Office Depot, Inc. v. Shanghai Sanhot Enterprise Service Company
Claim Number: FA0610000827757
Complainant is Office Depot, Inc. (“Complainant”), represented by Daren M. Orzechowski of White & Case LLP, 1155 Avenue of the Americas, New York, NY, 10036. Respondent is Shanghai Sanhot Enterprise Service Company (“Respondent”), Shanghai, China, 200235.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <officedepotchina.com>, registered with Xin Net Technology Corporation.
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 October 25, 2006; the National Arbitration Forum received a hard copy of the Complaint October 26, 2006. The Complaint was submitted in both Chinese and English.
On October 28, 2006, Xin Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <officedepotchina.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On November 6, 2006, a Chinese language Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 27, 2006, by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@officedepotchina.com by e-mail.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson 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." 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 makes the following assertions:
1. The domain name that Respondent registered, <officedepotchina.com>, is confusingly similar to Complainant’s OFFICE DEPOT mark.
2. Respondent has no rights to or legitimate interests in the <officedepotchina.com> domain name.
3. Respondent registered and used the <officedepotchina.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Office Depot, Inc., provides office supply products and services to businesses and consumers in thirty-three countries around the world. Since 1986, Complainant has continuously used the OFFICE DEPOT mark in connection with its sale of office supplies and today Complainant is not only one of the world’s largest office supply companies, but also is the third largest online retailer in the world. Complainant sells office supply products at retail stores, in mail-order catalogs, and online utilizing various domain names, including <officedepot.com> (registered on April 14, 1997) and <officedepot.cn>.
Complainant holds some 1,100 trademark registrations for the OFFICE DEPOT mark with trademark authorities around the world, including with the United States Patent and Trademark Office (Reg. No. 1,939,705 issued December 5, 1995; Reg. No. 2,659,506 issued December 10, 2002; Reg. No. 1,449,065 issued July 21, 1987) and in China (Reg. No. 960,868 issued March 14, 1997; Reg. No. 981,969 issued April 14, 1997; Reg. No. 795,435 issued November 28, 1995).
Respondent registered the disputed domain name August 30, 2000. When Complainant contacted Respondent regarding the <officedepotchina.com> domain name registration, Respondent demanded some $70,000 in exchange for transferring the disputed domain name registration to Complainant. Respondent is using the <officedepotchina.com> domain name to sell office supply products in direct competition with Complainant. Respondent’s website also prominently displays Complainant’s OFFICE DEPOT mark in the same font and design that Complainant uses.
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 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.”).
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.
Complainant’s numerous trademark registrations for the OFFICE DEPOT mark clearly establish rights and legitimate interests in the mark pursuant to Policy ¶ 4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (concluding that the complainant demonstrated its rights in the SPORTSCENTER mark through its valid trademark registrations with the USPTO and similar offices around the world); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”).
The disputed domain name that Respondent registered, <officedepotchina.com>,
contains Complainant’s entire registered OFFICE DEPOT mark and merely adds the
geographic identifier “China,” the country in which Respondent is located. The mere addition of a geographic identifier
to Complainant’s OFFICE DEPOT mark in the disputed domain name does not
sufficiently distinguish the disputed domain name from the mark and as a
result, the Panel determines the <officedepotchina.com> domain
name to be confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Laboratories De Biologie Vegetale
Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding
that the <yveskorea.com> domain name was confusingly similar to the
complainant’s YVES ROCHER mark even though the domain name was only similar in
part); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16,
2000) (finding confusing similarity between the complainant’s VERISIGN mark and
the <verisignindia.com> and <verisignindia.net> domain names where
the respondent added the word “India” to the complainant’s mark).
