Staples, Inc. v. Whois Privacy Shield Services
Claim Number: FA1505001617690
Complainant is Staples, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Whois Privacy Shield Services (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <staplez.com>, registered with Napoleon Bonaparte, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 4, 2015; the Forum received payment on May 4, 2015.
On May 6, 2015, Napoleon Bonaparte, LLC confirmed by e-mail to the Forum that the <staplez.com> domain name is registered with Napoleon Bonaparte, LLC and that Respondent is the current registrant of the name. Napoleon Bonaparte, LLC has verified that Respondent is bound by the Napoleon Bonaparte, LLC 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 7, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 27, 2015 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@staplez.com. Also on May 7, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 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 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
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 must prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant uses its STAPLES mark in connection with its business as the world’s largest provider of office products. Complainant has rights in the STAPLES mark through its registration with multiple trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,438,390, registered, May 13, 1986). Registration of a trademark with a national authority, like the USPTO, is sufficient to establish a complainant’s rights in a mark. 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). Complainant has rights in the STAPLES mark under Policy ¶4(a)(i).
Complainant claims Respondent’s disputed <staplez.com> domain name is confusingly similar to Complainant’s mark. The disputed domain name differs from Complainant’s mark only through the replacement of the second letter “s” with the letter “z” and the addition of the gTLD “.com.” Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶4(a)(i).”). Adding a gTLD, such as “.com,” is not a significant enough change to prevent a finding of confusing similarity between a mark and domain name. See Sony Kabushiki Kaisha v. EOS1\EOS-1, Inc., FA 493110 (Nat. Arb. Forum July 15, 2005) (“Respondent’s <www-sony.com> domain name is confusingly similar to Complainant’s SONY mark, as the domain name incorporates Complainant’s mark and adds a “www” prefix, a hyphen, and the generic top-level domain (“gTLD”) “.com.”). Respondent’s disputed <staplez.com> domain name is confusingly similar to Complainant’s STAPLES mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent is not commonly known by the disputed <staplez.com> domain name. The WHOIS information indicates Respondent used a privacy service to shield Respondent’s identity. There is no information indicating Respondent is commonly known by the disputed <staplez.com> domain name, is licensed to use the STAPLES mark, or is affiliated in any way with Complainant. Under these circumstances, it seems pretty clear Respondent is not commonly known by the disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record). This Panel so finds.
Complainant claims Respondent does not use the <staplez.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name appears to resolve to a dynamic webpage offering links to products and services competing with Complainant. Using a disputed domain name to display advertisements for a complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use). Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶4(c)(i) or 4(c)(iii).
Finally, Respondent used a privacy service to register the disputed domain name. This means Respondent has not publicly associated itself with the disputed domain name. Therefore, Respondent cannot acquire any rights to the disputed domain name simply by registering it.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has demonstrated bad faith by listing the disputed domain name for sale to the public at an undisclosed price. Bad faith registration and use is often found where a respondent attempts to sell the disputed domain name for more than respondent’s documented out of pocket costs. See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale). Respondent has not documented any out of pocket costs. Based upon the general offer to the public in this case (which is also an offer to the trademark owner and the owner’s competitors), Respondent acted in bad faith by offering the domain name for sale in violation of Policy ¶4(b)(i).
Complainant claims Respondent used the domain to serve dynamic advertisements for businesses competing with Complainant. This type of activity demonstrates bad faith registration and use under Policy ¶4(b)(iii). In similar cases where a disputed domain name resolved to a dynamic webpage featuring competing businesses, panels have routinely held a respondent acted in bad faith pursuant to Policy ¶4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶4(b)(iii)). This Panel agrees and finds Respondent acted in bad faith pursuant to Policy ¶4(b)(iii).
Complainant claims the confusing similarity between Respondent’s disputed domain name and Complainant’s mark (which only differ by the terminal letter) is being used to confuse and attract internet users for Respondent’s commercial gain. Respondent’s domain name hosts a dynamic parking page. Such pages customarily provide their owners with “click through” revenue. Respondent’s webpage hosts multiple advertisements (some of which use the STAPLES mark and some of which do not), presumably for commercial gain. Such activity violates Policy ¶4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). This Panel finds Respondent registered and uses <staplez.com> in bad faith under Policy ¶4(b)(iv).
Complainant claims Respondent’s misspelling of the STAPLES mark in the <staplez.com> domain name shows typosquatting behavior and therefore is evidence of bad faith. While other Panels may reach that conclusion, this Panel declines to. “Typosquatting” is not a listed ground to find bad faith under the UDRP. While it might be a shorthand method of describing the process Panels must go through, Panel may not avoid their duty by taking shortcuts.
Finally, Respondent registered the disputed domain name using a privacy service. This Panel has held this raises the rebuttable presumption of bad faith in a commercial content. Respondent has done nothing to rebut this presumption. Therefore, the presumption stands. This reason alone is sufficient to find bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <staplez.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, June 5, 2015
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