Staples, Inc. v. Ryan G Foo / PPA Media Services
Claim Number: FA1505001617688
Complainant is Staples, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Ryan G Foo / PPA Media Services (“Respondent”), Chile.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <staplels.com>, registered with Internet.bs Corp.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2015; the Forum received payment on May 4, 2015.
On May 8, 2015, Internet.bs Corp. confirmed by e-mail to the Forum that the <staplels.com> domain name is registered with Internet.bs Corp. and that Respondent is the current registrant of the name. Internet.bs Corp. has verified that Respondent is bound by the Internet.bs Corp. 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 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@staplels.com. Also on May 12, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
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 <staplels.com> domain name is confusingly similar to the STAPLES mark. The domain name incorporates Complainant’s mark in full, merely adds an additional “l” 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, as the WHOIS record for the disputed domain name does not reflect that 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 <staplels.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 <staplels.com> domain name to resolve to a website that features competing hyperlinks, which redirect users to Complainant’s competitors, presumably for Respondent’s financial gain. See Compl., at Attached Ex. H.
Respondent has engaged in bad faith registration and use of the <staplels.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. Respondent’s use of the disputed domain names disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Further, Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. 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.
1. Complainant is a United States company engaged in the provision of retail store services, mail order catalog services, and computerized retail store services featuring office supplies and office equipment.
2. 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).
3. Respondent registered the disputed domain name on May 13, 2007. Respondent has offered the domain name for sale and has used it to disrupt Complainant’s business by diverting Internet customers seeking Complainant’s website to competitors of 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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant states that it owns the STAPLES mark through its registration with the USPTO (e.g., Reg. No. 1,438,390, registered April 28, 1987). Complainant contends that it 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. Prior panels have concluded that registration of a mark with a 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 E Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, even though Respondent reportedly resides in Chile, the Pane finds that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s STAPLES mark. Complainant submits that the <staplels.com> domain name is confusingly similar to the STAPLES mark. The domain name incorporates Complainant’s mark in full and merely adds an additional “l” to the mark. Prior panels have found that domain names that add an extra character to a complainant’s trademark have a high probability of confusing similarity. 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 greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive.”). Further, the addition of a gTLD does not serve adequately to distinguish the disputed domain name from the registered mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Accordingly, the Panel finds that the disputed domain name is confusingly similar to the trademark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s STAPLES
trademark and to use it in its domain name, adding only an additional letter “l”;
(b) Respondent has used the domain name to disrupt Complainant’s
business by diverting Internet customers seeking Complainant’s website to competitors of Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name. Complainant urges that Respondent is not commonly known by the disputed domain name, as the WHOIS record for the disputed domain name does not reflect that Respondent is commonly known by the disputed domain name. The Panel notes that the WHOIS information for the disputed domain name lists Ryan G Foo / PPA Media Services” as the registrant of record. See Compl., at Attached Ex. I. Further, Complainant states that it has not given Respondent permission to use the STAPLES mark. Without any evidence from Respondent to refute these claims, the Panel agrees that these contentions are sufficient to establish Respondent’s lack of rights to the disputed domain name according to 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 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);
(e) Complainant argues that Respondent’s lack of rights or legitimate interests in the <staplels.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 a legitimate noncommercial or fair use. Complainant claims that Respondent uses the <staplels.com> domain name to host competing hyperlinks, which redirect Internet users to websites that are operated by Complainant’s competitors, presumably for financial gain. See Compl., at Attached Ex. H. Previous panels have found that the use of a disputed domain name to redirect Internet users to a complainant’s competitors is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). The Panel concludes that Respondent’s actions here are not a bona fide offering of goods or services under Policy ¶ 4(c)(i). The Panel further finds that as Respondent presumably attempts to profit through click-through fees, there can logically be no “noncommercial or fair use” pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent has listed the disputed domain name for sale, in violation of Policy ¶ 4(b)(i). See Compl., at Attached Ex. I. Complainant contends that Respondent’s offering to sell the disputed domain name to a third party supports a finding of bad faith registration and use. Prior panels have found that respondents demonstrate bad faith when they display a willingness to sell a disputed domain name. 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). Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(i).
Secondly, Complainant alleges that Respondent is a “serial cybersquatter” and has engaged in a pattern of bad faith registration. The Panel notes that Complainant has provided evidence of Respondent’s prior UDRP cases held against it in Complainant’s Attached Exhibit N. See Zillow, Inc. v. Ryan G Foo / PPA Media Services, FA 1604451 (Nat. Arb. Forum Mach 19, 2015); G6 Hospitality IP, LLC, parent company of Motel 6 Operating L.P. v. Ryan G Foo / PPA Media Services, FA 1599700 (Nat. Arb. Forum March 31, 2015). Previous panels have agreed that multiple prior UDRP decisions are sufficient evidence to establish a respondent’s bad faith registration and use. See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”). Thus, the Panel finds that Respondent’s pattern of bad faith registrations demonstrates bad faith registration and use under Policy ¶ 4(b)(ii).
Thirdly, Complainant argues that Respondent’s use of the disputed domain name disrupts Complainant’s business by diverting Internet customers seeking Complainant’s website. Complainant asserts that Respondent uses pay-per-click hyperlinks on the resolving websites, which redirect users to various third-party websites. Internet users may reach websites such as <Charter.com> and <Quill.com>, Complainant’s competitors, by clicking on these links. See Compl., at Attached Ex. H. Previous panels have found that the use of hyperlinks to disrupt and compete with a complainant’s business is evidence of 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).”). The Panel therefore concludes that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Fourthly, Complainant claims that Respondent intentionally attracts, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark. Complainant contends that Respondent presumably receives “click through” fees through the use of its disputed domain name, and registered the disputed domain names to attract and mislead consumers for its own profit. Prior panels have found that hyperlinks are typically associated with referral fees, and a respondent’s use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). The Panel therefore finds that Respondent has engaged in bad faith use under Policy ¶ 4(b)(iv).
Fifthly, Complainant asserts that Respondent has engaged in typosquatting, which is evidence of bad faith under Policy ¶ 4(a)(iii). Users here would merely need to insert only one additional character to type Respondent’s disputed domain name mistakenly, rather than the domain name of Complainant. Past panels have found that respondents who take advantage of common typing errors engage in bad faith registration under Policy ¶ 4(a)(iii). 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 accordingly finds that Respondent’s typosquatting conduct is additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).
Finally, having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the STAPLES
mark and its use since the registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <staplels.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC,
Panelist
Dated: June 8, 2015
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