Xerox Corporation v. Joseph Slomka / AllStar dba Quality Business Systems
Claim Number: FA2106001949448
Complainant is Xerox Corporation ("Complainant"), represented by Steven M. Levy of FairWinds Partners LLC, Pennsylvania, USA. Respondent is Joseph Slomka / AllStar dba Quality Business Systems ("Respondent"), Guam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xeroxguam.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 2, 2021; the Forum received payment on June 2, 2021.
On June 3, 2021, GoDaddy.com, LLC confirmed by email to the Forum that the <xeroxguam.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 9, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2021 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@xeroxguam.com. Also on June 9, 2021, the Written Notice of the Complaint, notifying Respondent of the email 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 July 2, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant offers products that include copiers, printers, fax machines, scanners, desktop software, digital printing and publishing systems, and related supplies, along with services relating to its document-management business. Complainant has used the XEROX mark in connection with its business since 1948. Complainant claims that the mark has become famous around the world as a result of long usage and promotion. Complainant owns various registrations for the XEROX mark, including a United States registration for the mark in standard character form that issued in 1950. Complainant states that it operates a thriving business in the Territory of Guam that includes sales reps, technicians, support staff, a call center, and a warehouse.
Respondent registered the disputed domain name <xeroxguam.com> via a privacy registration service in May 2017. The domain name is being used to redirect Internet users to Respondent's Guam Copier website at <guamcopier.com>, at which Complainant promotes Kyocera products and related services, along with "cheap" cartridges for printers from Xerox and several other manufacturers (displaying the logos for these manufacturers). Complainant states that Kyocera is one of its main competitors, and that Respondent is not an authorized dealer for any of Complainant's products. Complainant states further that Respondent is not commonly known by the disputed domain name and is not affiliated with Complainant or authorized to use its mark.
Complainant contacted Respondent in May 2021, requesting that he relinquish the disputed domain name. Respondent replied that the domain name uses "xerox" in its descriptive sense as a type of copying process, rather than in its trademark sense. (The Panel is skeptical of this position, but declines to address it here because Respondent has not elected to pursue it in this proceeding.) Respondent also claimed to "have invested more than $75K in developing www.xeroxguam.com" and suggested that Respondent would be willing to sell the domain name for an appropriate price.
Complainant contends on the above grounds that the disputed domain name <xeroxguam.com> is confusingly similar to its XEROX mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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(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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <xeroxguam.com> incorporates Complainant's registered XEROX trademark, adding the generic term "Guam" and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Xerox Corp. v. Isaac Goldstein / DOMAIN FOR SALE CHECK AFTERNIC.COM, FA 1876802 (Forum Feb. 3, 2020) (finding <xeroxcanada.com> confusingly similar to XEROX); Xerox Corp. v. printers, FA 1403229 (Forum Sept. 26, 2011) (finding <xeroxvancouver.com> confusingly similar to XEROX); Bayerische Motoren Werke AG v. Whois Privacy Protection Service by Value-Domain / Kei Sakurai, LuckyDomain, D2015-0246 (WIPO Apr. 21, 2015) (finding <bmwguam.com> confusingly similar to BMW). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used to promote directly competing products and services. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Xerox Corp. v. printers, supra (finding lack of rights or interests in similar circumstances); Cisco Technology, Inc. v. BY / Raymond Wang, FA 1923254 (Forum Jan. 5, 2021) (finding lack of rights or interests where domain name incorporating mark was used for website featuring competing products and services, and using the mark to a greater extent than needed to describe them).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name that incorporates Complainant's famous registered mark, and is using it to direct Internet users to a website that promotes a directly competing brand of products, along with other competing products and services. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., Xerox Corp. v. printers, supra (finding bad faith in similar circumstances); Cisco Technology, Inc. v. BY / Raymond Wang, supra (same). Furthermore, Respondent's veiled offer to sell the disputed domain name to Complainant, in the context of Respondent's dubious claim to have invested "more than $75K" in the domain name (considering that all it does is redirect to a different URL), suggests that Respondent has a bad faith intent to profit from the sale of the domain name to Complainant or a competitor thereof. The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xeroxguam.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 5, 2021
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