013), Microsoft Corporation v. Simon Ward / Game Codes Ltd., FA1534229 (Nat. Arb. Forum, January 16, 2014), Capital One Financial Corp. v Matthew Krei FA1569979 (Nat. Arb. Forum, July 30, 2014) as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases cited above, as a necessary prerequisite to Complainant obtaining the relief its requests even where Respondent consents to such relief, Complainant must nevertheless demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. In the instant case, Complainant establishes its rights in the STAPLES mark through its USPTO trademark registration of such mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore, Respondent’s <steples.com> domain name is constructed by substituting the letter “a” in Complainant’s STAPLES trademark with an “e” and then appending the generic top-level domain, “.com,” to the resulting string. These changes are insufficient to materially distinguish the domain name from Complainant’s STAPLES trademark. Therefore, the Panel finds that Respondent’s <steples.com> domain name is confusingly similar to Complainant’s STAPLES trademark under Policy ¶4(a)(i). See Capital One Financial Corp. v. Domain Administrator / Fundacion Private Whois, FA 1550023 (Nat. Arb. Forum April 29, 2014) (finding that Respondent’s domain name is confusingly similar to Complainant’s mark because Respondent’s “domain name consists merely of a common misspelling of the highly distinctive mark, with the addition of the generic Top Level Domain (“gTLD”) “.com.”
In light of the foregoing, Respondent’s consent-to-transfer the at-issue domain name to Complainant compels the Panel to transfer the <steples.com> domain name as requested. Furthermore, the Panel finds no basis for including substantive analysis under Paragraph 4(a)(ii) and/or 4(a)(iii) in its decision.
Having determined that Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and having established that Respondent has consented to the relief Complainant requests, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <steples.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 7, 2014
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