Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HINN / DTAPLES.COM
Claim Number: FA1404001557007
Complainant is Staples, Inc. and Staples the Office Superstores, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is HANNA EL HINN / DTAPLES.COM (“Respondent”), Quebec, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dtaples.com>, registered with ENOM, INC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 30, 2014; the National Arbitration Forum received payment April 30, 2014.
On May 1, 2014, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <dtaples.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. verified that Respondent is bound by the ENOM, INC. 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 May 1, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 21, 2014, 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@dtaples.com. Also on May 1, 2014, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 27, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 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 domain name be transferred from Respondent to Complainant.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two named Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” The Panel here finds a sufficient nexus between the two entities to find it appropriate to proceed in this case to a resolution on the merits. Complainants will be referred to herein as “Complainant.”
Complainant makes the following allegations in this proceeding:
a) Complainant is the world’s largest office products company and second largest Internet retailer. Complainant had total sales of $25 billion in 2011. Complainant has been in business since at least 1985.
b) Complainant has rights in the STAPLES mark, used in connection with office products. Complainant owns registrations for the STAPLES mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,438,390 registered April 28, 1987).
c) Respondent’s <dtaples.com> domain name is confusingly similar to Complainant’s STAPLES mark. The disputed domain name differs from Complainant’s mark by a single letter, replacing the letter “s” with the letter “d”, and it also adds the generic top-level domain (“gTLD”) “.com.”
d) Respondent does not have any rights to or legitimate interests in the <dtaples.com> domain name.
a. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its STAPLES mark in any way.
b. Respondent is using the <dtaples.com> domain name to display generic third-party links to other websites, some of which directly compete with Complainant’s business. Complainant presumes Respondent receives pay-per-click revenue from these links. See Complainant’s Exhibit H.
e) Respondent registered and is using the <dtaples.com> domain name in bad faith.
a. Respondent is a serial cybersquatter who has been involved in multiple prior UDRP decisions that were adverse to Respondent.
b. Respondent is disrupting Complainant’s business by diverting Complainant’s potential customers to a website featuring competing third-party links. See Complainant’s Exhibit H.
c. Respondent is using the <dtaples.com> domain name to obtain click-through revenue from the competing third-party links displayed on the resolving website. See Complainant’s Exhibit H.
d. Respondent’s conduct constitutes typosquatting, which is in and of itself evidence of bad faith.
Respondent did not submit a response in this Proceeding:
The Panel notes that Respondent registered the disputed domain name November 8, 2001.
Complainant established that it has rights to and/or legitimate interests in the mark contained in misspelled form within the disputed domain name.
Respondent has no such rights or legitimate interests in the mark or domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant contends it has rights in the STAPLES mark, used in connection with office products. Complainant owns registrations for the STAPLES mark with the USPTO (e.g., Reg. No. 1,438,390 registered April 28, 1987). The Panel notes that Respondent resides or operates in a different country than that in which Complainant holds its trademark registrations; however, past panels have determined that a complainant need not own a registration in a respondent’s country of operation, and that it is sufficient that a complainant own a registration a country. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has rights in the STAPLES mark within the meaning of Policy ¶ 4(a)(i) because Complainant holds valid registrations for the mark with the USPTO. See 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 Respondent’s <dtaples.com> domain name is confusingly similar to Complainant’s STAPLES mark. Complainant observes that the disputed domain name differs from Complainant’s mark by a single letter, namely replacing the letter “s” with the letter “d”, and also adding the gTLD “.com.” First, the Panel finds that a disputed domain name that differs from a trademark by a single letter is not sufficiently distinguished from the trademark so as to avoid a finding of confusing similarity. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Next, the Panel finds that the addition of a gTLD is irrelevant for the purposes of confusing similarity analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, this Panel finds that Respondent’s <dtaples.com> domain name is confusingly similar to Complainant’s STAPLES mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. 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 UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent does not have any rights or legitimate interests in the <dtaples.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its STAPLES mark in any way. The Panel notes that the WHOIS record for the disputed domain name lists “HANNA EL HINN” as the domain name registrant and “DTAPLES.COM” as the registrant organization. Past panels have found that a respondent may not be commonly known by a disputed domain name based on a review of all the evidence on record, even where the WHOIS record appears to create some nexus between the respondent’s name or organization and the disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). Therefore, this Panel finds that, although the registrant organization on the WHOIS record is listed as “DTAPLES.COM,” the evidence on record is sufficient to find that Respondent is not commonly known by the <dtaples.com> domain name.
Complainant argues that Respondent is using the <dtaples.com> domain name to display generic third-party links to other websites, some of which directly compete with Complainant’s business. Complainant presumes Respondent receives pay-per-click revenue from these links. See Complainant’s Exhibit H. In similar cases, panels have found that using a confusingly similar domain name to display competing third-party links does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel here finds that Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent registered and is using the <dtaples.com> domain name in bad faith. Complainant asserts that Respondent is a serial cybersquatter who has been involved in multiple prior UDRP decisions that were adverse to Respondent. The Panel notes that a search for “HANNA EL HINN” in the National Arbitration Forum’s decision database returns five cases, all of which resulted in the ordered transfer of the disputed domain names. See The Sports Authority Michigan, Inc. v. thesprotsauthority.com aka Hannah El Hinn, FA. 145208 (Nat. Arb. Forum April 3, 2003); see also Enterprise Holdings, Inc. v. enterprie.com / Hanna El Hinn., FA 1398859 (Nat. Arb. Forum August 29, 2011). Past panels have found that a respondent who has been involved in past UDRP proceedings that resulted in the transfer of the respondent’s disputed domain names provides evidence of bad faith under Policy ¶ 4(b)(ii) in the instant case. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants). Therefore, this Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii) because Respondent has been ordered to transfer disputed domain names in prior UDRP proceedings.
Complainant alleges that Respondent is disrupting Complainant’s business by diverting Complainant’s potential customers to a website featuring competing third-party links. See Complainant’s Exhibit H. Past panels have found that using a confusingly similar domain name to host links to a complainant’s competitors constitutes a bad faith disruption pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, this Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iii) because the disputed domain name provides links to Complainant’s competitors.
Complainant argues that Respondent is using the <dtaples.com> domain name to obtain click-through revenue from the competing third-party links displayed on the resolving website. See Complainant’s Exhibit H. Past panels have determined that such conduct is evidence of bad faith via attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes). Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.
Complainant urges that Respondent’s bad faith is further demonstrated by Respondent’s knowledge of Complainant’s rights in the mark. In so arguing, Complainant notes that the disputed domain name resolves to a page that includes Complainant’s STAPLES mark correctly spelled, and provides a link to Complainant’s own website. See Complainant’s Exhibit H. Accordingly, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark, and therefore finds evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant’s YAHOO! mark at the time of registration”).
Complainant claims that Respondent’s conduct constitutes typosquatting, which is, in and of itself, evidence of bad faith. In Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), the panel defined typosquatting as the “registration of a disputed domain name that capitalizes on Internet users’ typographical errors.” The Panel notes that the disputed domain name replaces the letter “s” in Complainant’s STAPLES mark with the letter “d.” Past Panels have found that typsquatting is evidence of bad faith under Policy ¶ 4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”). Therefore, this Panel finds that Respondent is typosquatting, and finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dtaples.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 6, 2014
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