Xerox Corporation v. Milen Radumilo
Claim Number: FA2001001879314
Complainant is Xerox Corporation (“Complainant”), represented by Steven M. Levy of FairWinds Partners LLC, District of Columbia, United States. Respondent is Milen Radumilo (“Respondent”), Barbados.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <fuji-xerox.co>, 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 17, 2020; the Forum received payment on January 17, 2020.
On January 17, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <fuji-xerox.co> 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 January 20, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 10, 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@fuji-xerox.co. Also on January 20, 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 February 16, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 <fuji-xerox.co> be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the FUJI XEROX and XEROX trademarks established though its portfolio of trademark registrations described below and its extensive use of the marks including on the Internet in its documentation management business.
Complainant submits that the disputed domain name <fuji-xerox.co> is identical or confusingly similar to Complainant’s registered FUJI XEROX and XEROX marks, arguing that the word XEROX is an arbitrary, coined term and has no generic meaning in any language known to Complainant and therefore Internet users will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the disputed domain name.
Complainant submits that it has been held, in decisions too numerous to mention, that where the second level of the disputed domain name is identical to the asserted trademark, the requirements of Policy ¶ 4(a)(i) are satisfied.
Complainant asserts that in this Complaint Respondent merely adds a hyphen and the <.co> gTLD extension to Complainant’s FUJI XEROX mark in its entirety and this clearly satisfies the required standard of Policy ¶ 4(a)(i). See, e.g., Compagnie Gervais Danone and Danone US, LLC v. Asther Crow, DME2019-0008 (WIPO Oct. 19, 2019) (“The disputed domain name contains the Complainant’s trademark DANNON in its entirety and is hence identical with the Complainant’s trademark DANNON.”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. Referring to the name of Respondent identified in the Registrar’s WhoIs, Complainant submits that Respondent is not commonly known by the disputed domain name or by the terms “FUJI” or “XEROX”; nor does Respondent operate a business or other organization under the XEROX or FUJI XEROX marks or the disputed domain name. Complainant adds that there is no evidence that Respondent owns any trademark or service mark rights in the “XEROX” or “FUJI XEROX” names. See Dell Inc. v. George Dell and Dell Net Solutions, D2004-0512 (WIPO Aug. 24, 2004) (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name.”).
Complainant argues that the evidence shows that the disputed domain name resolves to a classic pay-per-click page displaying links which divert visitors - likely Complainant’s customers and potential customers - to other websites which are not associated with Complainant and which, in many instances, feature services that compete with Complainant’s document printing and handling products. Complainant argues that such use is neither a bona fide commercial use of the disputed domain name nor a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain. Complainant cites Rado Uhren AG v. Domain Admin, Whois Privacy Corp. / Ryan G Foo / PPA Media Services, D2016-1371 (WIPO, August 22, 2016) (no right or legitimate interests where “the Domain Name resolves to a pay-per-click website which contains links not only to products of Complainant but also to different categories which contain links to products of competitors of Complainant”).
Complainant submits that the disputed domain name was registered and is being used in bad faith arguing that given the international fame of the Complainant’s marks, Complainant’s use of the legitimate website at <www.FujiXerox.com> and the appearance thereof in the disputed domain name, it is inconceivable that Respondent was not aware of their existence.
Complainant asserts that nearly every business office has, at some time or another, owned or used a branded photocopier, printer or scanner that originates from Complainant).
Complainant repeats that the word “XEROX” is a coined term and does not have a known meaning in any language which points to the registrant’s knowledge of Complainant and its marks. See Xerox Corporation v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Ong Le Trung Kien, WIPO Case No. D2017-1149 (WIPO Aug. 31, 2017) (“The Respondent has used the disputed [fujixeroxvietnam.com] domain name specifically to refer to the Complainant’s trademark and its products and the Panel infers in the circumstances that the Respondent registered the disputed domain name with the Complainant’s trademark in mind.”).
Complainant submits that Respondent is seeking commercial gain from its registration and use of the disputed domain name, arguing that when a visitor to the website to which the disputed domain name resolves, clicks on one of the links on the website, Respondent most likely, receives remuneration based upon the Internet traffic that third party website owners receive from Respondent’s website.
Complainant argues that by using the disputed domain name for this purpose, Respondent intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with Complainant’s marks as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
Finally, Complainant alleges that the Respondent is a well-known cybersquatter who has engaged in a longstanding pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. Complainant submits that a number of UDRP cases have been successfully brought against Respondent including Lookout, Inc. v. Milen Radumilo, Claim No. FA 1824568 (Forum Feb. 13, 2019), in which it was specifically stated that “Respondent has established a pattern of bad faith registration and use of domain names and this is evidence of bad faith registration and use of the Domain Name involved in this proceeding.” Complainant also cites, Abbott Laboratories v. Milen Radumilo, Claim No. FA 1824865 (Forum Feb. 11, 2019) (“Respondent has been subject to a number of adverse decisions suggesting a pattern of conduct under Policy 4(b)(ii).”); and Discover Financial Services v. Milen Radumilo, Claim No. FA 1784143 (Forum June 1, 2018) (“When a respondent has been subject to numerous adverse UDRP rulings, bad faith under Policy ¶ 4(b)(ii) may be found...”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant carries on a global business providing document management products and services including copiers, printers, fax machines, scanners, desktop software, digital printing and publishing systems, toners and related supplies.