The Panel concludes that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established using extrinsic evidence in this
proceeding that it has rights to and legitimate interests in the mark contained
in its entirety within the disputed domain name. Complainant alleges that Respondent lacks such rights and
legitimate interests in the <officedepotchina.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See Document
Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000)
(“Although Paragraph 4(a) of the Policy requires that the Complainant prove the
presence of this element (along with the other two), once a Complainant makes
out a prima facie showing, the burden of production on this factor
shifts to the Respondent to rebut the showing by providing concrete evidence
that it has rights to or legitimate interests in the Domain Name.”); see
also 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 Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <officedepotchina.com>
domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise).
However, the Panel examines the record to
determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
The WHOIS information lists “Shanghai Sanhot Enterprise
Service Company” as the registrant of the <officedepotchina.com>
domain name, and no other evidence in the record suggests that Respondent is
commonly known by the <officedepotchina.com> domain name. Consequently, Respondent has not established
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
the respondent was not commonly known by the mark and never applied for a
license or permission from the complainant to use the trademarked name); see
also Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000)
(finding respondent was not commonly known by the domain name
<greatsouthernwood.com> where respondent linked the domain name to
<bestoftheweb.com>).
Moreover, the disputed domain name, <officedepotchina.com> is confusingly similar to Complainant’s OFFICE DEPOT mark and Respondent is using it to redirect Internet users to Respondent’s competing office supply products website. In Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002), the respondent was using a domain name confusingly similar to the complainant’s AMERITRADE mark to divert Internet users to a competing financial services website. The panel concluded that redirecting Internet users to a competing website could not be deemed a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and that such use for Respondent’s own commercial gain could not be a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Id. Because Respondent is also using the disputed domain name to redirect Internet users to a competing website, Respondent’s 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 pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel concludes that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant also alleges that Respondent acted in bad faith
in registering and using a domain name that contains Complainant’s protected
mark. Respondent offered to sell the
disputed domain name to the Complainant, demanding some $70,000 in exchange for
transferring the <officedepotchina.com> domain name registration
to Complainant. The Panel finds that
this price is far in excess of Respondent’s expected out-of-pocket costs in
registering the disputed domain name and the Panel finds that Respondent’s
offer to sell demonstrates bad faith registration and use pursuant to Policy ¶
4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)); see also Nabisco Brands Co. v. Patron Group,
D2000-0032 (WIPO Feb. 23, 2000) (finding that the respondent registered and
used the domain names to profit where the respondent offered to sell the domain
names for $2,300 per name).
Respondent is using the <officedepotchina.com>
domain name, which includes Complainant’s OFFICE DEPOT mark, to redirect
Internet users seeking Complainant’s office supply products under the mark to
Respondent’s own website that displays Complainant’s mark and sells office
supply products in direct competition with Complainant. Respondent likely
profits from selling office supply products to customers who otherwise would
have bought from Complainant if not for being misleadingly diverted to
Respondent’s website. The Panel finds
that Respondent is taking advantage of the confusing similarity between the
disputed domain name and Complainant’s mark.
Such use of the disputed domain name to profit from the goodwill
associated with Complainant’s mark is indicative of bad faith registration and
use under Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
the respondent profits from its diversionary use of the complainant's mark when
the domain name resolves to commercial websites and the respondent fails to
contest the complaint, it may be concluded that the respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb.
Forum May 25, 2006) (find that the respondent’s use of the
<arizonashuttle.net> domain name, which contained the complainant’s
ARIZONA SHUTTLE mark, to attract Internet traffic to Respondent’s website
offering competing travel services violated Policy ¶ 4(b)(iv)).
Moreover, Respondent
registered and used the domain name for the primary purpose of disrupting
Complainant’s business, because the contested domain name resolves to
Respondent’s competing office supply products website. As a result, the Panel finds that Respondent
has registered and is using the contested domain name in bad faith under Policy
¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368
(WIPO Dec. 15, 2000) (finding that respondent registered and used the domain
name <eebay.com> in bad faith where the respondent has used the domain
name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel concludes that Complainant satisfied 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 <officedepotchina.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 15, 2006.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum