DECISION

 

Danka Holding Company v. Thomas Generalli and Sharp Office Systems (“SOS”) of Tampa Bay

Claim Number: FA0303000148168

 

PARTIES

Complainant is Danka Holding Company, St. Petersburg, FL (“Complainant”) represented by James B. Lake, of Holland & Knight LLP.  Respondent is Thomas Generalli and Sharp Office Systems (“SOS”) of Tampa Bay, St. Petersburg, FL (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <danka.us>, registered with Register.Com.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 7, 2003; the Forum received a hard copy of the Complaint on March 10, 2003.

 

On March 13, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <danka.us> is registered with Register.Com and that Respondent is the current registrant of the name.  Register.Com has verified that Respondent is bound by the Register.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On March 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 3, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On April 11, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch  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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant makes the following assertions:

 

1.      Respondent’s <danka.us> domain name is identical to Complainant’s DANKA mark.

 

2.      Respondent does not have any rights or legitimate interests in the <danka.us> domain name.

 

3.      Respondent registered or used the <danka.us> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Danka Holding Co., is the owner of numerous U.S. Patent and Trademark Office (“USPTO”) registrations and applications for the DANKA mark. Complainant’s 1997 DANKA registration (Reg. No. 2,040,762) is listed on the Principal Register of the USPTO, which lists first use of the mark in commerce as 1977. Complainant’s DANKA mark denotes photocopiers, facsimile machines, and the rental and leasing of automated office equipment, namely, photocopiers, typewriters and electronic messaging systems. Complainant’s other DANKA registrations include: DANKA (and design) (1,556,276); DANKA (2,217,825); and DANKA WORLD-CLASS PRODUCTS. WORLD CLASS SERVICE (2,056,306).

 

Complainant has used its DANKA mark in connection with its photocopier-related services since 1977. Therefore, Complainant’s rights in the mark are incontestable pursuant to 15 U.S.C. § 1065, which is entitled “Incontestability of right to use mark under certain conditions.”

 

Respondent, Thomas Generalli and Sharp Office Systems (“SOS”) of Tampa Bay, registered the <danka.us> domain name on April 25, 2002. Complainant’s investigation of Respondent indicates that Respondent is a competitor of Complainant, offering substantially similar products and services. Complainant’s submission reveals that the subject domain name resolves to Respondent’s competing website, where Respondent sells a line of photocopiers that is in direct competition with Complainant’s products. Further, Respondent’s website prominently features “Sharp Office Systems” advertisements and solicitations.

 

DISCUSSION

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 the 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.

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2)    the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the DANKA mark through registration with the USPTO and continuous use of the mark in commerce since 1977. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

 

Respondent’s <danka.us> domain name is identical to Complainant’s DANKA mark. The addition of a country code top-level domain, such as “.us,” is inconsequential when determining whether a domain name is identical or confusingly similar to a mark under Policy ¶ 4(a)(i). Further, because Respondent is involved in the same business as Complainant, the likelihood that confusion will result from Respondent’s use of Complainant’s mark in the domain name is increased. See World Wrestling Fed'n Entm't, Inc. v. Rapuano, DTV2001-0010 (WIPO May 23, 2001) (“The addition of the country code top level domain (“ccTLD”) designation ‘.tv’ does not serve to distinguish [the disputed domain] names from Complainant’s marks since ‘.tv’ is a common Internet address identifier that is not specifically associated with Respondent”); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark); see also Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Respondent failed to submit a Response in this proceeding and Complainant’s assertions remain unopposed. Therefore, the Panel may resolve all reasonable inferences in favor of Complainant unless clearly contradicted by the evidence. See 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”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

 

Furthermore, subsequent to Complainant establishing its prima facie case, the burden effectively shifts to Respondent who must demonstrate rights or legitimate interests in the domain name. As stated, Respondent failed to respond, thereby failing to produce any set of circumstances that could establish rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

 

There is no evidence before this Panel that suggests Respondent has a legitimate connection with the <danka.us> domain name, or that Respondent has established secondary meaning under the DANKA identifier. Respondent has also failed to proffer any evidence that would contradict such a conclusion. Such circumstances fail to support a finding that Respondent is the owner or beneficiary of a trademark or service mark that is identical to the <danka.us> domain name; thus, Respondent fails to establish rights in the domain name under Policy ¶ 4(c)(i). See CDW Computer Centers, Inc. v. The Joy Comp. FA 114463 (Nat. Arb. Forum July 25, 2002) (finding that, because Respondent did not come forward with a Response, the Panel could infer that Respondent had no trademark or service marks identical to <cdw.us> and therefore had no rights or legitimate interests in the domain name).

 

Respondent is represented by the name Thomas Generalli and Sharp Office Systems of Tampa Bay under the domain name registration’s WHOIS information. Additionally, the subject domain name resolves to a website that advertises the sale of products that compete with Complainant’s photocopier-related offerings. Respondent’s website does not display any content that would give rise to an inference that Respondent is commonly known by the domain name. Therefore, Respondent fails to demonstrate rights or legitimate interests in the domain name under Policy ¶ 4(c)(iii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Uncontested circumstances indicate that Respondent is using Complainant’s mark in the subject domain name in order to commercially profit from diverted Internet users. Respondent’s use does not constitute a non-commercial fair use, but rather is entirely commercial, competitive and intended for commercial gain. Respondent’s opportunistic use of Complainant’s DANKA mark in the domain name works to divert consumers to Respondent’s competing website, and disrupts Complainant’s relationship with its clients and potential customers. Such unauthorized use fails to demonstrate rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(ii) or (iv). Additionally, Respondent has not submitted any evidence that would indicate that it has demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services in the future. See Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

 

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).

 

Registration or Use in Bad Faith

 

The provisions articulated under Policy paragraph 4(b) are illustrative of actions that constitute bad faith registration or use. However, the list is not exhaustive and other situations can give rise to bad faith determinations by the Panel. It is proper to review the “totality of circumstances” in deciding if Respondent registered or used the domain name in bad faith. See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

 

Circumstances indicate that Respondent was aware of Complainant’s rights in the DANKA mark prior to seeking registration of the mark in the disputed domain name. More specifically, Respondent is a competitor of Complainant, thereby operating in the identical industry and offering similar goods within the same geographical region. Further, Complainant’s DANKA mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof. Respondent’s registration of the subject domain name, despite knowledge of Complainant’s preexisting rights, indicates bad faith registration pursuant to Policy ¶ 4(a)(iii). See Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”).

 

Respondent used the domain name in bad faith pursuant to Policy ¶ 4(b)(iii). As stated, Respondent makes unauthorized use of Complainant’s DANKA mark in the domain name, and seeks to commercially benefit from the resulting Internet user confusion by selling its competing goods on the corresponding website. Policy ¶ 4(b)(iii) explicitly proscribes conduct where the primary motivation in registration of the domain name is to frustrate the business of a competitor. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that the requested relief shall be hereby GRANTED.

 

Accordingly, it is Ordered that the domain name <danka.us> be TRANSFERRED from Respondent to Complainant.

 

 

 

 

John J. Upchurch , Panelist

Dated: April 15, 2003

 

 

 

 

 

 

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