Staples, Inc. and Staples the Office Superstores, LLC v. Fred Zugibe
Claim Number: FA1404001556995
Complainant is Staples, Inc. and Staples the Office Superstores, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Fred Zugibe (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <staplee.com>, registered with Fabulous.com Pty Ltd.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2014; the National Arbitration Forum received payment on April 30, 2014.
On May 1, 2014, Fabulous.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <staplee.com> domain name is registered with Fabulous.com Pty Ltd and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd has verified that Respondent is bound by the Fabulous.com Pty Ltd 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, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2014 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@staplee.com. Also on May 8, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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" 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 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
Complainant is the world’s largest office products company. Complainant states that it operates in 23 countries throughout North and South America, Europe, Asia and Australia. Complainant uses the STAPLES mark in connection with office supplies, equipment, and furniture, and related services. Complainant has spent millions of dollars in the advertising and promotion of its mark and has generated substantial goodwill in the mark as a result. Complainant alleges that its STAPLES mark has become famous internationally. Complainant owns the STAPLES mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,438,390, registered April 28, 1987).
Respondent’s <staplee.com> domain name is confusingly similar to Complainant’s STAPLES mark. Respondent replaces the second letter “s” in STAPLES with the letter “e.” Respondent additionally adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <staplee.com> domain name. Respondent has not been commonly known by the disputed domain name. Respondent is not sponsored by or legitimately affiliated with Complainant. Respondent is not using the disputed domain name to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Respondent uses the disputed domain name in connection with a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from the linked websites. Respondent’s use and registration of the disputed domain name is typosquatting.
Respondent registered and is using the <staplee.com> domain name in bad faith. Respondent has listed the disputed domain name for sale. Respondent uses the domain name in connection with a website that advertises links to websites that promote products that compete with Complainant. The resulting disruption of Complainant’s business constitutes bad faith. Respondent’s disputed domain name resolves to a website with the goal of generating revenue as a “click through” website. Respondent’s resolving website further features Complainant’s mark spelled correctly, additionally indicating Respondent’s intent to confuse Internet users. Respondent’s actions regarding the disputed domain name is typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
There are two Complainants in this matter: Staples, Inc. and Staples the Office Superstores, LLC. Staples, Inc. and its subsidiaries or licensees have provided retail services for office supplies and equipment under the STAPLES mark since 1985.
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” .
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel finds that there is a sufficient nexus or link between the Complainants to treat them as a single entity in this proceeding. The Complainants will be collectively referred to as “Complainant.”
Complainant is the world’s largest office products company. Complainant uses the STAPLES mark in connection with office supplies, equipment, and furniture, and related services. Complainant owns the STAPLES mark through its trademark registrations with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,438,390, registered April 28, 1987).
Respondent, Fred Zugibe, registered the <staplee.com> domain name on June 8, 2006. Respondent uses the disputed domain name in connection with a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from the linked websites. Respondent’s use and registration of the disputed domain name is typosquatting.
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.”).
Complainant owns rights in the STAPLES mark under Policy ¶ 4(a)(i) through registration with the USPTO (e.g., Reg. No. 1,438,390, registered April 28, 1987).See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010)(USPTO registration is sufficient to establish Policy ¶ 4(a)(i) rights).
Respondent’s <staplee.com> domain name is confusingly similar to Complainant’s STAPLES mark Policy ¶ 4(a)(i). The <staplee.com> domain name replaces the second letter “s” in STAPLES with the letter “e.” Respondent also adds the gTLD “.com.”
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).
Respondent has no rights or legitimate interests in the <staplee.com> domain name.
Respondent is not commonly known by the disputed domain name Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The WHOIS information shows that “Fred Zugibe” is the registrant of the disputed domain name. Respondent is not sponsored by or affiliated with Complainant.
Respondent’s use of the disputed domain name does not constitute 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 is using the <staplee.com> domain name in connection with a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Respondent presumably receives pay-per-click fees from the links displayed on the resolving website. Respondent’s resolving website displays links such as “Staples Office Supplies,” “Staples.com,” and “Office Depot.” Respondent’s use of resolving websites that promote links to the complainant and its competitors is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (the respondent’s use of the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise the complainant’s and its competitors’ products, is not 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’s use and registration of the <staplee.com> domain name is typosquatting. The <staplee.com> domain name replaces the letter “s” in STAPLES with the letter “e.” See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”). Accordingly, the Panel concludes that Respondent has no rights or legitimate interests in the <staplee.com> domain name under Policy ¶ 4(a)(ii).
Respondent has listed the disputed domain name for sale in bad faith. See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)(general offers to sell a domain name are evidence of bad faith).
Respondent uses the <staplee.com> domain name with a website that advertises links to websites that promote products that compete with Complainant. This use of the disputed domain name disrupts Complainant’s business and constitutes 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).”).
Respondent uses the domain name in connection with generating revenue as a click-through website. Respondent’s resolving website features Complainant’s mark spelled correctly, showing Respondent’s intent to confuse Internet users. Respondent is misleading users and taking advantage of Complainant’s well-known mark to achieve a wrongful competitive advantage and commercial gain. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006)(the respondent’s use of disputed domain name to operate a website featuring links to competing and non-competing commercial websites for commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Respondent’s use of the disputed domain name to provide links to Complainant’s competitors and offer products associated with Complainant, for commercial gain, shows bad faith use and registration under Policy ¶ 4(b)(iv).
Respondent’s typosquatting shows bad faith registration and use under Policy ¶ 4(a)(iii). See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <staplee.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 19, 2014
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