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Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc. v. SkyLabs Corporation and DL Enterprises [2004] GENDND 832 (2 June 2004)

1. The Parties

The Complainants are Staples, Inc., Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc., each a Delaware corporation, and each with a place of business in Framingham, Massachusetts, United States of America. Complainants are represented by Wolf, Greenfield & Sacks, P.C., United States of America.

The Respondents are SkyLabs Corporation, a North Carolina corporation and DL Enterprises, apparently a New York entity, each with an address in Woodbury, New York,1 United States of America.

2. The Domain Names and Registrar

The disputed domain names, <wwwstaples.com> and <wwwstaple.com>, are registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on March 22, 2004. On March 22, 2004, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the domain names at issue. eNom responded on March 22, 2004, indicating that it had "locked" both domain names, confirming several details of its registration agreement, and directing the Center to its "whois" database for contact information.

The Center confirmed that Respondent SkyLabs Corporation was listed as the Registrant for the <wwwstaples.com> domain name and confirmed the contact information, but determined that eNom's "whois" database showed DL Enterprises, which had not been named in the original Complaint, as the Registrant for the <wwwstaple.com> domain name. The Center advised Complainants, who subsequently amended the Complaint.

The Center verified that the Complaint, as amended, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"). In accordance with Rules 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on April 8, 2004. In accordance with Rule 5(a), the Response was due 20 calendar days later.2

On April 1, 2004, an e-mail communication from David Morton of SkyLabs Corporation advised the Center that: "We have decided not to defend the domains <wwwstaple.com> and <wwwstaples.com> and are prepared to transfer them to you." The Center forwarded the message to the Complainants inquiring whether the proceedings should be suspended in order to facilitate a settlement. On April 28, 2004, an e-mail communication from Mr. Morton advised the Center that with respect to "the domains in depute [sic] in case number D2004-0220, we do not wish to fight for the domains."

However, no formal response to the Complaint was received by the April 28, 2004 deadline, Complainants have not withdrawn the Complaint, and the domain names have not been transferred. On May 3, 2004, the Center transmitted to Respondents, via e-mail, a Notification of Respondents' Default.

The Center appointed Debra J. Stanek as the Sole Panelist in this matter on May 21, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence to ensure compliance with the Rule 7.

4. Factual Background

Complainants own United States federal trademark registrations for the mark STAPLES and STAPLES.COM for office supply store services, including mail order and online catalog services, the earliest of which issued in 1987. According to the Complaint, Complainants have, for many years, used the STAPLES marks for retail and online stores offering office supplies and related products and services.

According to the Complaint, the <wwwstaples.com> domain name was registered almost five years ago and the <wwwstaple.com> domain name was registered about one year ago.

Neither of the two websites are active. Visitors to the "www.wwwstaples.com" site are automatically redirected to Complainants' "www.staples.com" website. Visitors to the "www.wwwstaple.com" site are automatically redirected to <searchblaster.com>, a domain name registered to Respondent SkyLabs Corporation. Visitors to the "www.searchblaster.com" are presented with a list of options for Internet searching; search results include, at the bottom of the page, links to other websites, including to Complainants' "www.staples.com" site.

5. Parties' Contentions

A. Complainants

Complainants make the following contentions:

The disputed domain names are confusingly similar to Complainants' STAPLES trademarks. Each simply adds the prefix "www" and, in addition, the "www.wwwstaple.com" site uses the term in the singular, rather than the plural.

Respondents have no rights or legitimate interests in respect of either of the disputed domain names. Complainants assert that their search of the United States Patent and Trademark Office database for marks containing the term "staples" did not reveal any marks owned by Respondents and that neither the addition of the prefix "www" to both names nor the deletion of the letter "s" from one of them created a new or different mark in which Respondents acquired trademark rights.

Complainants also assert that: (1) Respondents are not making a legitimate non-commercial or fair use of the domain names; (2) Respondents have not made any demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services.

Complainants point out that David Morton was licensed under Complainants' affiliates program to use the STAPLES mark. Under the program, approved websites may maintain official links to Complainants' site. If visitors to an approved site link to Complainants' site and make a purchase, the affiliate may receive a referral fee. Mr. Morton's approved website is the "www.searchblaster.com" site. However, visitors who link from the "www.wwwstaples.com" or "www.wwwstaple.com" sites do so using the official link provided under the affiliate program, in violation of the program rules.

Respondents registered and are using the disputed domain names in bad faith because:

(1) Respondents are "typosquatting," capitalizing on the fact that those seeking Complainants' "www.staples.com" site may inadvertently omit the "dot" between the "www" and "staples."

