Staples, Inc. and Staples the Office Superstores, LLC v. Direct Privacy / Direct Privacy LTD
Claim Number: FA1404001557036
Complainant is Staples, Inc. and Staples the Office Superstores, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Direct Privacy / Direct Privacy LTD (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com>, registered with Dnc Holdings, 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.
John J. Upchurch 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 6, 2014, Dnc Holdings, Inc. confirmed by e-mail to the National Arbitration Forum that the <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names are registered with Dnc Holdings, Inc. and that Respondent is the current registrant of the names. Dnc Holdings, Inc. has verified that Respondent is bound by the Dnc Holdings, Inc. 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 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 10, 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@lstaples.com, postmaster@sgaples.com, postmaster@staplesl.com, postmaster@staplew.com, postmaster@staplles.com, postmaster@stapoes.com, postmaster@stqples.com, and postmaster@wtaples.com. Also on May 21, 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 16, 2014, 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" 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.
1. 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, as well as related services.
2. 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 thus alleges that its STAPLES mark has become famous internationally.
3. 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).
4. Respondent’s disputed domain names are confusingly similar to Complainant’s registered mark.
a. Respondent’s <lstaples.com>, <staplles.com> and <staplesl.com> domain names use Complainant’s entire STAPLES mark with the addition of an extra letter “L.”
b. Respondent’s <sgaples.com>, <staplew.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names replace a letter in Complainant’s STAPLES mark with an incorrect letter positioned conveniently close to the correct letter on a typing keyboard.
5. Respondent has no rights or legitimate interests in the disputed domain names.
a. Respondent has not ever been commonly known by the disputed domain name. Further, Respondent is not sponsored by or legitimately affiliated with Complainant in any way and Complainant has not authorized Respondent to use its STAPLES mark.
i. The earliest date on which Respondent registered a disputed domain name was February 1, 2001, which is significantly after Complainant’s first use in commerce as well as Complainant’s registration date for the STAPLES mark.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names.
i. Respondent uses the disputed domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant. See Complainant’s Exhibit H.
c. Respondent’s <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names are typosquatted versions of Complainant’s STAPLES mark.
6. Respondent registered and is using the disputed domain names in bad faith.
a. Respondent’s bad faith is demonstrated by Respondent’s use of 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. See Complainant’s Exhibit H.
b. Respondent’s bad faith is demonstrated by Respondent’s use of the domain name in connection with generating revenue as a click through website. Respondent is misleading users and taking advantage of Complainant’s well known mark to achieve a wrongful competitive advantage and commercially gain. See Complainant’s Exhibit H. Respondent’s use of Complainant’s mark spelled correctly on the resolving website further confuses Internet users as to Complainant’s affiliation with Respondent’s disputed domain names.
c. Respondents registration and use of the disputed domain names indicates typosquatting behavior, further indicating bad faith.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. 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.”
There are two Complainants in this matter: Staples, Inc. and Staples the Office Superstores, LLC. Complainant contends that Staples, Inc. and its subsidiaries or licensees have provided retail services for office supplies and equipment under the STAPLES mark since 1985.
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. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and shall treat them all as a single entity in this proceeding
1. Respondent’s <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names are confusingly similar to Complainant’s mark.
2. Respondent does not have any rights or legitimate interests in the <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names.
3. Respondent registered or used the <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names 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 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 asserts that it owns the STAPLES mark through its trademark registrations with the USPTO (e.g., Reg. No. 1,438,390, registered April 28, 1987). Complainant claims to use the STAPLES mark in connection with office supplies, equipment, furniture, and related services. The Panel notes that Respondent resides in the Cayman Islands according to the WHOIS record. Nonetheless, previous panels have determined that a complainant’s registration with a trademark agency is sufficient to establish the complainant’s rights in the registered trademark regardless of whether the respondent resides in the jurisdiction of the registration agency. In W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010), the panel wrote that, “[the Respondent’s] USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Consistent with such precedent, the Panel finds that Complainant’s USPTO registrations establish Complainant’s rights in the STAPLES mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent’s <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names are confusingly similar to Complainant’s registered mark. The Panel notes that Respondent’s <lstaples.com>, <staplles.com> and <staplesl.com> domain names use Complainant’s entire STAPLES mark with the addition of another letter “L.” In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) the panel found that “the mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).” As such, the Panel finds that Respondent’s spelling of Complainant’s STAPLES mark with an additional letter “L” does not differentiate it from Complainant’s STAPLES mark under Policy ¶ 4(a)(i).
