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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OfficeMax, Inc. and OMX, Inc. v. Mark Braska
Case No. D2002-0431
1. The Parties
Complainants are OfficeMax, Inc. and OMX, Inc., a wholly-owned subsidiary of OfficeMax, Inc. According to its complaint, OfficeMax, Inc. is a corporation incorporated under the laws of the State of Ohio, with its principal place of business in Shaker Heights, Ohio, United States of America, and OMX, Inc. is a corporation incorporated under the laws of the State of Nevada, with headquarters in Las Vegas, Nevada, United States of America.
Complainants are respresented in this proceeding by Deborah A. Wilcox of the law firm Baker & Hostetler, L.L.P., Cleveland, Ohio, United States of America.
The Respondent in this proceeding is Mark Braska. According to the Bettterwhois Whois database, Respondent’s address is in Darien, Connecticut, United States of America.
2. The Domain Names and Registrar
The dispute is with respect to the following domain names (hereafter "the domain names") <officcemax.com>, <officeemax.com>, <offocemax.com>.
The registrar with which this domain name is registered is eNom, Inc., Redmond, Washington, United States of America (hereafter "the Registrar").
3. Procedural History
The procedures for resolving Complaints like this one are governed by the Uniform Domain Name Dispute Resolution Policy (hereafter "The Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (hereafter "The Rules"), as well as the Supplemental Rules of the WIPO Arbitration and Mediation Center (hereafter "The Supplemental Rules").
The current dispute lies within the scope of the Policy, so that the Panel does have proper jurisdiction to hear and decide this dispute. The terms and conditions of the registration agreement between Registrar and the Respondent clearly incorporate the Policy, so that Respondent was notified of the existence of the Policy’s provisions for domain name dispute resolution. The Policy contains in its Paragraph 4(a) the elements to be pleaded in order for a mandatory administrative proceeding such as this one to be held: Complainant must allege that (i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that (ii) Respondent has no rights or legitimate interests in the domain name; and that (iii) Respondent’s domain name has been registered and is being used in bad faith. See the Policy, Paragraph 4 (a). In order to successfully make its case, the Complainant must prove each of these three elements.
An electronic copy of the complaint was filed with the Center on May 3, 2002, with a hard copy filed on May 6, 2002. An electronic copy of an amended complaint was filed with the Center on May 8, 2002, with hard copy filed with the Center on May 14, 2002. The amended complaint includes Annexes 7 and 8, which list Complainant’s worldwide OfficeMax mark registrations and its U.S. registrations, respectively. A request for Registrar Verification was made to the Registrar on May 10, 2002, and such Verification was made on May 14, 2002. On May 15, 2002, the Center notified the Registrar of the filing of the complaint with the Center.
The Center’s formal Notification to Respondent of May 15, 2002, was sent to Respondent by post/courier and email. There is no indication of communication problems or non-receipt of this Notification by Respondent. Paragraph 5 of this Notification indicates the last day for Respondent to send its Response to the complaint to the Center and to Complainant was June 4, 2002. As Respondent has not replied, on June 10, 2002, a Notice of Default in the case was sent to Respondent.
Although no Response has been received, under Paragraph 6 of the Center’s Notification to Respondent of May 15, 2002, citing Paragraph 14 of the Rules, the Administrative Panel may choose to go ahead and review the facts in the case and make its decision based upon the facts before it at this time, as well as drawing any appropriate inferences from Respondent’s failure to respond.
The Panel consists of a single Panelist pursuant to Complainant’s request, and the Panelist was duly appointed by the Center. A Statement of Acceptance and Impartiality and Independence was submitted to the Center by the Panelist on June 20, 2002, and the Panelist was appointed by the Center on June 21, 2002. A decision on the Complaint is due within 14 days of the appointment of the Panel under Paragraph 15(b) of the Rules.
There have been no further submissions by either side as of the date of this decision.
4. Factual Background
First, it is noted that because no Response has been received from Respondent, the facts cited in the Complaint will be evaluated on their own merits.
Complainant states that for a long time prior to Respondent’s registration of the domain names, Complainant has continuously owned and used the name and trademark "OfficeMax" in connection with its office-related products and services, with large numbers of Complainant’s trademarks having been registered with the U.S. Patent & Trademark Office. Complainant also states that it has registered the domain names <officemax.com>, <officemax.net>, <officemax.org> and <officemax.biz>, with <officemax.com> also registered as a U.S. trademark. See Complaint, paragraphs 12(a)(ii)(iii) and (iv) and annexes related thereto.
5. Parties’ Contentions
Because no answer has been received from Respondent, the contentions cited herein will be those of the Complainant only.
In paragraph 12(c) of its Complaint, Complainant alleges that Respondent registered the domain names, and up until Complainant sent Respondent a cease-and-desist letter, had been using the domain names to redirect visitors to an online travel agency website, <www.sunfinder.com>. After the cease-and-desist letter was sent, Complainant alleges that Respondent continued to use the domain names in a manner which resolved to a website run by Complainant’s competitor, at <www.staples.com>.
