Office Depot, LLC and The Office Club, Inc. v. Khalil Shaikh
Claim Number: FA2211002020586
Complainants are Office Depot, LLC and The Office Club, Inc. (“Complainant”), represented by Joshua M. Dalton of Morgan, Lewis & Bockius LLP, Massachusetts. Respondent is Khalil Shaikh (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officedepotfeedback.shop>, registered with NameCheap, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on November 16, 2022; Forum received payment on November 16, 2022.
On November 16, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <officedepotfeedback.shop> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 November 17, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2022 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@officedepotfeedback.shop. Also on November 17, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 14, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In this proceeding 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.” 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.”
Complainant (Co-complainant) The Office Club, Inc. is a wholly owned subsidiary of Complainant (Co-complainant) Office Depot, LLC. The Panel therefore finds that the two Complainants (herein referred to collectively as “Complainant”) have a sufficient nexus to each other and to the matters complained of such that they shall be treated as if a single entity. Notably, there is no objection by Respondent to the two named Complainants proceeding together as if one. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names).
A. Complainant
Complainant contends as follows:
Complainant, Office Depot, LLC and The Office Club, Inc., offer office supply retail services.
Complainant has rights in the OFFICE DEPOT mark based upon registration with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <officedepotfeedback.shop> domain name is confusingly similar to Complainant’s mark because it contains the OFFICE DEPOT mark in its entirety, merely adding the term “FEEDBACK” and the generic top-level domain name (“gTLD”) “.shop” to form the at-issue domain name.
Respondent does not have rights or legitimate interests in the <officedepotfeedback.shop> domain name. Respondent is not licensed or authorized to use Complainant’s OFFICE DEPOT mark and is not commonly known by the disputed domain name.
Respondent registered and uses the <officedepotfeedback.shop> domain name in bad faith. Respondent uses the at-issue domain name to pass off as Complainant. Respondent registered the disputed domain name using a privacy shield. Finally, Respondent registered the domain name with actual knowledge of Complainant’s rights in the OFFICE DEPOT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in OFFICE DEPOT.
Respondent responded to the dispute resolution provider via email after receiving the Complaint and therein stated: “Please, take this name.”
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 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”).
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶ 4(a)ii or 4(a)iii, when a respondent consents to the requested relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case, Respondent agrees to transfer its at-issue domain name to Complainant stating in its email response: “Please, take this name.” The Panel, noting that the parties agree as to the disposition of the at-issue domain name, follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name(s) to the complainant. As more fully discussed in the cases referenced immediately above, as a prerequisite to Complainant obtaining its requested relief ‑ even where Respondent agrees to such relief ‑ Complainant must demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Notably, without requiring a prerequisite finding under paragraph 4(a)(i) a Complainant lacking rights in an at-issue domain name might, via the UDRP, acquire such domain name(s) from a Respondent that also has no rights in such domain name(s).
Here, Complainant shows it has rights to the OFFICE DEPOT mark through its registration of such mark with the USPTO. Registration of a mark with a trademark agency is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”). Furthermore, the at-issue domain name contains Complainant’s OFFICE DEPOT trademark less its domain name impermissible space, followed by the term “feedback” and with all followed by the “.shop” top-level domain name. The differences between the <officedepotfeedback.shop> domain name and Complainant’s trademark are insufficient to distinguish the domain name from Complainant’s trademark under Policy ¶ 4(a)(i). Therefore, the Panel finds that <officedepotfeedback.shop> is confusingly similar to Complainant’s OFFICE DEPOT mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable 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.”); see also, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
In light of Respondent’s agreeing to transfer the at-issue domain name as discussed above, the Panel finds that further analysis regarding paragraph 4(a)(ii) or 4(a)(iii) of the Policy is not warranted and that the domain name should be transferred to Complainant.
Having established that the parties agree to the requested relief and that the at-issue domain name is confusingly similar to a trademark in which the Complainant has rights, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <officedepotfeedback.shop> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 14, 2022
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