(2) Respondents are misusing Complainants' affiliates program. The "www.wwwstaples.com" site redirects to Complainants' site visitors who are presumably seeking that site in the first instance. The "www.wwwstaple.com" site similarly may redirect them via "www.searchblaster.com." If those visitors then make a purchase from Complainants' sites, fees may be generated through the affiliate program. In addition, visitors redirected via "www.searchblaster.com" are also presented with other listings, which include a link to one of Complainants' competitors.

(3) Respondents' ownership of registrations for other domain names establishes a "pattern of conduct in registering typosquatted domain names." Providing a list of domain names registered to Respondent SkyLabs Corporation and to New York Internet Media, Complainants suggest that Respondents may be using those names to improperly obtain revenue from other affiliate programs.

(4) The inclusion of Complainants' entire mark in the domain names evidences bad faith.

(5) There can be no legitimate reason for choice of a domain name that incorporates Complainants' STAPLES mark.

B. Respondents

As noted above, Respondents have not formally responded to the Complaint.

6. Discussion and Findings

A. Procedural Matters

The Complaint purports to identify two Respondents in addition to those identified above: New York Internet Media (the prior registrant of the <wwwstaple.com> domain name) and David Morton, an individual who purportedly "does business" both as the two Respondents identified above and as New York Internet Media. However, the Rules define the "Respondent" as "the holder of a domain-name registration against which a complaint is initiated." See Rule 1, s.v. "Respondent."

Neither David Morton nor New York Internet Media are the holders of either of the registrations at issue; therefore neither is properly a "Respondent" in this matter. The proper respondents -- and the entities against whom relief may be obtained, see Policy paragraph 4(i) - are SkyLabs Corporation and DL Enterprises. Accordingly, the Panel dismisses New York Internet Media as a Respondent. As discussed in Section 6.A.(2) below, while David Morton is not technically a "respondent" within the meaning of the Policy, the Panel finds that David Morton is responsible for, or the beneficial holder of, the domain names at issue.

The Complaint also seeks relief as to two domain names, each of which is registered to a different entity. However, the Rules provide that: "The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." See Rule 3(c). Here, the domain names at issue are registered to different entities: <wwwstaples.com> is registered to SkyLabs Corporation and <wwwstaple.com> is registered to DL Enterprises.

Nonetheless, David Morton is the administrative and technical contact for the <wwwstaples.com> domain name and, as noted above, is an officer of the registrant, SkyLabs Corporation. Morton is also an officer of the prior registrant of the <wwwstaple.com> domain name. It is also relevant that the "www.wwwstaple.com" site redirects visitors to "www.searchblaster.com," which is also registered to SkyLabs Corporation. In addition, the address of DL Enterprises, including the specific post office box number, is identical to that of SkyLabs Corporation.

Finally, Morton has twice communicated with the Center regarding both of the domain names at issue in this proceeding. In light of the foregoing, but without suggesting that the same result should be obtained under other circumstances, the Panel concludes that David Morton is responsible for, and is apparently the beneficial holder of, both of the registrations in issue. Therefore, although the Complaint relates to more than one domain name, the domain names are held, in effect, by the same domain name holder.

The Complaint identifies three Complainants; Staples The Office Superstore, Inc., and Staples Contract and Commercial, Inc., which are wholly-owned subsidiaries of the third, Staples, Inc. While Complainant Staples The Office Superstore, Inc., owns the cited federal trademark registrations, Staples, Inc. is a party to the Affiliate Agreement and owns the registration for the <staples.com> domain name. The Complaint requests that the domain names be transferred to Complainant Staples, Inc.

Neither the Policy nor the Rules provide for multiple Complainants. However, in some cases, panels have determined that the identified complainant did not demonstrate the requisite ownership or control of the mark at issue. In other cases, panels have determined that the complainant was properly acting on behalf of its affiliates. There is no settled practice as to whether affiliates should, or must, join in a complaint. In the absence of a uniform practice, the Panel accepts the designation of the parent company, Staples, Inc., and its two wholly-owned subsidiaries as Complainants.

B. Burden of Proof

In order to prevail, the Complainants must prove:

Policy paragraph 4(a) sets out four sets of circumstances that may evidence a respondent's bad faith registration and use under paragraph 4a(iii), see Policy paragraph 4(b), as well as examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy paragraph 4(c).

Even if a respondent has not answered the Complaint, a default does not automatically result in a finding for the complainant. Rather, the complainant continues to have the burden of establishing that it is entitled to relief. The Panel may, however, draw such inferences from a respondent's default as it considers appropriate. See paragraph 14(b) of the Rules.

Complainants have established their rights in the STAPLES marks by providing proof of their federal trademark registrations. The <wwwstaples.com> and <wwwstaple.com> domain names effectively incorporate Complainants' STAPLES mark in its entirety. Neither the addition of the prefix "www" nor the deletion of the plural in the <wwwstaple.com> domain name alters this conclusion. The use of the singular rather than the plural is a minor alteration. The Panel believes that the dominant feature of the name is the term "staple" and that therefore this difference is not significant. Similarly, the addition of the prefix "www" does not serve to distinguish the domain name from Complainants' STAPLES mark. As other panels have noted, "www" is a well-known acronym for "world wide web" and is not likely be meaningful to visitors.

