Office Depot, LLC and The Office Club, Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2104001940675
Complainant is Office Depot, LLC and The Office Club, Inc. ("Complainant"), represented by Joshua M. Dalton of Morgan, Lewis & Bockius LLP, Massachusetts, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD ("Respondent"), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwofficedepot.com>, registered with Media Elite Holdings Limited.
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 April 7, 2021; the Forum received payment on April 7, 2021.
On April 9, 2021, Media Elite Holdings Limited confirmed by email to the Forum that the <wwofficedepot.com> domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 April 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 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@wwofficedepot.com. Also on April 13, 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 May 6, 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 (a limited liability company and an intellectual property holding company that is its wholly owned subsidiary) provides business services and supplies, products, and technology solutions to companies of all sizes. Complainant has approximately 44,000 employees and over 1,000 physical locations throughout the United States, and its 2018 revenues exceeded $11 billion. Complainant has used the OFFICE DEPOT mark continuously since 1986 in connection with its retail office supply stores and related goods and services. Complainant owns numerous United States trademark registrations for OFFICE DEPOT in standard character form and otherwise.
The disputed domain name <wwofficedepot.com> was registered in November 2013. The registration was held in the name of a privacy registration service immediately prior to the commencement of this proceeding, at which time the privacy shield was removed and Respondent was identified as the registrant of the domain name. Complainant states that the domain name was formerly redirected to a Rakuten.com web page, and that it currently redirects to Complainant's website with an embedded affiliate code. Complainant states that it does not have a business relationship with Respondent, that Respondent is not authorized to use Complainant's mark in any manner, and that Respondent is not commonly known by the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <wwofficedepot.com> is confusingly similar to its OFFICE DEPOT 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 <wwofficedepot.com> incorporates Complainant's registered OFFICE DEPOT trademark, adding the letters "WW" and appending the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., TripAdvisor, LLC v. Above.com Domain Privacy / Above.com, FA 1623514 (Forum July 22, 2015) (finding <wwtripadvisor.com> confusingly similar to TRIPADVISOR); The Office Club, Inc. & Office Depot, Inc. v. 齐燕杰 c/o 唐王中拓科技, FA 1299748 (Forum Feb. 22, 2010) (finding <wwwofficedepot.com> confusingly similar to OFFICE DEPOT). 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 its sole apparent uses have been to redirect Internet users to a competitor of Complainant and to an affiliate version of Complainant's website. Such uses are unlikely to give rise to rights or legitimate interests under the Policy. See, e.g., TripAdvisor, LLC v. Above.com Domain Privacy / Above.com, supra (finding lack of rights or interests in similar circumstances); PersonalizationMall.com v. Bill Dash, FA 1563874 (Forum July 16, 2014) (same).
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)(iii) of the Policy, 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 registered a domain name incorporating and obviously intended to create confusion with Complainant's mark, and has used it to profit from such confusion by redirecting it to a competitor of Complainant and to Complainant's website using an affiliate link. Such conduct is indicative of bad faith registration and use under the policy. See, e.g., TripAdvisor, LLC v. Above.com Domain Privacy / Above.com, supra (finding bad faith in similar circumstances); PersonalizationMall.com v. Bill Dash, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwofficedepot.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: May 10, 2021
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