Xerox Corporation v. Isaac Goldstein / DOMAIN FOR SALE CHECK AFTERNIC.COM
Claim Number: FA1912001876802
Complainant is Xerox Corporation (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia. Respondent is Isaac Goldstein / DOMAIN FOR SALE CHECK AFTERNIC.COM (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xeroxcanada.com> (the “Disputed Domain Name”), registered with DropCatch.com 513 LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 26, 2019; the Forum received payment on January 2, 2020.
On December 30, 2019, DropCatch.com 513 LLC confirmed by e-mail to the Forum that the <xeroxcanada.com> Disputed Domain Name is registered with DropCatch.com 513 LLC and that Respondent is the current registrant of the Disputed Domain Name. DropCatch.com 513 LLC has verified that Respondent is bound by the DropCatch.com 513 LLC 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 January 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2020 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@xeroxcanada.com. Also on January 2, 2020, 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 January 27, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun 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" 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 Disputed Domain Name be transferred from Respondent to Complainant.
A. Complainant
--Complainant has rights in the XEROX mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., U.S. Reg. No. 525,717, registered May 30, 1950).
--Respondent’s <xeroxcanada.com> Disputed Domain Name is confusingly similar to Complainant’s mark as Respondent merely adds the geographically descriptive word “Canada.”
--Respondent has no rights or legitimate interests in the <xeroxcanada.com> Disputed Domain Name as, among other things, Respondent is not commonly known by the Disputed Domain Name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark.
--Respondent registered and used the <xeroxcanada.com> Disputed Domain Name in bad faith because (i) Respondent’s Disputed Domain Name resolves to a pay-per-click page with third party sponsored links; (ii) Respondent offers the Disputed Domain Name for sale; and (iii) Respondent has shown a pattern of bad faith registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a global leader in the document management field and offers 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 owns the following trademarks in the United States and Canada, including, but not limited to: XEROX, United States Reg. No. 525,717, registered on May 30, 1950; XEROX, United States Reg. No. 525,717, registered on June 15, 1953; XEROX, United States Reg. No. 580,296, registered on September 22, 1953; XEROX, Canadian Trademark Reg. No. UCA43818, registered on February 21, 1997; and XEROX, Canadian Trademark No. TMA173144, registered on December 4, 2000 (hereinafter collectively referred to as the “XEROX Mark”).
Complainant owns the XEROX Mark and makes extensive use of it such that it has become famous throughout the world. Complainant has continually used the XEROX Mark in commerce since 1948 and was the world’s first commercial producer of photocopiers.
The Disputed Domain Name was registered on November 30, 2019. The Disputed Domain Name resolves to a pay-per-click page displaying monetized third party links which divert visitors to websites which are not associated with Complainant and which, in many instances, feature products that compete with Complainant’s products.
Thus, Complainant has established that the Disputed Domain Name is confusingly similar to Complainant’s XEROX Mark, Respondent lacks rights or legitimate interests in the Disputed Domain Name, and Respondent registered and is using 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 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 Disputed 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 Disputed Domain Name; and
(3) the Disputed 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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel concludes that Complainant has rights in the XEROX Mark based upon registration of the trademark with the USPTO (e.g., U.S. Reg. No. 525,717, registered on May 30, 1950). Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”)
Respondent’s <xeroxcanada.com> Disputed Domain Name is confusingly similar to the XEROX Mark under Policy ¶ 4(a)(i). The Disputed Domain Name incorporates the XEROX Mark in its entirety followed by the geographically descriptive term “Canada,” followed by the generic Top-Level Domain (“gTLD”) “.com.”
The addition of a geographically descriptive term and a gTLD to an otherwise recognizable mark may not sufficiently distinguish the Disputed Domain Name from the XEROX Mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
Complainant alleges that Respondent holds no rights or legitimate interests in the Disputed Domain Name. In order for Complainant to succeed under this element, it 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 that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Disputed Domain Name as Respondent has not provided evidence nor proven that it is not commonly known by the Disputed Domain Name, nor has Complainant authorized Respondent to use the XEROX Mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. Further, Respondent fails to use the <xeroxcanada.com> Disputed Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is hosting competitive third party hyperlinks, which the Panel finds is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, Complainant has demonstrated the existence of Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Panel finds that Respondent registered and used the <xeroxcanada.com> Disputed Domain Name in bad faith because Respondent offers the Disputed Domain Name for sale in excess of the Respondent’s out-of-pocket registration costs. See Capital One Financial Corp. v. haimin xu, FA 1819364 (Forum Jan. 8, 2019) (“A general offer to sell a domain name can be evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith per Policy ¶ 4(b)(i).”).
Second, Respondent has been a party to prior UDRP decisions that resulted in the transfer of the disputed domain names at issue. Thus, Respondent has engaged in a pattern of cybersquatting evidencing bad faith under Policy ¶4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Therefore, the Panel finds that Respondent has engaged in a pattern of prior bad faith registration under Policy ¶4(b)(ii).
Third, Respondent is attempting to attract Internet users for commercial gain by hosting third party hyperlinks to competing products on a pay-per-click basis. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). Complainant provided a screenshot of the <xeroxcanada.com> Disputed Domain Name’s resolving webpage showing links for products such as “COPIER MACHINE” and “FAX MACHINE,” products that are competitive to those offered by Complainant.
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <xeroxcanada.com> Disputed Domain Name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: February 3, 2020
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page