national arbitration forum

DECISION

Staples, Inc. and Staples The Office Superstores, LLC v. Above.com Domain Privacy

Claim Number: FA1409001578486

PARTIES

Complainant is Staples, Inc. and Staples The Office Superstores, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <sdtaples.com>, <staplaes.com>, <staple4s.com>, <staplesd.com>, <staplese.com>, <staplest.com>, and <taples.com>, registered with Above.Com Pty Ltd.

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

PROCEDURAL HISTORY

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 9, 2014, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <sdtaples.com>, <staplaes.com>, <staple4s.com>, <staplesd.com>, <staplese.com>, <staplest.com>, and <taples.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. 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 9, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 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@sdtaples.com, postmaster@staplaes.com, postmaster@staple4s.com, postmaster@staplesd.com, postmaster@staplese.com, postmaster@staplest.com, postmaster@taples.com. Also on September 9, 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 Houston Putnam Lowry, Chartered Arbitrator, 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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A. Complainant

Staples is the world's largest office products company and second largest internet retailer. During 2011, Staples celebrated its 25th anniversary with $25 billion in total company sales. The company's International Operations consists of businesses in 23 countries in Europe, Australia, South America and Asia. In October 2013, Staples Inc. completed the acquisition of Runa.

Since at least 1985, Staples, and/or its subsidiaries or licensees, has provided retail store services, mail order catalog services, and computerized retail store services featuring office supplies, office equipment, computer hardware, copiers, telephones, and office furniture. It has provided these goods and services under marks consisting of the words STAPLES alone, or in combination with other words (the "STAPLES Marks").Staples has prominently and continuously used the mark STAPLES for the sale of the aforementioned goods and services since that date.

In addition to its rights in the STAPLES Marks at common law, Staples owns a large number of registrations and applications for registration for the STAPLES Marks throughout the world.

In the United States, all of the live registrations and applications for registration of the mark STAPLES are owned by Complainants.

Staples registered the domain name STAPLES.COM on March 5, 1995. Staples have used this domain name to display its merchandising since at least as early as 1997.

In connection with the STAPLES Marks, Staples sells billions of dollars’ worth of goods and services per year. To ensure that consumers are aware of the STAPLES Marks, Staples has spent millions of dollars in the advertising and promotion of its marks and in generating the goodwill associated with them. As a result of these extensive marketing and advertising efforts, as well as Complainants’ (and/or their subsidiaries’ or licensees’) billions of dollars in yearly sales in the marks, the STAPLES Marks have become famous world-wide.

[a.]

The Disputed Domain Name(s) are nearly identical and confusingly similar to Complainant's Marks.

i.	By virtue of its federal trademark and/or service mark registration(s), Complainant is the owner of the Complainant's Mark(s). See, e.g., United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202 ("Panels have long recognized Complainant's registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy 4(a)(i)"). As in other cases, it is also important to note that it is irrelevant for the purposes of Policy ¶4(a)(i) whether Complainant registered the mark in the country where Respondent operates or resides. 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 complainant can demonstrate rights in a mark in some jurisdiction).
ii.	When comparing the Disputed Domain Name(s) to the Complainant's Mark(s), the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name(s) and the Complainant's Mark(s). See Rollerblade, Inc. v. McCrady, WIPO Case No.D2000-0429 (finding that the top-level domain, such as ".net" or ".com", does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., NAF Claim No. FA0304000153545 ("[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.")
iii.	The Disputed Domain Name(s) (is/are) confusingly similar to Complainant's Mark(s) because (it/they) differ(s) by only a single character from Complainant's Mark(s), or because it differs by only the juxtaposition of two characters when compared to Complainant's Mark(s). For clarification, the Disputed Domain Name(s) contain(s) either: [i.] the addition of one extra character, or... [ii.] the removal of one character, or... [iii.] one character which is incorrect, or... [iv.] two juxtaposed characters as compared to Complainant's Mark(s).
iv.	The Disputed Domain Name(s) (is/are), simply put, a classic example of "typosquatting". The practice of typosquatting is designed to take advantage of Internet users' typographical errors, which means the names must be confusingly similar by design. See Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); Caterpillar Inc. v. Center for Ban on Drugs, NAF Claim No. FA0603000661437 ("the omission of a single letter from Complainant's mark does not adequately distinguish the Disputed Domain Name from the mark"); and Victoria's Secret v. Zuccarini, NAF Claim No. FA0010000095762 (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant's marks).

[b.]

