Staples, Inc. and Staples the Office Superstore, LLC v. Cpn Now
Claim Number: FA0904001257595
Complainant is Staples, Inc. and Staples the Office Superstore, LLC (“Complainant”), represented by Sarah J. Miller, of Sheridan Ross P.C., Colorado, USA. Respondent is Cpn Now (“Respondent”), Puerto Rico.
REGISTRARS AND DISPUTED DOMAIN
NAMES
The domain names at issue are <cpn-now.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and <staples-coupons.com> and <staples-coupon.com>, registered with 1 & 1 Internet Ag.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 14, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 15, 2009.
On April 22, 2009, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <staples-coupons.com> domain name is registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the name. On May 8, 2009, 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <staples-coupon.com> domain name is registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the name. On May 22, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <cpn-now.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. 1 & 1 Internet Ag and Melbourne It, Ltd. d/b/a Internet Names Worldwide have verified that Respondent is bound by the 1 & 1 Internet Ag and Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreements and have thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 18, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@staples-coupons.com, postmaster@staples-coupon.com, and postmaster@cpn-now.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 <staples-coupons.com> and <staples-coupon.com> domain names be transferred from Respondent to Complainant. Complainant requests that the <cpn-now.com> domain name be cancelled.
A. Complainant makes the following assertions:
1. Respondent’s <staples-coupons.com> and <staples-coupon.com> domain names are confusingly similar to Complainant’s STAPLES mark.
2. Respondent does not have any rights or legitimate interests in the <staples-coupons.com>, <staples-coupon.com>, and <cpn-now.com> domain names.
3. Respondent registered and used the <staples-coupons.com>, <staples-coupon.com>, and <cpn-now.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Staples, Inc. and Staples the Office Superstore, LLC (collectively, “Complainant”), are the owners of the STAPLES mark, registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,459,182 issued September 29, 1987). Complainant uses its STAPLES mark in connection with the retail supply services of business and office products. Complainant owns and operates the STAPLES chain of retail stores.
Respondent registered the <staples-coupons.com> and <staples-coupon.com> domain names on November 1, 2008. Respondent registered the <cpn-now.com> domain name on October 22, 2008. The disputed domain names each resolve to a website selling coupons for consumers to use at Complainant’s STAPLES retail stores. Complainant contends that these coupons are not legitimate and are not authorized by Complainant. The order form displayed on the resolving website asks for personal information including name, credit card, and banking information. Respondent’s resolving website contains the disclaimer: “Please note we are not affiliated with Staples or Staples.com.”
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
The Panel finds that Complainant, by registering its mark with the USPTO, has established its rights in the STAPLES mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that the <staples-coupons.com> and <staples-coupon.com> domain names are confusingly similar to Complainant’s STAPLES mark under Policy ¶ 4(a)(i). The disputed domain names incorporate Complainant’s STAPLES mark in its entirety with the addition of a hyphen, the generic term “coupon” or “coupons,” and the generic top-level domain “.com.” The Panel finds that the addition of the hyphen fails to sufficiently differentiate Respondent’s domain names from Complainant’s mark. The addition of the generic terms “coupon” or “coupons” also fail to adequately distinguish Respondent’s domain names, especially since the coupons at issue on Respondent’s website relate to Complainant’s STAPLES stores. The Panel further concludes that the affixation of a generic top-level domain “.com” is inconsequential in regards to a Policy ¶ 4(a)(i) analysis. See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). Therefore, the Panel concludes that Respondent’s <staples-coupons.com> and <staples-coupon.com> domain names are confusingly similar to Complainant’s STAPLES mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶4(a)(i) for <staples-coupons.com> and <staples-coupon.com>.
Complainant asserts that the <cpn-now.com> domain name is not confusingly similar to any mark in which Complainant has trademark rights. Complainant contends however, that the <cpn-now.com> domain name resolves to the same website as the <staples-coupons.com> and <staples-coupon.com> domain names, and so Complainant requests the <cpn-now.com> domain name be cancelled. The Panel concludes that Respondent’s <cpn-now.com> domain name is not identical or confusingly similar to Complainant’s STAPLES mark and Complainant does not assert rights in any other marks. Thus, Complainant has not satisfied Policy ¶ 4(a)(i) with respect to Respondent’s <cpn-now.com> domain name. See Knight-Ridder, Inc. v. Cupcake Patrol, FA 96551 (Nat. Arb. Forum Mar. 6, 2001) (finding that the domain name <hearld.com> is not identical or confusingly similar to a trademark in which the complainant has rights); see also FRH Freies Rechenzerntrum Heiberufe v. Ingenieurburo FRH Stuttgard, FA 102945 (Nat. Arb. Forum Jan. 18, 2002) (determining that the complainant has not proven by a preponderance of the relevant, admissible, and credible evidence that the domain name in question is identical to a trademark in which the complainant has rights despite the complainant’s mark being the dominant feature of the complainant’s trade name).
