Xerox Corporation v. Anti-Globalization
Domains
Claim
Number: FA0311000210224
Complainant is Xerox Corporation (“Complainant”) represented
by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 1300 I Street, Nw, Washington, DC
20005. Respondent is Anti-Globalization Domains (“Respondent”), 5444 Arlington Ave. #g14,
Bronx, New York 10471.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwxerox.com>, registered with Intercosmos
Media Group, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on November 10, 2003; the Forum received a hard copy of the
Complaint on November 11, 2003.
On
November 11, 2003, Intercosmos Media Group, Inc. confirmed by e-mail to the
Forum that the domain name <wwwxerox.com> is registered with Intercosmos
Media Group, Inc. and that Respondent is the current registrant of the name. Intercosmos
Media Group, Inc. has verified that Respondent is bound by the Intercosmos
Media Group, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN's
Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
November 13, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of December 3, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities
and persons listed on Respondent's registration as technical, administrative
and billing contacts, and to postmaster@wwwxerox.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
December 10, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr.,
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."
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 makes the following assertions:
1. Respondent’s <wwwxerox.com>
domain name is confusingly similar to Complainant’s XEROX mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwxerox.com> domain name.
3. Respondent registered and used the <wwwxerox.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Xerox, holds numerous trademark registrations for its XEROX mark with the
United States Patent and Trademark Office (“USPTO”). Some of its registrations for the XEROX mark include USPTO Reg.
No. 525,717 (registered on May 30, 1950), Reg. No. 576,118 (registered on June
16, 1953) and Reg. No. 2,075,858 (registered on July 1, 1997). Complainant uses its XEROX marks in
connection with its document-management products and services.
Complainant is a
global leader in the document management field, offering a wide array of
products including copiers, printers, fax machines, scanners, desktop software,
digital printing and publishing systems, and related supplies. Complainant also offers a variety of
comprehensive services relating to its document-management business. Complainant features information regarding
its goods and services at its website located at the <xerox.com> domain
name.
Respondent
registered the <wwwxerox.com> domain name on May 5, 2002. Respondent is using the domain name to
redirect Internet users to a graphic and highly offensive website for an
anti-abortion political group at the <abortionismurder.org> domain name. When Internet users attempt to exit the
<abortionismurder.org> website, another webpage opens for the
<abortionismurder.org> website.
The <abortionismurder.org> website features graphic photographs
and information promoting anti-abortion views.
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."
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.
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.
Complainant has
established rights in the XEROX mark through its registration of the mark with
the USPTO. See Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption).
Respondent’s <wwwxerox.com>
domain name is confusingly similar to Complainant’s XEROX mark because it
incorporates the XEROX mark in its entirety.
In addition, the domain name is a typosquatted version of Complainant’s
mark as Respondent merely omitted the period following the “www” prefix that
precedes Complainant’s mark in the domain name. Panels have consistently held that common typographical errors
that are present in typosquatted domain names, such as forgetting to type a
period following the “www” prefix in the domain name, do not sufficiently
distinguish the domain name from the mark at issue. Accordingly, the Panel concludes that Respondent’s domain name is
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Dana Corp. v. $$$ This Domain Name Is
For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding
Respondent's <wwwdana.com> domain name confusingly similar to
Complainant's registered DANA mark because Complainant's mark remains the
dominant feature); see also Bank
of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding
that Respondent’s domain name <wwwbankofamerica.com> is confusingly
similar to Complainant’s registered trademark BANK OF AMERICA because it “takes
advantage of a typing error (eliminating the period between the www and the
domain name) that users commonly make when searching on the Internet”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
not presented the Panel with any circumstances demonstrating to the Panel that
it has rights or legitimate interests in the <wwwxerox.com> domain
name. Since Respondent has not rebutted
any of the allegations set forth in the Complaint, the Panel accepts
Complainant’s assertions as true and finds that Respondent lacks rights or
legitimate interests in the domain name.
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct.
1, 2002) (holding that where Complainant has asserted that Respondent has no
rights or legitimate interests with respect to the domain name it is incumbent
on Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it
appropriate for the Panel to draw adverse inferences from Respondent’s failure
to reply to the Complaint); see also Geocities
v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent
has no rights or legitimate interests in the domain name because Respondent
never submitted a Response or provided the Panel with evidence to suggest
otherwise).