Respondent has no rights or legitimate interests in respect of the Disputed Domain Name(s) for the following reasons:

i.	Respondent has not been commonly known by the Disputed Domain Name(s). Upon information and belief, at the time Respondent registered the Domain Name(s), it had no trademark or intellectual property rights in the Domain Name(s). See Policy, ¶4(c)(ii). See WHOIS record for the Disputed Domain Name(s). Where, as here, "the WHOIS information suggests Respondent is known as" an entity other than the trademark associated with Complainant, and Complainant has not "licensed, authorized, or permitted Respondent to register domain names incorporating Complainant's... mark," a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, NAF Claim No. FA0707001036202. See also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy, ¶4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); See also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that when a respondent was not known by a mark it did not have rights in a domain name incorporating that mark).
ii.	Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
iii.	Complainant has not given Respondent permission to use Complainant's Mark in a domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding that a respondent had no rights or legitimate interest in the disputed domain name where it was not commonly known by the mark and never applied for a license or permission to use the mark).

iv.	A "Cease and Desist" letter was sent to the Respondent. The letter informed the Respondent that it was infringing on Complainant's IP rights and allowed the Respondent the opportunity to respond if they have any IP rights. The Respondent was provided with the information of the Complainant's trademark(s), hence showing proof that the Complainant has rights to the brand(s). To date, no reply has been received from Respondent. 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, WIPO Case No. D2000-0009 (WIPO Feb. 29, 2000("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint."). Also in WIPO case ACCOR v. Pham Manh Ha, Case No. D2007-1855, the panel found that the evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name.
v.	Respondent has ignored Complainant's attempts to resolve the dispute outside of this administrative proceeding. Complainant notes that if the owner of the Disputed Domain Name(s) fails to respond to this Complaint, it is presumed that the owner has no rights or legitimate interests in the Disputed Domain Name(s). See Mattel, Inc. v. RaveClub Berlin, FA106115 (Nat. Arb. Forum May 8, 2002), citing Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents' failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Further, Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) states that when "the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interest in the domain name at issue."
vi.	Respondent is using (some or all of) the Disputed Domain Name(s) to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites. As such, Respondent is not using the Disputed Domain Name(s) to provide a bona fide offering of goods or services as allowed under Policy; 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy; 4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent's use of the 24hrsfitness.com.gt, 24-hourfitness.com.gt and 24hoursfitness.com.gt, domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names).
vii.	The earliest date on which Respondent registered the Disputed Domain Name(s), TAPLES.COM, was January 31, 2001, which is significantly after Complainant's first use in commerce, July 25, 1985, as specified in their relevant registration with the USPTO.
viii.	The earliest date on which Respondent registered the Disputed Domain Name(s), TAPLES.COM, was January 31, 2001, which is significantly after Complainant's registration of their relevant Marks with the USPTO on April 28, 1987.
ix.	The earliest date on which Respondent registered the Disputed Domain Name(s), TAPLES.COM, was January 31, 2001, which is significantly after Complainant's registration of staples.com on March 5, 1995.

[c.]

The Disputed Domain Name(s) should be considered as having been registered and being used in bad faith for the following reasons:

Respondent's typosquatting behavior is, in and of itself, evidence of bad faith. See Canadian Tire Corp. v. domain adm'r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent created a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location'.. . through Respondent's persistent practice of 'typosquatting'"); see also Nat'l Ass'n of Prof'l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) ("Typosquatting ... is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.").

ii.

iii.

iv.

Respondent's bad faith is further shown by the Respondent using the Disputed Domain Name(s) website in connection with generating revenue as a "click through" website by using the Complainant's registered trademark(s) and providing links to the services and products offered by the Complainant to take advantage of Complainant's well known mark to achieve a wrongful competitive advantage and commercial gain. In WIPO Decision D2008-1470, AIDA Cruises German Branch of Societa di CrociereMercurioS.r.l., v. Caribbean Online International Ltd. / BelgiumDomains "the Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies' websites related to cruises and travels, in the form of a "click through" website. In similar cases, many prior panel decisions have recognised [sic] that the registration of domain names to be used in a "click-through" website has to be considered as an evidence of bad faith (see, e.g. Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation., WIPO Case No. D2007-0440; Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812; HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605)".

