Xerox Corporation v. All Fath / Software
Claim Number: FA1806001791221
Complainant is Xerox Corporation ("Complainant"), represented by Steven M. Levy, Pennsylvania, USA. Respondent is All Fath / Software ("Respondent"), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <xerox-drivers.com>, registered with CV. Jogjacamp.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 12, 2018; the Forum received payment on June 18, 2018.
On June 18, 2018, CV. Jogjacamp confirmed by email to the Forum that the <xerox-drivers.com> domain name is registered with CV. Jogjacamp and that Respondent is the current registrant of the names. CV. Jogjacamp has verified that Respondent is bound by the CV. Jogjacamp 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 June 19, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2018 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@xerox-drivers.com. Also on June 19, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 July 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant offers products that include copiers, printers, fax machines, scanners, desktop software, digital printing and publishing systems, and related supplies, along with services relating to its document-management business. Complainant has used the XEROX mark in connection with its business since 1948. Complainant claims that the mark has become famous as a result of long usage and promotion. Complainant owns various registrations for the XEROX mark, including a U.S. registration issued in 1950.
Respondent registered the disputed domain name <xerox-drivers.com> in July 2017. The domain name is being used for a website that prominently displays Complainant's XEROX mark and associated logo, and provides (or purports to provide) drivers for Complainant's products, along with advertisements for products and services that are unconnected to Complainant. Complainant alleges that the website is likely to mislead Internet users into believing that it is an official site of Complainant. Complainant states that Respondent is not an authorized dealer of any of Complainant's products, including software drivers; that Respondent is not otherwise affiliated with Complainant or authorized to use its mark; and that Respondent is not commonly known by the disputed domain name.
Complainant contends on the above grounds that the disputed domain name <xerox-drivers.com> is confusingly similar to its marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was 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 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(f), 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 (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 disputed domain name <xerox-drivers.com> incorporates Complainant's registered XEROX trademark, adding a hyphen, the generic term "drivers," and the ".com" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Seiko Epson Kabushiki Kaisha (also trading as Seiko Epson Corp.) v. Gunay Vatansever, D2017-0490 (WIPO Apr. 26, 2017) (finding <epsondrivers.net> confusingly similar to EPSON); NVIDIA Corp. v. Phil Young, eSupport.com, Inc., D2015-0715 (WIPO June 12, 2015) (finding <nvidia-drivers.com> confusingly similar to NVIDIA); Dell Computer Corp. v. Alex & Birgitta Ewaldsson, D2000-1087 (WIPO Nov. 17, 2000) (finding <delldrivers.com> confusingly similar to DELL). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and is being used for a website that seems obviously designed to create the false impression that it is affiliated with or authorized by Complainant.
A respondent's use of domain name containing a trademark to undertake sales or repairs related to the trademark owner's goods or services may give rise to rights or legitimate interests where (1) the respondent is actually offering the goods or services at issue, (2) the domain name is being used only for those goods or services, (3) the respondent accurately and prominently discloses its relationship with the trademark owner, and (4) the respondent does not attempt to corner the market in domain names reflecting the mark. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 2.8.1 (3d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview3.0/#item28 (citing Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001)). A respondent acquires rights or legitimate interests by such use only if it needs to use the mark to describe its goods or services, uses no more of the mark than necessary, and does not falsely suggest sponsorship or endorsement by the mark owner. See, e.g., AB Electrolux v. Roayh Net, FA 1791036 (Forum July 6, 2018). Respondent's website contains Complainant's mark, logo, and product images; it does not disclose its lack of a relationship with Complainant; and it promotes products and services unrelated to Complainant, thereby precluding any plausible claim of nominative fair use.
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent is using Complainant's mark to attract Internet users to a misleading website containing advertisements for unrelated products and services. Such conduct is indicative of bad faith registration and use under the Policy. See, e.g., AB Electrolux v. Roayh Net, supra (finding bad faith registration and use under similar circumstances). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <xerox-drivers.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 19, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page