OMX, Inc. c/o OfficeMax Incorporated v.
Yong Li
Claim
Number: FA0501000400438
Complainant is OMX, Inc. c/o OfficeMax Incorporated (“Complainant”),
represented by Kevin M. Hayes, of Klarkquist Sparkman, LLP,
One World Trade Center, Suite 1600, 121 SW Salmon Street, Portland, OR 97204.
Respondent is Yong Li (“Respondent”), P.O. Box 904, Beijing,
100029, China.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <officemaximus.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
12, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 13, 2005.
On
January 18, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the National Arbitration Forum that the domain name <officemaximus.com>
is registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that
Respondent is the current registrant of the name. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
January 20, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 9, 2005 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@officemaximus.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 11, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed John
J. Upchurch 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." 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <officemaximus.com>
domain name is confusingly similar to Complainant’s OFFICEMAX mark.
2. Respondent does not have any rights or
legitimate interests in the <officemaximus.com> domain name.
3. Respondent registered and used the <officemaximus.com>
domain name in bad faith.
B.
Respondent failed to submit a response in this proceeding.
Complainant,
OMX, Inc., is a wholly owned subsidiary of OfficeMax North America, which is a
wholly owned subsidiary of OfficeMax Incorporated. Complainant has provided
office products and business services under the OFFICEMAX mark since 1988. In
2003, Complainant had 970 stores operating under the OFFICEMAX name and sales
of over $4 billion. Complainant holds numerous worldwide trademark
registrations for the OFFICEMAX mark, including U.S. Reg. Nos. 1,715,669 and
1,948,932 (issued September 15, 1992 and January 16, 1996, respectively), which
are on file at the United States Patent and Trademark Office. Complainant also
operates a website at the <officemax.com> domain name. The Latin root
“maximus” in the disputed domain name is a synonym for the slang term “max” in
Complainant’s mark.
Respondent
registered the <officemaximus.com> domain name on November 20,
2002. The domain name redirects Internet users to the <officedepot.com>
domain name, which resolves to the website of Office Depot, a significant
competitor 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."
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 that it has rights in the OFFICEMAX mark through registration with
the United States Patent and Trademark Office and through continuous use of the
mark in commerce since 1988. 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).
The <officemaximus.com>
domain name is confusingly similar to Complainant’s OFFICEMAX mark because it
merely adds the “.com” generic top-level domain to the mark and substitutes the
term “maximus” for the synonymous term “max.” Complainant has provided evidence
that “maximus” is the Latin root for “maximum” and that “max” is simply slang
for “maximum.” The addition of a generic top-level domain and the substitution
of a synonym for a term in the mark do not distinguish the disputed domain name
from Complainant’s 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); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb.
Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is
a contraction or shorthand for ‘Modern Props.’ ‘Mod’ cononotes [sic] ‘modern’
regardless of any other dictionary meanings, so the names are substantially
similar in meaning.”); see also Foot Locker Retail, Inc. v. Adams, FA
124858 (Nat. Arb. Forum Nov. 4, 2002) (finding that replacing a term in a mark
with a synonym results in a domain name that is confusingly similar to the
mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments unrefuted. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Because Respondent has
failed to submit a response, it has failed to propose any set of circumstances
that could substantiate its rights or legitimate interests in the <officemaximus.com>
domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO
Mar. 9, 2000) (finding that by not submitting a response, the respondent failed
to invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of the Complaint to be deemed true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii) because Respondent is using the disputed domain name to redirect
unsuspecting Internet users to a website operated by one of Complainant’s
direct competitors. The Panel infers that Respondent commercially benefits from
this diversion. Respondent makes opportunistic use of Complainant’s mark in
order to capitalize on the goodwill and fame associated with the OFFICEMAX
mark; thus, Respondent fails to establish rights or legitimate interests in the
domain name. See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252
(WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent
generated commercial gain by intentionally and misleadingly diverting users
away from Complainant's site to a competing website); see also Am. Online,
Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable
to find a bona fide offering of services in a respondent’s operation of [a]
web-site using a domain name which is confusingly similar to the Complainant’s
mark and for the same business.”); see also Ameritrade Holdings Corp. v.
Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
Respondent’s use of the disputed domain name to redirect Internet users to a
financial services website, which competed with Complainant, was not a bona
fide offering of goods or services).
No
evidence before the Panel suggests that Respondent is commonly known by the
<officemaximus.com> domain name under Policy ¶ 4(c)(ii).
Respondent’s WHOIS information indicates that the registrant of the disputed
domain name is known as “Yong Li”
and is not known by the confusingly similar second-level domain that infringes
on Complainant’s OFFICEMAX mark. Moreover, Respondent is not authorized or
licensed to use Complainant’s mark for any purpose. See Tercent Inc. v. Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is using a confusingly similar variation of Complainant’s well-known OFFICEMAX
mark within the <officemaximus.com> domain name to ensnare
unsuspecting Internet users. Respondent then redirects the users to a competing
commercial website. The Panel infers that Respondent profits from this
diversion. Such infringement is what the Policy was intended to remedy. Thus,
the Panel finds that Respondent registered and used the domain name in bad
faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); see also Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)).
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet users to a website that offers
services that directly compete with Complainant’s office supply services.
Respondent’s use of the <officemaximus.com> domain name
establishes that Respondent registered the domain name for the purpose of
disrupting the business of a competitor, which evidences bad faith registration
and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith
by attracting Internet users to a website that competes with Complainant’s
business); see also Puckett v. Miller, D2000-0297
(WIPO June 12, 2000) (finding that Respondent has diverted business from
Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain name, additional factors
can also be used to support findings of bad faith. See 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”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
Respondent’s
registration of the disputed domain name, which incorporates Complainant’s
well-known registered mark and simply substitutes a synonymous term, suggests
that Respondent knew of Complainant’s rights in the OFFICEMAX mark.
Additionally, Complainant’s trademark registration, on file at the United
States Patent and Trademark Office, gave Respondent constructive notice of
Complainant’s mark. Moreover, Respondent’s knowledge of Complainant’s rights in
the mark is evidenced by the fact that the website to which the domain name
resolves competes with Complainant. Thus, the Panel finds that Respondent chose
the <officemaximus.com> domain name based on the distinctive and
well-known qualities of Complainant’s mark, which evidences bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v.
Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link
between Complainant’s mark and the content advertised on Respondent’s website
was obvious, Respondent “must have known about Complainant’s mark when it
registered the subject domain name”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
(finding that Respondent demonstrated bad faith where Respondent was aware of
Complainant’s famous mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used the domain
names); see also Samsonite Corp.
v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration); see also Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
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 <officemaximus.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: February 25, 2005
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