To further stress the above, Respondent’s setting up of a “click through” website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent’s bad faith. The Respondent has registered and used the Disputed Domain Name(s) in bad faith pursuant to Policy ¶4(b)(iv) by using the Disputed Domain Name(s) to attract and mislead consumers for its own profit. 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).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). See also Meadowbrook, L.L.C. d/b/a The Land of Nod v. Venkateshwara Distributor Private Limited, Claim Number: FA1112001419361 and Charlotte Russe Merchandising, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, Claim Number: FA1204001439309, where the same behavior of bad faith is demonstrated and agreed by the panel, pursuant to Policy ¶4(b)(iv).

In addition to the above, the Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. These links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant’s business. The Panel should find that this effort to divert consumers and disrupt Complainant’s business is evidence of bad faith registration and use under Policy ¶4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶4(b)(iii)).

The Respondent has also listed the Disputed Domain Name(s) for sale. As shown in WIPO Decision D2001-1066, Trip.com, Inc. v. Daniel Deamone, "A fourth factor is that Respondent has offered the Domain Name for sale to the public. There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent. Although Respondent's offer of the Disputed Domain Name(s) for sale was not made specifically to Complainant or its competitor, offers for sale to the public may nevertheless constitute evidence of bad faith under the Policy." The offering for sale of a domain name, even to a third party, supports bad faith. See Policy, Paragraph 4(b); Sporty's Farm L.L.C. v. Sportsman's Market, Inc., 202 F.3d 489 (2d Cir. 2000); Porsche Cars North America, Inc. v. Spencer, 55 U.S.P.Q.2d 1027 (E.D. Cal. 2000); Morrison & Foerster LLP v. Wick, 94 F. Supp.2d 1125 (D. Colo. 2000). See also WIPO Case No. D2003-0689, Mr. Donning Eric v. Mr. Nyunhwa Jung,..."The posting of the announcement: "This domain is for SALE!" constitutes satisfactory evidence, when combined with the Respondent's lack of legitimate rights to or interests in the domain name, that the Respondent's primary purpose in registering the domain name was to sell it in contravention of the Policy (EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036).

vi.

Respondent has caused the website(s) reachable by (some or all of) the Disputed Domain Name(s) to display Complainant's Mark(s) spelled correctly (even though the domain name(s) (is/are) a misspelled version of the same mark(s)). This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark(s).

vii.

Respondent has caused the websites reachable by (some or all of) the Disputed Domain Name(s) to display content and/or keywords directly related to Complainant's business. This serves as further evidence of bad faith intent because it removes any doubt as to whether or not the misspelling was intentionally designed to improperly capitalize on Complainant's famous Mark and its related business.

viii.

Respondent's use of apparently falsified and/or incomplete WHOIS contact information demonstrates a desire to avoid being held accountable, which serves as further evidence of bad faith intent. See, e.g., Time Warner Inc. v. AOLMEMBERS.COM et al., NAF Claim No. FA0701000881337 ("fictitious or false WHOIS information about both the registrant's name and physical address... raises the presumption of bad faith registration and use").

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

(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.

DISCUSSION

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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:

(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.”).

Identical and/or Confusingly Similar

Complainant is the world’s largest office products company and second largest Internet retailer. Since 1985, Complainant has used its STAPLES mark in affiliation with its retail store services, mail order catalog services, computerized retail store services featuring office supplies, office equipment, computer hardware, copiers, telephones, and office furniture. Complainant owns numerous registrations for the STAPLES mark in the United States and around the world. See United States Patent and Trademark Office ("USPTO") registration (e.g., Reg. No. 1,438,390, registered April 28, 1987). Respondent resides in Australia according to the WHOIS record. At this stage of the proceeding, Complainant need only prove SOME rights, not that Complainant’s rights are superior to Respondent’s rights. A complainant’s registration with a trademark agency is normally sufficient to establish the complainant’s rights in the registered trademark, regardless of respondent’s location. In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel wrote “[the Respondent’s] USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Complainant’s USPTO registrations adequately establish Complainant’s rights in the STAPLES mark pursuant to Policy ¶4(a)(i).

Complainant claims Respondent’s <sdtaples.com>, <staplaes.com>, <staple4s.com>, <staplesd.com>, <staplese.com>, <staplest.com>, and <taples.com> domain names are confusingly similar to Complainant’s STAPLES mark under Policy ¶4(a)(i). The <sdtaples.com>, <staplaes.com>, <staple4s.com>, <staplesd.com>, <staplese.com>, and <staplest.com> disputed domain names add a single extra letter. The <taples.com> domain name removes the initial letter “s.” All of the disputed domain names contain the generic top-level domain (“gTLD”) “.com.” Adding a gTLD or ccTLD does not adequately distinguish a domain name from a mark under Policy ¶4(a)(i), Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007). A domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive, Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000). Respondent’s spelling of Complainant’s STAPLES mark differing by only one letter and a gTLD does not prevent a finding the disputed domain names and Complainant’s mark are confusingly similar. Respondent’s <sdtaples.com>, <staplaes.com>, <staple4s.com>, <staplesd.com>, <staplese.com>, <staplest.com>, and <taples.com> domain names are confusingly similar to Complainant’s STAPLES mark under Policy ¶4(a)(i).

