Staples, Inc. and Staples the Office Superstores, LLC v. Pablo Palermo
Claim Number: FA1404001557032
Complainant is Staples, Inc. and Staples the Office Superstores, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Pablo Palermo (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shaples.com>, registered with Backslap Domains.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 30, 2014; the National Arbitration Forum received payment on April 30, 2014.
On May 2, 2014, Backslap Domains confirmed by e-mail to the National Arbitration Forum that the <shaples.com> domain name is registered with Backslap Domains and that Respondent is the current registrant of the name. Backslap Domains has verified that Respondent is bound by the Backslap Domains 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 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 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@shaples.com. Also on May 12, 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 June 5, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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" 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.
A. Complainant
Complainant contends as follows:
Complainant owns the STAPLES mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,438,390 registered April 28, 1987).
Complainant uses the STAPLES Mark in connection with office supply store services. The <shaples.com> domain name is confusingly similar to Complainant’s STAPLES mark as it differs by a single character.
Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent’s use of the STAPLES mark. Respondent uses the disputed domain name to direct Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant.
Respondent has made the disputed domain name available for sale, which is evidence of bad faith when combined with Respondent’s lack of legitimate rights in the disputed domain name. Respondent is a recalcitrant, serial cybersquatter, such that Respondent’s prior history of bad faith should educate the pending decision. Respondent’s use of the disputed domain name in connection with a click-through website promoting links to Complainant’s competitors is evidence of bad faith as the use disrupts Complainant’s own business. Respondent’s use of the disputed domain name as a click-through website indicates bad faith use and registration. Respondent misleads users into a false impression that Complainant is affiliated with the resolving webpage, and attempts to profit from the resulting confusion.
Respondent had actual knowledge of Complainant’s rights in the mark as demonstrated by the correctly spelled STAPLES mark on the disputed landing page.
Respondent’s typosquatting behavior is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the STAPLES mark through its registration of the mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use the STAPLES mark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired trademark rights in STAPLES.
Respondent uses the at-issue domain name to address a click-through website promoting links to Complainant’s competitors
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(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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has rights under Policy ¶ 4(a)(i) via its registration of the STAPLES mark with the USPTO. It is irrelevant that Respondent may operate outside the jurisdiction of the trademark registrar. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding 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, Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether or not the complainant has registered its trademark in the country of the respondent’s residence).
The at-issue domain name’s second level is composed of a misspelling of Complainant’s trademark. In creating the domain name Respondent simply substituted the letter “h” in place of the letter “t” in STAPLES. To complete the domain name, Respondent appends the generic top-level domain (“gTLD”) “.com” to the misspelled string. The misspelling of Complainant’s mark and addition of a top level domain name do not distinguish the domain name from Complainant’s trademark under the Policy. Therefore, the Panel concludes that Respondent’s <shaples.com> domain name is confusingly similar to Complainant’s STAPLES trademark pursuant to Policy ¶ 4(a)(i).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”) ; see also, Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Pablo Palermo.” Furthermore, Respondent is not an authorized to use Complainant’s trademark and there is nothing in the record which tends to otherwise show that Respondent may be known by the at-issue domain name. Therefore, the Panel concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent uses the at-issue domain name to direct Internet users to a website featuring generic links to third-party websites, some of which compete with Complainant. To wit, the landing page promotes links to “Staples,” “Office Supplies Products,” and “Office Paper,” and others. Respondent undoubtedly intends to earn click-through fees from such links. Using the domain name in this manner is 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (holding that the respondent was not using the domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances, as well as other circumstances, are present from which the Panel concludes that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent has made the at-issue domain name available for sale which when combined with Respondent’s lack of legitimate rights in the disputed domain name suggests bad faith under Policy ¶ 4(b)(i). See Trip.com, Inc. v. Daniel Deamone, D2001-1066 (WIPO November 4, 2001)(stating when discussing the respondent’s bad faith that "[a] fourth factor is that Respondent has offered the Domain Name for sale to the public.")
Second, Respondent has a prior history of adverse UDRP decision. See Anthony Hopkins and The Tr.s of The Samson Holding Trust v. Pablo Palermo, FA 1420710 (Nat. Arb Forum September 19, 2011); The Am. Auto. Ass’n Inc. v. Pablo Palermo, D2009-1742 (WIPO March 1, 2010); La Quinta Worldwide, L.L.C. v. Pablo Palermo, D2009-0603 (WIPO June 22, 2009). Respondent’s history as a cybersquatter suggests Respondent’s bad faith in the instant case under Policy ¶ 4(b)(ii). 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).
Third, as mentioned above Respondent’s <shaples.com> website promotes links to “Staples,” “Office Supplies Products,” and “Office Paper,” and others. Respondent’s use of the at-issue domain name in connection with a click-through website promoting links to Complainant’s competitors demonstrates bad faith under Policy ¶4(b)(iii) as such use disrupts Complainant’s business. See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (finding evidence of bad faith disruption where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s own website).
Fourth, Respondent’s use of the <shaples.com> domain name as a click-through website also indicates bad faith use and registration. By using a domain name that is confusingly similar to Complainant’s trademark, Respondent misleads Internet users into believing domain name and addressed website are sponsor or endorsed by Complainant. Using the domain name in this manner demonstrates bad faith under Policy ¶4(a)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006)(finding that “Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”)
Fifth, Respondent’s second level domain name differs from Complainant’s STAPLES trademark by a single letter. Giving that there is no other explanation as to why the particular name was selected for a domain name and recognizing that Respondent uses the correct spelling of the STAPLES mark on the <shaples.com> website there is no doubt that Respondent designed the at-issue domain name to take advantage of a predictable typographic error made by Internet users intending to enter STAPLES into either a browser or a search engine. Respondent’s typosquatting behavior is yet further evidence of its bad faith registration and use of the at-issue domain name. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, Respondent had actual knowledge of Complainant’s rights in the STAPLES trademark when it registered the at-issue domain name. Respondent’s knowledge of Complainant’s mark is shown in light of the notoriety of the STAPLES mark, the correct spelling of the mark on Respondent’s <shaples.com> webpage, and Respondent’s misspelling of the mark in the at-issue domain name. Respondent’s prior knowledge of Complainant’s trademark further indicates bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shaples.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 9, 2014
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