The Panel finds that Respondents' domain names are confusingly similar to Complainants' trademark.

(2) Respondents Have No Rights or Legitimate Interests in the Domain Names

Establishing that Respondents have no rights or legitimate interest in the domain names -- proving a negative -- can be difficult. Some panels have held that the burden of establishing this element is light, because the evidence lies within a respondent's knowledge. Others have held that after a complainant makes a prima facie showing, the burden shifts to the respondent to rebut complainant's evidence. These approaches are consistent with the general structure of the Rules. Rule 3(b)(ix)(2) requires a complainant to show why the respondent "should be considered" as having no rights or interests in the domain name (not why the respondent has no rights or interests in the name), while Rule 5(b) requires the respondent to "[r]espond specifically to the statements and allegations" of the complaint (emphasis added).

The Panel concludes that Complainants have adequately demonstrated that none of the three examples set forth in Paragraph 4(c) of the Policy are applicable here.

First, it does not appear that Respondents were making a bona fide use of the domain names before notice of the dispute. As noted above, the disputed domain names are confusingly similar to Complainants' well-known mark. In the case of <wwwstaples.com>, visitors are transferred to Complainants' site, using an identifier provided under Complainants' affiliate program for use with a different site. In the case of <wwwstaple.com>, visitors are transferred to the "www.searchblaster.com" site, where they may be exposed to other offers or, if they use the search engine, a link to Complainants' site or the sites of others, including one of Complainants' competitors. Again, the link to Complainants' site uses an identifier provided under Complainants' affiliate program in a manner that is not authorized by Complainants. These uses are not bona fide.

Second, it does not appear that either of the disputed domain names is the legal name of or is commonly used to identify any of the Respondents. Complainants attach a listing of "STAPLES" marks from the United States Patent and Trademark Office database and assert that none of them are owned by the Respondents (the list itself does not include the ownership information). Of course, a narrow search limited to U.S. federal registrations does not support the broad assertion that Respondents "do not own any trademarks containing STAPLES, STAPLES.COM, or any similar term." Nonetheless, the Panel believes that Complainants have met their burden under Rule 3(b)(ix)(2).

Third, it does not appear that Respondents are making a legitimate non-commercial or fair use of the domain names. In this regard, it is important that Respondents' sites do not use the terms "staple" or "staples" in their primary sense, for their ordinary English meaning, but instead to refer to Complainants. Further, testimony provided by Complainants' strongly suggests that Respondents are using the domain names to reroute visitors who are seeking Complainants' site through the "www.wwwstaple.com" and "www.wwwstaples.com" sites to generate revenue through Complainants' affiliate program.

These circumstances, combined with the adverse inference drawn by Respondents' failure to respond formally to the Complaint, are more than sufficient to meet Complainants' burden.

The Panel finds that Respondents have no rights or legitimate interests in the disputed domain names.

Complainants have established that Respondents have registered and used the domain names in bad faith by showing that Respondents use the names to intentionally try to attract, for commercial gain, visitors to Respondents' sites, by creating a likelihood of confusion with the STAPLES mark as to the source, sponsorship, affiliation, or endorsement of Respondents' sites or the goods and services on Respondents' sites. See Policy, paragraph 4(b)(iv).

First, other panels have concluded that the mere registration of a domain name that is a common misspelling of another's mark is evidence of bad faith registration and use.

In addition, it is reasonable to conclude that the domain names attract visitors who are actually seeking Complainants' site. In both cases, the visitors who reach Complainants' site (either by being automatically rerouted through "www.wwwstaples.com" or clicking on the link displayed on "www.searchblaster.com" after being automatically rerouted through "www.wwwstaple.com"), may generate revenue through Complainants' affiliate program. That this is intentional is evidenced by the use of the links provided under Complainant's affiliate program.

Respondents' use of links to Complainants' site also establishes their actual knowledge of Complainants, including knowledge of the STAPLES mark.

Under these circumstances, the Panel finds that Respondents have registered and used the domain names in bad faith.

7. Decision

For the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain names <wwwstaples.com> and <wwwstaple.com>, be transferred to Complainant, Staples, Inc.

Debra J. Stanek
Sole Panelist

Dated: June 4, 2004

1 Although the registration information for Respondent DL Enterprises does not provide a state, the zip code given is that for Woodbury, New York.

2 Section 5 of the notice clearly stated that a response was due 20 days after the April 8, 2004 commencement, citing Rule 5. While the notice also incorrectly identified the due date as April 22, 2004, this was an obvious clerical error, and, as discussed above, Respondents were not notified of their default until after the correct due date had passed.