The Panel finds Policy ¶4(a)(i) satisfied.

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 has no rights or legitimate interests in the <sdtaples.com>, <staplaes.com>, <staple4s.com>, <staplesd.com>, <staplese.com>, <staplest.com>, and <taples.com> domain names under Policy ¶4(c)(ii). Respondent is not commonly known by the disputed domain names. Respondent has no intellectual property rights in the STAPLES mark. Respondent has not been authorized by Complainant to use it. The WHOIS information lists an entity as registrant that does not indicate a relation to the disputed domain name or a legitimate business in association with the disputed domain names. Respondent failed to submit a response in the proceeding, and therefore, has not contested Complainant’s contentions. Based upon this record, Respondent is not commonly known by the disputed domain names pursuant to Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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).

Respondent uses the disputed domain names to redirect Internet users to a website featuring generic “click through” links to third-party websites, some of which directly compete with Complainant’s business. Respondent’s resolving website displays links such as “Staples.com,” “OfficeMax Office Supplies,” “Staples- Official Site,” “Staples Rewards Center,” “Pottery Barn Kids,” and “Staples Store.” Parking websites that promote links to the complainant and its competitors does not constitute a bona fide offering of goods or 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 may find 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).”). Respondent is not using the disputed domain names to establish 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) by causing the disputed domain names to resolve to websites promoting Complainant’s own website and business, as well as websites belonging to Complainant’s competitors.

Finally, Respondent registered the disputed domains using a WHOIS privacy service. This means the registrant doesn’t really control the use of the disputed domain names. The beneficial owner does not publicly associate itself with the disputed domain names. Therefore, the Respondent does not acquire any rights to the disputed domain names.

The Panel finds Policy ¶4(a)(ii) satisfied.

Registration and Use in Bad Faith

Complainant claims Respondent registered and is using the <sdtaples.com>, <staplaes.com>, <staple4s.com>, <staplesd.com>, <staplese.com>, <staplest.com>, and <taples.com> domain names in bad faith under Policy ¶4(b)(i). Respondent lists the disputed domain names for sale as part of their WHOIS information. Offering a disputed domain name for sale often establishes the domain name was registered in bad faith. See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale). Respondent’s attempts to sell the disputed domain names indicates bad faith use and registration under Policy ¶4(b)(i).

Complainant claims Respondent registered and is using the disputed domain names in bad faith under Policy ¶4(b)(iii). Respondent uses the disputed domain names to resolve to websites displaying links that compete with Complainant, and provide financial profit for Respondent, while diverting Internet users away from Complainant’s business. A respondent who provides links to competitors of the complainant through the confusingly similar domain name registered and uses the 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).”). There is bad faith registration and use of the <sdtaples.com>, <staplaes.com>, <staple4s.com>, <staplesd.com>, <staplese.com>, <staplest.com>, and <taples.com> domain names under Policy ¶4(b)(iii) because Complainant has provided the Panel with evidence showing Respondent provides links to Complainant’s competitors.

Complainant also claims Respondent’s intent in registering and using the disputed domain names is to misdirect Internet users to Respondent’s resolving websites and confuse Internet users as to Complainant’s affiliation with Respondent’s landing pages. Respondent commercially profits from Internet users’ confusion, when the displayed links are clicked. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel found “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).” Respondent’s current use of the disputed domain names is substantially similar to Univ. of Houston Sys. v. Salvia Corp. Respondent’s use of the disputed domain names to provide links to Complainant’s competitors and offers products associated with Complainant, likely for click through revenue and adequately demonstrates bad faith use and registration under Policy ¶4(b)(iv).

The Panel finds Policy ¶4(a)(iii) satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

Accordingly, it is Ordered <sdtaples.com>, <staplaes.com>, <staple4s.com>, <staplesd.com>, <staplese.com>, <staplest.com>, and <taples.com> domain name be TRANSFERRED from Respondent to Complainant.

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Tuesday, October 14, 2014