Complainant owns and uses the XEROX and FUJI XEROX trademarks on its goods and services and is the owner of the following registrations for the FUJI XEROX marks:
· Cambodia registered trademark FUJI XEROX Logo, registration number KH/3162/09, registered on August 6, 2009 for goods in class 37;
· Republic of Korea registered trademark FUJI XEROX (Korean), registration number 0174703, registered on July 12, 1989 classes 16 and 20;
· Republic of Korea registered trademark FUJI XEROX, registration number 0174704 registered on July 12, 1989 for goods in classes 16 and 20;
· Malaysia registered trademark FUJI XEROX, registration number 91005509, registered on September 11, 2008, for goods in class 9;
· Australia registered trademark FUJI XEROX Logo, registration number 1244793, registered on April 23,2009 in classes 2, 9, 16, 35, 37, 40, 42.
Complainant has an established Internet presence and its Internet domain names <fujixerox.com> and <fujixeroxrinters.com.au> and <fujixeroxprinters.com.vn> resolve to its website that promotes its goods and services.
The disputed domain name was registered on December 3, 2019 and resolves to a website that purports to provide links to third party websites that include sources of supply for printers and toners that compete with Complainant.
In the absence of any Response from Respondent, there is no information available about Respondent except for that provided in the Complaint, the Registrar’s WhoIs and the Registrar’s response to the Forum’s request for verification of the registration details of the disputed domain name.
Complainant has adduced uncontested evidence that Respondent has engaged in a longstanding pattern of bad faith registration of domain names that are confusingly similar to third party trademarks and has been the unsuccessful respondent in a number of complaint proceedings under the Policy.
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”).
Complainant has adduced convincing uncontested evidence that it has rights in the XEROX and FUJI XEROX trademarks acquired through its portfolio of trademark registrations described above and its extensive use of the trademarks in its international document management business.
The disputed domain name contains Complainant’s XEROX mark in its entirety and the FUJI XEROX mark is also presented in its entirety, with the additional hyphen. Both elements “fuji” and “xerox” are distinctive elements. The term “xerox” is a particularly distinctive element as it is a coined work with no meaning other than as Complainant’s trademark. Taken together the combination of the elements “fuji-xerox” specifically reference Complainant’s marks.
Neither the hypen nor the <.co> gTLD extension, separately or together create any distinguishing difference between the domain name and Complainant’s mark.
In the circumstances this Panel finds that the disputed domain name is confusingly similar to the Complainant’s XEROX and FUJI XEROX trademarks.
Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(ii).
Complainant has made out an unanswered prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing with supporting evidence that Respondent is not commonly known by the disputed domain name; that Respondent is not commonly known by the terms “FUJI” or “XEROX”; that Respondent does not operate a business or other organization under the XEROX or FUJI XEROX marks or the disputed domain name; that there is no evidence that Respondent owns any trademark or service mark rights in the “XEROX” or “FUJI XEROX” names; that the evidence shows that the disputed domain name resolves to a classic pay-per-click page displaying links which divert visitors, including Complainant’s customers and potential customers, to third party competing websites and that such use cannot be categorized as either bona fide commercial use or a legitimate non-commercial fair use.
In such circumstances, the burden of production shifts to Respondent to prove that Respondent has rights or legitimate interests. As Respondent has failed to respond to the Complaint to discharge that burden, this Panel finds that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Given the unique character of the XEROX mark and the distinctive character of the combination of the terms “fuji” and “xerox” in the disputed domain name, and long and extensive use of the XEROX and FUJI XEROX marks in commerce including on Complainant’s website, this Panel finds that on the balance of probabilities it is improbable that the registrant of the disputed domain name was unaware of Complainant, its rights and marks when the disputed domain name was registered.
This Panel finds that the weight of uncontested evidence shows that the disputed domain name chosen, registered and is being used to take predatory advantage of Complainant’s reputation and goodwill in the XEROX and FUJI XEROX marks. There is no other plausible explanation.
The uncontested evidence also shows that Respondent is using the disputed domain name to divert Internet traffic to a website that is established only to provide links to products associated with Complainant. This Panel accepts Complainant’s submissions that it is most probable that Respondent is receiving pay-per-click revenue from diverting Internet traffic intended for Complainant.
This Panel finds therefore that the disputed domain name is being used by Respondent in bad faith in order to attract, for commercial gain, Internet searchers to Respondent’s website by creating a likelihood of confusion with Complainant’s XEROX and FUJI XEROX marks as to source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on the website or location.
In reaching this conclusion, this Panel is fortified by the uncontested evidence adduced by Respondent that Respondent has been the unsuccessful respondent in a number of complaints under the Policy and has failed to respond to this Complaint in any way.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <fuji-xerox.co> domain name be TRANSFERRED from Respondent to Complainant.
________________________
James Bridgeman SC
Panelist
Dated: February 17, 2020
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