As a result, Complainant asks this Panel to issue a decision for the domain names to be transferred to Complainant, in accordance with Paragraph 4(i) of the Policy.
To support its contentions, Complainant, in Paragraph 13(a) of the Complaint, alleges that (1) the domain names are identical or confusingly similar to Complainant’s marks referred to in Section 4 of this decision; (2) the Respondent has no rights or legitimate interests in the domain names; and (3) the domain names are registered and are being used in bad faith.
As regards element (1) above, the confusion element, Paragraphs 12(b)(i) and (ii) of the Complaint state that Respondent is merely adding or changing a single letter in the middle of the domain names. This practice, labelled "typosquatting" by Complainant’s attorney, does not further distinguish Respondent’s usage from Complainant’s "Office Max" related marks in any meaningful way.
As regards element (2) above, the lack of rights or legitimate interests in the domain name element, Paragraph 12(c) of the Complaint asserts that Respondent has no intellectual property rights in the domain name, and is using the domain name without the consent of Complainant.
As regards element (3) above, the bad faith element, Paragraph 12(d) of the Complaint alleges that Respondent has made no use of the domain other than to leverage Complainant’s name, reputation and mark to attract visitors to Respondent’s site, and automatically re-direct these visitors to a competitor’s website. Complainant alleges that the initial re-direction referred to above, to the on-line travel agency, was stopped only upon receipt by Respondent of a cease-and-desist letter sent by Complainant.
6. Discussion and Findings
Based on the facts and contentions referenced above, the Panel finds as follows:
a. Respondent has not disputed any allegations of fact by Complainant in Section 5 of this Decision, and the Panel accepts these allegations as true.
b. Complainant has adequately demonstrated its own intellectual property rights in the trademarks "Office Max" and other closely affiliated marks containing the word "Office Max".
c. As regards proof of element (1) above, the confusion element, Complainant is alleging that the mere addition of a single letter in the middle of a domain name creates confusion between Complainant’s marks and Respondent’s domain name. To support its contention, Complainant cites a number of WIPO domain name decisions where these kinds of additions have been held to create substantial confusion, such as The Sportsman’s Guide, Inc. v. Zuccarini, WIPO Case No. D2001-0617 (July 2001) and Primedia Magazine Finance, Inc. v. Zuccarini, WIPO Case No. D2000-1186 (November 2000), see Complaint, Paragraph 12(b)(ii).
The Panel agrees with Complainant, and also cites the AT & T v. LanLA case, WIPO Case No. D2001-0890 (October 2001), in which this very same Panel found that the mere addition of a generic prefix or suffix is not sufficient to eliminate confusion between the Complainant’s trademark (AT & T) and a domain name registered by the Respondent in that case (atthola.com). "Hola" is a generic Spanish word for "hello" commonly used in telephone greetings.
Furthermore, the insertion of the letter "e" between "office" and "max" strongly suggests an e-commerce element, implying that this is an e-commerce domain name/website sponsored by Complainant Office Max – which is clearly not the case. On the contrary, according to Paragraph 12(a)(v) and (vi) of the Complaint, Complainant has acquired an excellent reputation on its own for being one of the most prominent and best electronic commerce websites, with some 3 million visitors per month.
d. As regards proof of element (2) above, the lack of legitimate interests or rights in the domain name, Respondent has failed to assert any such interest or right. Therefore, the Panel finds that Respondent does not have any such interest or right.
e. As regards proof of element (3) above, the bad faith element, Complainant cites a number of WIPO Panel decisions in support of the proposition that the misdirection of traffic to other websites from websites with domain names confusingly similar to famous trademarks is a strong evidence of bad faith under the UDRP. See for example, General Electric Co. v. Fisher Zvieli, WIPO Case No. D2000-0377 (July 2000) and The Sportsman’s Guide, Inc. v. Zuccarini cited above ("Respondent’s registration of a domain name consisting of a slight misspelling of Complainant’s mark in an effort to redirect traffic to other sites, for purposes of commercial gain, itself constitutes evidence of ‘bad faith’"). This Panel agrees.
The Panel concurs with Complainant that Respondent appears to have had no other commercial use for the names other than to attract visitors to a competitor’s website based on attempts to create confusion with the legitimate "Office Max" marks.
Paragraph 4(b) of the Policy cites, without limitation, various examples of bad faith. Paragraph 4(b)(iv) of the Policy provides one such example of bad faith by a Respondent:
"(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location."
The Panel finds that this situation occurs in the present case.
Based upon the Panel’s Findings from Section 6 above, and under its authority vested by Paragraph 4(i) of the Policy, the Panel’s Decision and order is for the Registrar to transfer the domain name registration to the Complainant.
Paul E. Mason
Dated: June 27, 2002