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.
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.
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).
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
Click Here to
return to the main Domain Decisions Page.
Click
Here to return to our Home Page