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Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan [2004] GENDND 1208 (20 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Staples, Inc., Staples The Office Superstore, Inc., Staples Contract and & Commercial, Inc. v. John Morgan

Case No. D2004-0537

1. The Parties

Complainants are Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract & Commercial, Inc. (collectively, “Staples”), of Framingham, Massachusetts, represented by Wolf, Greenfield & Sacks, P.C. of Boston, Massachusetts, United States of America.

Respondent is John Morgan, of Sanibel, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <stpales.com> (the “Disputed Domain Name”) is registered with eNom, Inc. (“eNom”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2004. On July 21, 2004, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On July 21, 2004, eNom, Inc. transmitted by email to the Center a partial verification response confirming that the language of the proceedings is English and that the domain name would remain under Registrar Lock throughout the proceeding. In addition to eNom, Inc.’s partial response, the Center made a WHOIS printout, which showed that the disputed Domain Name was registered with eNom Inc., and that Respondent, John Morgan, was the current registrant of the disputed Domain Name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 2, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2004. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on August 24, 2004.

The Center appointed Steven Auvil as the sole panelist in this matter on September 2, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, Staples, is a retailer of, among other things, office supplies, business services, furniture and technology to consumers and businesses in North America and throughout Europe. Staples opened its first store in 1986, and has operated continuously under the name STAPLES since then. Staples has prominently and continuously used the mark STAPLES for the sale of the aforementioned products and services since 1986. In addition to its rights in the mark STAPLES at common law, Staples owns numerous United States Federal Registrations for trademarks consisting of or containing the word STAPLES, including: Reg. No. 1,438,390 (April 28, 1987) for the mark STAPLES for office supply store services; Reg. No. 1,459,182 (September  29, 1987) for the mark STAPLES for operation of mobile retail stores for the sale of office supplies, office furniture and related items; and, Reg. No. 2,397,238 (October 24, 2000) for the mark STAPLES.COM for mail order catalog services via global computer network featuring office supplies, office furniture, computer hardware and software, computer accessories, and telephones. Complainants are related corporations which have sufficient interest in the Disputed Domain Name for them to be joined in this action. See Gannett Co., Inc. v. Henry Chan, WIPO Case No. D2004-0117 (April 8, 2004) (permitting related companies to appear as Complainants); NFL Properties, Inc. et al. v. Rusty Rahe, WIPO Case No. D2000-0128 (April 26, 2000) (permitting related companies to appear as Complainants). Complainants own an e-commerce site located on the web at “www.staples.com.”

The nature of Respondent’s business is uncertain. Respondent registered the Disputed Domain Name on or about October 19, 2000.

5. Parties’ Contentions

A. Complainants

Complainants contend that the Disputed Domain Name is confusingly similar to their STAPLES mark and their corresponding e-commerce domain name <staples.com>, that Respondent has no rights or legitimate interests in the Disputed Domain Name, and that the Disputed Domain Name was registered and is being used in bad faith. Complainants request that the Disputed Domain Name be transferred to the Complainants.

B. Respondent

Respondent did not respond to Complainant’s contentions. Accordingly, Respondent did not deny those contentions.

6. Discussion and Findings

To obtain relief, paragraph 4(a) of the Policy requires the Complainant to prove each of the following:

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interests in the domain name; and

(3) that the domain name has been registered and 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 as it considers appropriate, pursuant to paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

Complainants’ use in commerce of the <staples.com> domain name approximately four years before Respondent’s registration of the Disputed Domain Name evidences Complainants’ ownership of common law rights in that mark. See Yahoo! Inc. v. David Ashby, WIPO Case No. D2000-0241 (June 14, 2000) (Panel found it significant that the complainant Yahoo! owned and used the domain name <finance.yahoo.com> in holding the disputed domain name <yahooventures.com> confusingly similar to the mark YAHOO). Moreover, Complainants also own the federally-registered mark STAPLES.COM, providing them with federal rights under the Lanham Act.

