DECISION

 

Staples, Inc. v. lin yanxiao

Claim Number: FA1505001617686

 

PARTIES

Complainant is Staples, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is lin yanxiao (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <stapeles.com>, registered with Hangzhou Aiming Network Co., 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 Forum electronically on May 4, 2015; the Forum received payment on May 4, 2015.  The Complaint was submitted in both Chinese and English.

 

On May 4, 2015, Hangzhou Aiming Network Co., Ltd confirmed by e-mail to the Forum that the <stapeles.com> domain name is registered with Hangzhou Aiming Network and that Respondent is the current registrant of the name.  Hangzhou Aiming Network has verified that Respondent is bound by the Hangzhou Aiming Network 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 8, 2015, the Forum served the Chinese Complaint and all Annexes, including a Chinese Written Notice of the Complaint, setting a deadline of May 28, 2015 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@stapeles.com.  Also on May 8, 2015, the Chinese 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 Forum transmitted to the parties a Notification of Respondent Default.

 

On June 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant owns the STAPLES mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,438,390, registered April 28, 1987). Complainant uses the STAPLES mark in connection with its offering of retail store services, mail order catalog services, and computerized retail store services featuring office supplies and office equipment. The <stapeles.com> domain name is confusingly similar to the STAPLES mark. The domain name incorporates Complainant’s mark in full, merely adds an additional “e” to the mark, and adds the generic top-level domain (“gTLD”) “.com” to the domain name.

 

Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, because the WHOIS record for the disputed domain name does not reflect Respondent is commonly known by the disputed domain name. Further, Complainant has not given Respondent permission to use the STAPLES mark. Respondent’s lack of rights or legitimate interests in the <stapeles.com> domain name is made evident by Respondent’s failure to use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent uses the  <stapeles.com> domain name to redirect Internet users to Complainant’s own website in violation of Complainant’s affiliate agreement.

 

Respondent has engaged in bad faith registration and use of the <stapeles.com> domain name. Respondent has listed the disputed domain name for sale, in violation of Policy ¶4(b)(i). Further, Respondent is a “serial cybersquatter” and has engaged in a pattern of bad faith registration. Additionally, Respondent is using the disputed domain name to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, which suggests that the disputed domain name was registered in bad faith. As a member of Complainant’s affiliate program, Respondent must have had actual notice of Complainant’s rights in the STAPLES mark when it registered the disputed domain name. Finally, Respondent has engaged in typosquatting, which is evidence of bad faith under Policy ¶4(a)(iii).

 

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 must 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 owns the STAPLES mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,438,390, registered April 28, 1987). Complainant uses the STAPLES mark in connection with retail store services, mail order catalog services, and computerized retail store services featuring office supplies and office equipment.  Registration of a mark with a national trademark authority is sufficient to establish rights in the mark pursuant to Policy ¶4(a)(i), even when Respondent does not reside in the country where the mark is registered. 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)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Complainant need only prove it has SOME rights to the mark, not that Complainant’s rights are superior to Respondent’s rights.  Complainant has adequately proven its rights to the mark under Policy ¶4(a)(i).

 

Complainant claims the <stapeles.com> domain name is confusingly similar to the STAPLES mark. The disputed domain name incorporates Complainant’s mark in full, merely adding an additional “e” within the mark, and adds the gTLD “.com” to the domain name. Domain names that add a single extra character to a complainant’s trademark have a high probability of confusing similarity. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶4(a)(i)). The addition of a gTLD (or ccTLD) does not adequately distinguish the disputed domain name from the registered mark. See OL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). The disputed domain name is confusingly similar to Complainant’s 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 disputed domain name. The WHOIS record for the disputed domain name does not reflect Respondent is commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists “lin yanxiao” as the registrant of record, which has no obvious connection to the dispute domain name. Complainant has not given Respondent permission to use the STAPLES mark.  Without any evidence from Respondent to refute these claims, it seems clear Respondent lacks any rights to the disputed domain name according to Policy ¶4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).

 

Complainant claims Respondent has failed to use the disputed domain name in connection with 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 uses the <stapeles.com> domain name to redirect Internet users to complainant’s own website for financial gain in violation of Complainant’s affiliate agreement. Using a disputed domain name to redirect users to a complainant’s website, in violation of an affiliate agreement, is not a bona fide offering of goods and services, or a legitimate noncommercial or fair use. See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii)). Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶4(c)(iii).

 

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

 

Registration and Use in Bad Faith

Complainant claims Respondent has listed the disputed domain name for sale, in violation of Policy ¶4(b)(i). Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use. Generally speaking, respondents demonstrate bad faith when they announce a willingness to sell a disputed domain name in excess of the respondent’s out of pocket costs (in this case, the sale price was $2,499.00…which is very likely in excess of Respondent’s out of pocket costs). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i).”). Therefore, this Panel finds bad faith registration and use under Policy ¶4(b)(i).

 

Complainant claims Respondent is a “serial cybersquatter” and has engaged in a pattern of bad faith registration. This Panel notes Respondent has been involved in three cases (and has apparently lost all of them).  However, Policy ¶4(b)(ii) requires respondent to have registered the domain name in order to prevent the owner of the trademark … from reflecting the mark in a corresponding domain name, provided respondent has engaged in a pattern of such conduct.  Complainant does not claim it cannot reflect its mark in a domain name.  In fact, Complainant admits it owns Staples.com.  Therefore, this does not constitute adequate grounds to find bad faith registration and use.

 

Complainant claims Respondent is using the disputed domain name to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, all in violation of the affiliate program.  This suggests the disputed domain name was registered in bad faith. Bad faith registration and use can be found where respondents enroll in a complainant’s affiliate program, register a confusingly similar domain name, and simply use the domain name to redirect users to the complainant’s official website (in violation of the affiliate agreement). See Sports Auth. Mich., Inc. v. Skander, FA 135598 (Nat. Arb. Forum Jan. 7, 2002) (stating that “[b]y registering the ‘typosquatted’ domain name in [Complainant’s] affiliate program, Respondent profits on the goodwill of [Complainant’s] protected marks and primary Internet domain names,” and therefore registered and used the domain name in bad faith). The Panel finds Respondent has engaged in bad faith pursuant to Policy ¶4(a)(iii).

 

Respondent must have had actual notice of Complainant’s rights in the STAPLES mark when it registered the disputed domain name in Complainant’s affiliate program.  Otherwise, why would Respondent register in Complainant’s affiliates program?  Respondent was trying to pick a similar name to refer to Complainant’s web site in violation of the affiliate program agreement, all in violation of Policy ¶4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶4(a)(iii).”).  Once again, this constitutes bad faith registration and use of the disputed domain names.

 

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 the <stapeles.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Thursday, June 4, 2015

 

 

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page