Staples, Inc. and Staples The Office Superstore, LLC v. Whois Manager / Whois Privacy Management Service
Claim Number: FA1601001656363
Complainant is Staples, Inc. and Staples The Office Superstore, LLC (“Complainant”), represented by Sarah J. Schneider of Sheridan Ross P.C., Colorado, USA. Respondent is Whois Manager / Whois Privacy Management Service (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <staplescare.com>, registered with EPAG Domainservices GmbH.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically January 13, 2016; the Forum received payment January 13, 2016.
On January 14, 2016, EPAG Domainservices GmbH confirmed by e-mail to the Forum that the <staplescare.com> domain name is registered with EPAG Domainservices GmbH and that Respondent is the current registrant of the name. EPAG Domainservices GmbH verified that Respondent is bound by the EPAG Domainservices GmbH registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 14, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2016, 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@staplescare.com. Also on January 14, 2016, 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 February 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Contentions in this Proceeding:
Complainant uses the STAPLES mark in connection with its business as the world’s largest retailer of office products. Complainant registered the STAPLES mark with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,438,390, registered, April 28, 1987). See Compl., at Attached Ex. A. Respondent’s disputed <staplescare.com> domain name is confusingly similar to Complainant’s STAPLES mark. The disputed domain name differs from Complainant’s STAPLES mark only through the addition of word “care” and the inclusion of the generic top-level domain name “.com.”
Respondent is not commonly known by this disputed domain name and after review the WHOIS information and the fact Respondent has never been authorized to use the STAPLES mark. Respondent is using the <staplescare.com> domain name to promote competing content. Respondent’s use of the disputed domain name to resolve to a webpage offering links to products and services that compete with Complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and used the disputed <staplescare.com> domain name in bad faith. Respondent’s bad faith under Policy ¶ 4(b)(i) is shown through listing the confusingly similar disputed domain name for sale to the public. Respondent’s use of advertisements that compete with Complainant’s business merit a finding of bad faith under Policy ¶ 4(b)(iii). Respondent’s use of the disputed domain name to host click through advertisements for commercial gain constitutes bad faith under Policy ¶ 4(b)(iv). Respondent’s apparent typosquatting is further evidence of bad faith under Policy ¶ 4(a)(iii).
Respondent’s Contentions in this Proceeding:
Respondent did not submit a response. The Panel notes that Respondent registered the <staplescare.com> domain name February 10, 2010.
Complainant established that it has legal rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or domain name.
Respondent registered a domain name that is confusingly similar to
Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 or Confusingly Similar:
Complainant uses the STAPLES mark in connection with its retail operation selling a wide variety of office supplies to the general consuming public. STAPLES stores are located throughout the world and provide businesses and private persons supplies they need to go about their business. The Panel recognizes the mark that has been registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,438,390 registered April 28, 1987). See Compl., at Attached Ex. A. The Panel finds that this trademark registration is sufficient to illustrate Policy ¶ 4(a)(i) rights in the STAPLES mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant further claims the <staplescare.com> domain name is confusingly similar to the STAPLES mark because it incorporates the mark in its entirety and adds the word “care” and the “.com” gTLD. The Panel notes that such alterations do not distinguish a disputed domain name from the mark and supports a finding of confusing similarity. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Accordingly, the Panel finds that Respondent’s disputed <staplescare.com> domain name is confusingly similar to Complainant’s STAPLES mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a confusingly similar domain name using Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 is not commonly known by this domain name nor is it authorized to make use of the STAPLES mark. The Panel notes the WHOIS information lists “Whois Manager / EPAG DOMAINSERVICES GMBH” as the registrant of record for the <staplescare.com> domain name. The Panel agrees that this record lacks any evidence supporting a finding of a Policy ¶ 4(c)(ii) “commonly known by” relationship. 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).
In addition, Complainant argues that Respondent is using the disputed domain name to resolve to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Such links include: “Cheap Shopping,” “Shopping Deals,” and “Staples EWay.” See Compl., at Attached Ex. G. It is Complainant’s assertion that Respondent receives a pay-per-click commission for hosting these links on the disputed domain name. The Panel agrees that incorporating competing hyperlinks is not a bona fide offering of goods or services and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant argues that Respondent is trying to pass itself off as Complainant by displaying the STAPLES mark. Also, Complainant contends that Respondent is also displaying advertisements for some of Complainant’s competitors. The Panel notes that Complainant’s Exhibit D displays screenshots of the webpage resolving from the disputed domain name. Using a domain name in an attempt to pass oneself off as a complainant, or displaying competing advertisements, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). The Panel finds that Respondent is trying to pass itself off as Complainant, and has no rights in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Additionally, Complainant urges that Respondent offered the disputed domain name for sale to Complainant, which is additional evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name. See Compl., at Attached Ex. L. The Panel agrees that such an offer indicates a further lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Complainant also argues that Respondent failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Complainant asserts that Respondent uses the disputed domain name to phish for Internet users’ personal information through a fake survey. See Compl., at Attached Ex. D. Generally, panels have held that phishing for an Internet user’s personal information does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a disputed domain name. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus this Panel finds that Respondent’s phishing behavior is not consistent with a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant believes that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). First, Complainant notes that Respondent offered to sell Complainant the disputed domain name. The Panel notes Complainant’s attached Exhibit L provides proof for this contention and the Panel agrees with Complainant’s argument and evidence here. The Panel finds that Respondent acted in bad faith under Policy ¶ 4(b)(i). 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).”).
Complainant also contends that the confusing similarity between Respondent’s disputed domain name and Complainant’s mark is being used to confuse and attract Internet users for Respondent’s commercial gain. The Panel notes Complainant’s attached Exhibit G, which shows Respondent’s disputed domain name as resolved by Complainant. Exhibit G shows that Respondent’s webpage hosts multiple advertisements (some of which use the STAPLES mark), presumably for commercial gain. Panels routinely find that when a domain name is similar, and that similarity is used to confuse Internet users for commercial gain, the respondent has acted in bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). In this case, the Panel finds that Respondent used the <staplescare.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent is engaged in the practice of phishing, whereby Respondent attempts to capitalize on Complainant’s well-known mark to have Complainant’s customers provide it with sensitive account information. Past panels have found evidence of bad faith where a respondent’s disputed domain name resolves to a website that imitates the complainant’s website and is used to fraudulently acquire personal information from the complainant’s clients. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name). The Panel agrees that sufficient evidence supports a finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Complainant further alleges that Respondent engaged in the practice of typosquatting by misspelling Complainant’s mark with the intent to intercept and siphon off traffic from its intended destination. Past panels have found bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where a respondent’s disputed domain name merely misspelled the complainant’s mark. See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark). Accordingly, the Panel finds that in omitting the letter “s” from Complainant’s domain name, Respondent engaged in typosquatting behavior and thereby registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <staplescare.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 19, 2016
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