The Disputed Domain Name is a misspelling, by the inversion of two letters, of the Complainants’ federally-registered trademark STAPLES.COM. The Disputed Domain Name <stpales.com> exchanges the “p” and “a” of STAPLES.COM. Previous panels have found mistyped domain names to be confusingly similar to the marks at issue. See News Group Newspapers Limited and News Network Limited v. Momm Amed Ia WIPO Case No. D2000-1623 (January 18, 2001) (finding <pag3.com> to be confusingly similar to complainants’ mark PAGE 3 and domain name <page3.com>); Letsbuyit.com v. Stephen Ward, WIPO Case No. D2000-0680 (September 1, 2000) (finding <lessbuyit.com> and <lestbuyit.com> to be confusingly similar to complainant’s marks LETSBUYIT.COM and LETSBUYIT); Reuters Limited. v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (July 13, 2000) (finding <reter.com>, <ruters.com>, and <reuers.com> to be confusingly similar to complainant’s mark REUTERS); Staples, Inc., Staples Contract & Commercial, Inc., Staples The Office Superstore, Inc. v. John Sansone WIPO Case No. D2004-0018 (February 26, 2004) (finding <ataples.com>, <sstaples.com>, <staples.com>, and <staoles.com> to be confusingly similar to complainants’ mark STAPLES); Staples, Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial, Inc. v. Staple.com, WIPO Case No. D2003-1028 (March 17, 2004) (finding <staple.com> to be confusingly similar to complainants’ mark STAPLES and STAPLES.COM).

In addition, a finding of bad faith may support a finding of confusing similarity. AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002) (“Bad faith in selecting a domain name may contribute to a finding of confusing similarity.”)

The issue of Respondent’s “bad faith” is discussed more fully in Section 6.C. below. In all cases, the Panel concludes that the Disputed Domain Name is confusingly similar to Complainants’ registered trademarks STAPLES and STAPLES.COM, and is a close typographical variant of Staples’ own domain name.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, the respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) the respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, paragraph 4(c).

Complainants contend that Respondent has no rights or legitimate interests in the Disputed Domain Name. Staples’ Manager, Partnerships & Online Marketing testified in his sworn Declaration (the “Staples Declaration”), attached as an exhibit to the Complaint, that Respondent was not licensed by Staples to use the marks STAPLES or STAPLES.COM. Respondent has not presented any arguments in rebuttal. In this instance, the Panel is free to infer and does infer that Respondent has no such rights or a legitimate interest in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (December 4, 2000).

Moreover, nothing in the record suggests that Respondent has, at any time, used the Disputed Domain Name in connection with a bona fide offering of goods or services, that Respondent is commonly known by the Disputed Domain Name, or that Respondent is making a legitimate noncommercial or fair use of the domain name.

For these reasons, the Panel concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Finally, Complainants persuasively argue that Respondent has registered and used the Disputed Domain Name in bad faith. Specifically, Complainants argue that Respondent’s bad faith is reflected in the fact that, with both constructive and actual knowledge of Complainants’ trademark rights, Respondent (1) redirected web traffic from the Disputed Domain Name to one of Staples’ chief competitors; (2) uses a typosquatted, i.e., confusingly similar domain name; and (3) nothing in the record suggests that Respondent has a bona fide reason for Respondent’s choice of a domain name that is confusingly similar to Complainants’ trademarks and company name.

The Panel is persuaded that Respondent knew of Complainants’ rights in the mark STAPLES when Respondent registered the Disputed Domain Name. The notice to Respondent was both constructive and actual. As to constructive notice, the record indicates that Complainants registered the mark STAPLES with the United States Patent and Trademark Office in 1987. Because Complainants and Respondent reside in the United States, it is appropriate to apply the principle of constructive notice of Complainants’ trademark registrations established by 17 U.S.C. § 1072. See Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000) (“Since both parties are domiciled in the United States, the Panel will look to the principles of law in the United States.”) Respondent’s constructive knowledge of Complainants’ rights in the mark STAPLES supports a finding of bad faith. See eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (April 11, 2001) (“Actual or constructive knowledge of the Complainant’s rights in its trademark is a factor supporting bad faith.”); Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002) (applying the principle of constructive notice in finding bad faith). In addition, the Panel is also persuaded that Respondent had actual notice of Complainants’ rights before registering the Disputed Domain Name. Complainants began doing business under the name STAPLES in 1986, and began doing business through their website <staples.com> in 1998. According to Respondent’s registration, Respondent’s address is in Sanibel, Florida. There is evidence in the record demonstrating that there are two Staples stores within 15 miles of Respondent’s address, although it is not clear that such stores were in existence on October 19, 2002, which was on or about the time that Respondent registered the Disputed Domain Name. Nevertheless, considering (1) Respondent’s failure to submit a Response in this proceeding (which permits the Panel to draw appropriate inferences pursuant to paragraph 14(b) of the Rules); (2) the fact that the STAPLES name is widely known; and, (3) prior WIPO decisions considering this issue, the Panel is persuaded that Respondent knew or should have known of Complainants’ rights at the time Respondent registered the Disputed Domain Name. See Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 (August 3, 2000) (finding bad faith: “[T]he fact that Complainant’s name and trademark is so well and widely known, coupled with the fact that Respondent’s mailing address is in the same district as Complainant’s business, makes it inevitable that Respondent registered the Domain Name in full knowledge of Complainant’s rights and interests.”)