Since Complainant has not satisfied Policy ¶ 4(a)(i) with respect to the <cpn-now.com> domain name, the Panel declines to analyze Policy ¶¶ 4(a)(ii) and (iii) in regards to the <cpn-now.com> domain name. See Pom Wonderful LLC v. Redavid, FA 846577 (Nat. Arb. Forum Jan. 8, 2007) (deciding not to consider the second and third elements of the Policy after the complainant failed to establish that the disputed domain name was confusingly similar to its mark under the first element of the Policy); see also Occidental Hoteles Mgmt., S.A., & Corictal II, S.A. v. Hargrave Arts, LLC, FA 959645 (Nat. Arb. Forum May 21, 2007) (deciding not to inquire into the remaining elements of the Policy where the complainant could not satisfy Policy ¶ 4(a)(i)).
Complainant asserts
that Respondent lacks rights and legitimate interests in the <staples-coupons.com>
and <staples-coupon.com> domain names. Complainant must first establish its prima facie case to support these
contentions, and the Panel finds that Complainant has done so in these
proceedings. Once Complainant has
produced a sufficient prima facie
case, the burden shifts to Respondent to show that it does have rights or
legitimate interests in the <staples-coupons.com> and
<staples-coupon.com> domain names under Policy ¶ 4(c). Respondent failed to submit a response in
these proceedings, thus the Panel may infer that Respondent lacks rights and
legitimate interests in the disputed domain names. However, the Panel will review the record to
determine whether Respondent has any rights or legitimate interests in the
disputed domain names under Policy ¶ 4(c). See
Hanna-Barbera
Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that
the complainant must first make a prima facie case that the respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name).
The <staples-coupons.com> and <staples-coupon.com> domain names each resolve to a website that prompts consumers to enter their personal credit card information in order to purchase illegitimate coupons. Complainant contends that Respondent is using the website to “phish” personal information from Internet users. A phishing scheme is a practice “intended to defraud consumers into revealing personal and proprietary information.” Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004). The Panel presumes Respondent is attempting to extract this personal information from unsuspecting Internet users in order to defraud them. The Panel finds this use to constitute neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”); see also Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)).
Furthermore, the Panel finds no evidence in the record suggesting that Respondent is commonly known by the <staples-coupons.com> or <staples-coupon.com> domain names. Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the STAPLES mark, and the WHOIS information identifies Respondent as “Cpn Now.” Thus, the Panel concludes that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant also asserts that the addition of a disclaimer on
Respondent’s website fails to mitigate consumer confusion. The Panel finds that the addition of a
disclaimer does not negate a finding that Respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See DaimlerChrysler
Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer,
when the domain name consists of the complainant’s well-known trademark, does
not counter the expectation of Internet users that the domain name is sponsored
by the complainant); see also AltaVista
Co. v. AltaVisa, FA 95480 (Nat.
Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could
not, accompany the domain name, then the “domain name attracts the consumer’s
initial interest and the consumer is misdirected long before he/she has the
opportunity to see the disclaimer”).
Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is intentionally attempting to attract Internet users for commercial gain by taking advantage of the confusing similarities between Complainant’s STAPLES mark and Respondent’s <staples-coupons.com> and <staples-coupon.com> domain names. Respondent creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain names presumably to profit from obtaining Internet users’ personal information. Therefore, the Panel finds Respondent’s use of the <staples-coupons.com> and <staples-coupon.com> domain names constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED as to the <staples-coupons.com> and <staples-coupon.com> domain names and DENIED as to the <cpn-now.com> domain name.
Accordingly, it is Ordered that the <staples-coupons.com> and <staples-coupon.com> domain names be TRANSFERRED from Respondent to Complainant.
Furthermore, it is also Ordered that the <cpn-now.com> domain name REMAIN with Respondent.
Sandra J. Franklin, Panelist
Dated: July 1, 2009
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