There is no
evidence before the Panel suggesting that Respondent is commonly known by the <wwwxerox.com>
domain name. In fact, it would be
difficult for Respondent to demonstrate that it had rights or legitimate
interests in the domain name given Complainant’s long and substantial use of
its unique and famous XEROX mark. As
the Complainant insists that Respondent is not commonly known by the domain
name and there is no evidence before the Panel suggesting otherwise, the Panel
finds that Respondent does not have rights or legitimate interests in the
domain name pursuant to Policy ¶ 4(c)(ii).
See Nike, Inc. v. B. B. de
Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate
interests where one “would be hard pressed to find a person who may show a
right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19,
2000) (finding that Respondent failed to demonstrate any rights or legitimate
interests in the <twilight-zone.net> domain name since Complainant had
been using the TWILIGHT ZONE mark since 1959).
Respondent is
using the <wwwxerox.com> domain name to redirect Internet users,
who are looking for Complainant’s website, to the <abortionismurder.org>
website. Respondent’s use of the domain
name to divert Internet users to such a graphic and political website is not in
connection with a bona fide offering of goods or services nor is it a
legitimate noncommercial or fair use of the domain name. Consequently, the Panel finds that
Respondent does not have rights or legitimate interests in the domain name
pursuant to Policy ¶¶ 4(c)(i) or (iii).
See Rittenhouse Dev. Co. v. Domains For
Sale, Inc., FA 105211 (Nat. Arb. Forum
Apr. 8, 2002) (finding that, by linking the confusingly similar domain name to
an “Abortion is Murder” website, Respondent has not demonstrated a right or
legitimate interest in the disputed domain name); see also Am. Nat’l
Red Cross v. Domains, FA
143684 (Nat. Arb. Forum Mar. 4, 2003) (Respondent used the disputed domain name
to divert Internet users to websites, such as an anti-abortion website, which
are not associated with or authorized by Complainant. “Appropriating Complainant’s mark for these purposes cannot
equate to a bona fide offering of goods and services, and does not evidence
legitimate noncommercial or fair use of the domain name”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Policy ¶ 4(b)
provides specific circumstances that demonstrate bad faith under the
Policy. However, the Policy makes it
clear other situations are also evidence of bad faith. Consequently, the Panel in this proceeding
bases its finding of bad faith on circumstances that are not specifically
delineated in the Policy. See Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining
that Policy paragraph 4(b) sets forth certain circumstances, without
limitation, that shall be evidence of registration and use of a domain name in
bad faith); see also Home
Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7,
2000) (“[J]ust because Respondent’s conduct does not fall within the
‘particular’ circumstances set out in ¶4(b), does not mean that the domain
names at issue were not registered in and are not being used in bad faith”); see
also Twentieth Century Fox Film Corp.
v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in
determining if a domain name has been registered in bad faith, the Panel must
look at the “totality of circumstances”).
In this case,
Respondent registered the domain name to divert Internet users who forget to type
a period after the “www” portion of Complainant’s domain name. Registering a domain name with common
typographical errors and using such domain names to ensnare Internet users to a
website totally unrelated to the website they are looking for is evidence of
typosquatting, which demonstrates bad faith by itself. Thus, the Panel finds that Respondent
registered and is using the domain name in bad faith. See Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (“Typosquatting is the intentional misspelling of words with 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”); see also Canadian Tire Corp., Ltd. v. domain adm’r
no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003)
(holding that “[t]he absence of a dot between the www and canadiantire.com” in
the <wwwcanadiantire.com> domain name evidences bad faith registration
and use of the domain name).
Furthermore,
Respondent’s diversionary use of the domain name to redirect Internet users to
a website that features graphic images and endorses anti-abortion propaganda
also evidences bad faith use and registration of the domain name. Accordingly, the Panel finds that Respondent
registered and is using the domain name in bad faith under the Policy. See McClatchy Mgmt. Servs., Inc. v. Please DON'T Kill Your Baby,
FA 153541 (Nat. Arb. Forum May 28, 2003) (“By intentionally taking advantage of
the goodwill surrounding Complainant’s mark to further its own political
agenda, Respondent registered the disputed domain names in bad faith”); see also Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that
“when a party registers and uses a domain name that incorporates a well-known
mark and connects the domain name with a website that depicts offensive
images,” the party has registered and used the disputed domain name in bad
faith).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwxerox.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
December 22, 2003
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