In addition, Complainants have contended that Respondent has, in the past, linked the Disputed Domain Name to the website of one of Complainants’ chief competitors, OfficeMax. To support this allegation, Complainants submitted an OfficeMax web page dated June 9, 2004, which allegedly appeared when the Disputed Domain Name was accessed on that date. Further, Staples’ Manager, Partnerships & Online Marketing testified in the Staples Declaration that, as of the date of the Staples Declaration, the Disputed Domain Name resolved to the website of OfficeMax. Respondent did not respond to the Complainants’ contention, leaving the Panel free to infer that the allegation has merit. In all cases, the Panel is persuaded that Respondent’s registration and use of the Disputed Domain Name for re-directing Internet users, particularly customers and potential customers of Complainants, from Complainants’ website to the website of OfficeMax, a company which directly competes with Complainants, constitutes bad faith and use. Prior WIPO decisions also support this conclusion. See Edmunds.com, Inc. v. Ult. Search, Inc., WIPO Case No. D2001-1319 (February 1, 2002) (“registration and use of a domain name to redirect Internet users to websites of competing organizations constitutes bad faith registration and use under the Policy.”); Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001) (“Respondent’s registration and continued use of the contested domain name for re-directing Internet users, i.e., particularly customers and potential customers of the Complainant from the Complainant’s web site to the web site of Bestnet, Inc., a company which directly competes with the Complainant, constitutes bad faith and use.”); Marriott International, Inc. v. Vladimir Kyznetsov, National Arbitration Forum Case No. FA95648 (October 24, 2000) (bad faith where respondent registered the domain name <marriottrewards.com> and used it to route Internet traffic to another website that “promotes travel and hotel services . . . identical to the services offered by the Complainant”).

The fact that the Disputed Domain Name is merely a misspelling of Staples’ trademarks and domain name also persuades the Panel that there is bad faith registration and use in this case. Prior UDRP decisions support this conclusion. See The Sportsman’s Guide, Inc. v. Vipercom, WIPO Case No. D2003-0145 (April 10, 2003) (holding that “[t]yposquatting is by itself strong evidence of bad faith in registration and use of a domain name.”); Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654 (August 24, 2001) (finding “[t]aking advantage of consumers’ known disposition to misspell domain names,” to be “classic bad faith”) (citations omitted).

Further, there is no evidence in the record suggesting Respondent has ever made a bona fide commercial or noncommercial use of the Disputed Domain Name. Considering that (1) Respondent never filed a Response submitting any evidence that Respondent has ever made any bona fide use of the Disputed Domain Name, (2) the STAPLES name is widely known, and (3) the Disputed Domain Name both incorporates Complainants’ trademark and company name, and is virtually identical to a domain name and registered mark (<staples.com>) that Complainants use to provide services to their customers, the Panel finds it highly unlikely that there could be any legitimate reason for Respondent’s choice of the Disputed Domain Name. See eBay Inc. v. SGR Enterprises and Joyce Ayers, WIPO Case No. D2001-0259 (April 11, 2001) (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.”); Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (the fact that the complainant was “widely known” by its trademarked name contributed to the panel’s conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.”).

All of these factors demonstrate Respondent’s bad faith in registering the Disputed Domain Name. See The Field Museum of Natural History v John Barry d/b/a Buy This Domain, National Arbitration Forum Case No. FA114354 (June 28, 2002).

For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <stpales.com > be transferred to Complainant.

Steven Auvil
Sole Panelist

Dated: September 20, 2004