Next, the Panel sees that Respondent’s <sgaples.com>, <staplew.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names replace a letter in Complainant’s STAPLES mark with an incorrect letter positioned conveniently close to the correct letter on a typing keyboard. For example, the Panel sees that Respondent’s <sgaples.com> domain name replaces the letter “t” in STAPLES with the letter “g” which is located directly underneath the letter “t” on a typing keyboard. The <staplew.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names all feature similar variations, as the Panel sees. The Panel notes that in Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel found 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. In the present proceeding, the Panel thus concludes that Respondent’s disputed domain names, featuring a version of Complainant’s STAPLES mark that differs by one letter, does not remove Respondent’s domain names from a confusingly similar analysis under Policy ¶ 4(a)(i).
Further, the Panel notes that all of Respondent’s <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names feature the generic top-level domain (“gTLD”) “.com.” Prior panels have conclusively held that gTLDs are required elements of every domain name, and thus are irrelevant to establishing the confusing similarity between a disputed domain name and a complainant’s registered mark. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel therefore concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s STAPLES mark under Policy ¶ 4(a)(i).
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.”).
Complainant asserts that Respondent has no rights or legitimate interests in the <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names. In so contending, Complainant alleges that Respondent has not ever been commonly known by the disputed domain names. The Panel notes that the WHOIS information lists “Direct Privacy” as the Registrant for all the disputed domain names. Complainant contends that Respondent is not sponsored by or legitimately affiliated with Complainant in any way and Complainant has not authorized Respondent to use its STAPLES mark. Complainant points out that the earliest date on which Respondent registered a disputed domain name was February 1, 2001, which is significantly after Complainant’s first use in commerce as well as Complainant’s registration date for the STAPLES mark. Respondent failed to submit a response in the proceeding, and therefore, has not contested Complainant’s assertions. As such, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to 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).
Complainant next argues that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Complainant asserts that Respondent uses the disputed domain names to redirect Internet users to websites featuring generic links to third-party websites, some of which directly compete with Complainant. See Complainant’s Exhibit H. The Panel sees that Respondent’s resolving websites display links, some of which include, “Staples.com,” “Staples- Official Site,” www.Staples.com,” “Cheap Office Supplies,” “Computer Office Furniture,” “Staples Office Equipment,” and “Officemax Official Site.” Previous panels have found that the use of a confusingly similar domain name to promote links to the complainant and its competitors does not constitute 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) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this 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).”). The Panel therefore concludes that Respondent is not using the <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names to establish 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) by causing the disputed domain name to resolve to a website promoting Complainant’s own website and business, as well as websites belonging to Complainant’s competitors.
Complainant further asserts that Respondent’s <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names are typosquatted versions of Complainant’s STAPLES mark. Previous panels have traditionally found typosquatting where there is a disputed domain name representing a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. 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 disputed domain names pursuant to Policy ¶ 4(a)(ii) because Respondent’s disputed domain names are typosquatted versions of Complainant’s STAPLES mark.
Complainant argues that Respondent has registration and use of the <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names was done in bad faith. Complainant asserts that Respondent’s bad faith is demonstrated by Respondent’s use of the domain name in connection with a website that advertises links to websites that promote products that compete with Complainant, or links displaying Complainant’s STAPLES mark spelled correctly. See Complainant’s Exhibit H. Complainant states that the resulting disruption of Complainant’s business constitutes bad faith. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. 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 finds evidence of bad faith registration and use of the disputed domain names under ¶ 4(b)(iii) because Complainant has provided the Panel with evidence showing Respondent provides links to Complainant’s competitors.
Complainant next contends that Respondent’s bad faith is also demonstrated by Respondent’s use of the domain name in connection with generating revenue as a click through website. Complainant urges that Respondent is misleading users and taking advantage of Complainant’s well known mark to achieve a wrongful competitive advantage. Complainant also indicates that Respondent’s use of Complainant’s mark spelled correctly on the resolving website further confuses Internet users as to Complainant’s affiliation with Respondent’s disputed domain names. See Complainant’s Exhibit H. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel found that, “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).” Here, the Panel compares Respondent’s current use of the disputed domain names, to the panel decision in Univ. of Houston Sys. v. Salvia Corp. and concludes that Respondent’s use of the disputed domain names to provide links to Complainant’s competitors and promote products associated with Complainant, likely for click through revenue, indicates bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant also argues that Respondents registration and use of the disputed domain names indicates typosquatting behavior, thus further indicating bad faith. Past panels have consistently held that typosquatting is a practice that takes advantage of common and basic typographical errors, and is thus motivated by bad faith. 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).”). The Panel thus concludes that Respondent’s misspelling of Complainant’s STAPLES mark in the disputed domain names is a strong indication of bad faith typosquatting under 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 <lstaples.com>, <sgaples.com>, <staplesl.com>, <staplew.com>, <staplles.com>, <stapoes.com>, <stqples.com>, and <wtaples.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 27, 2014
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