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Arbitration and Mediation Center
Staples, Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial, Inc. v. Staple.com
Case No. D2003-1028
1. The Parties
Complainants are Staples, Inc., Staples The Office Superstore, Inc., Staples Contract & Commercial, Inc., Framingham, Massachusetts, United States of America, represented by Wolf, Greenfield & Sacks, P.C., United States of America.
Respondent is Staple.com, Edmonton, Canada, represented by Craig Mitchell.
2. The Domain Name and Registrar
The disputed domain name <staple.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the
"Center") on December 23, 2003. On December 24, 2003,
the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a
request for registrar verification in connection with the domain name at issue.
On December 25, 2003, OnlineNic, Inc. d/b/a China-Channel.com transmitted
by email to the Center its verification response confirming that Respondent
is listed as the registrant and providing the contact details for the administrative,
billing, and technical contact. In response to a notification by the Center
that the Complaint was administratively deficient, Complainants filed an amendment
to the Complaint on January 6, 2004. The Center verified that the
Complaint together with the amendment to 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 January 7, 2004.
In accordance with the Rules, paragraph 5(a), the due date for Response was
January 27, 2004. On January 21, 2004, Respondent requested
an extension of time of one week to file the Response. Complainants took no
position on that request but noted that it did not appear that Respondent had
shown any exceptional circumstances, as required under the Rules, paragraph
5(d). Taking into account Complainants’ comments, on January 27, 2004,
the Center granted an extension of time until January 30, 2004. The
Response was filed with the Center one day late, on January 31, 2004.
Despite this failure to comply with the Rules, the Panel admits the Response
in the interests of fairness and because the delay was minimal.
The Center appointed Alan L. Limbury, Sandra Franklin and Clive L. Elliott
as panelists in this matter on March 4, 2004. The Panel finds that
it was properly constituted. Each member of 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.
On March 9, 2004, Complainants sought leave to file a Reply and submitted
a proposed Reply. Respondent filed an Objection on March 11, 2004.
Under the Rules, paragraph 12, the Panel may in its sole discretion request
further statements or documents from either of the parties. Thus, no party has
the right to insist upon the admissibility of additional evidence: SembCorp
Industries Limited v. Hu Huan Xin, WIPO
Case No. D2001-1092. It is appropriate to consider the circumstances
of each case before deciding whether to admit additional submissions: Toyota
Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises
Ltd., WIPO Case No. D2000-0802.
The Panel has considered the proposed Reply in order to decide whether to admit
it. The only ‘new evidence’ relied on is that a package containing the Response
was sent to Complainants from Mr. Mitchell, not from Respondent as named in
the registration details in 1998; that the package did not emanate from Canada,
where Respondent was said to be in 1998 and that the telephone number of Respondent
given for the sender of the package is in Utah. Similar details are given in
the Response. Complainants contend that Respondent has thus provided false contact
information, either to the Registrar in 1998 or to the Panel in 2004, and that
this goes to the issue of bad faith.
Given the passage of nearly 6 years since the disputed domain name was registered,
the Panel is not persuaded that this ‘new evidence’ should be accorded any weight.
Both in content and in timing (5 weeks after the Response), it appears to be
a device to make admissible the remainder of the proposed Reply, which constitutes
by far the bulk of it and which seeks impermissibly to re-argue each element
of Complainants’ case by taking issue with the points made by Respondent. It
also seeks to introduce certain Canadian trademark registration details which
were available to be exhibited to the Complaint.
The Panel has formed the view that this is not a case of discovery of evidence
(of any substance) not reasonably available to Complainants at the time of their
initial submission, nor of arguments by Respondent that Complainants could not
reasonably have anticipated: see Goldline International, Inc. v. Gold Line,
WIPO Case No. D2000-1151. Accordingly,
the Panel does not admit the Reply and disregards it.
The language of the proceeding was English.
4. Factual Background
Complainants are related corporations involved continuously since 1986 in the
retailing to consumers and businesses in North America and Europe, under the
name and mark STAPLES, of office supplies, business services, furniture and
technology. The mark STAPLES has been heavily advertised and promoted in connection
with these activities.
Staples Inc. is the proprietor of United States registered trademark STAPLES,
No. 1438390, registered on April 28, 1987, in respect of office
supply store services. It is also the proprietor of United States registered
trademark STAPLES, No. 1459182, registered on September 29, 1987,
in respect of operation of mobile retail stores for the sale of office supplies,
office furniture and related items, and in respect of office supplies, namely
pads of paper.
Staples The Office Superstore, Inc. is the proprietor of United States registered
trademark STAPLES.COM, No. 2397238, registered on October 24, 2000,
in respect of mail order catalog services via a global computer network featuring
office supplies, office furniture, computer hardware and software, computer
accessories, and telephones. This mark was first used in commerce in November
1998 and the application to register the mark was filed on April 20, 1999.
Since March 5, 1995, Staples Inc. has been the registrant of the
domain name <staples.com> and since March 29, 2000, it has been
the registrant of the domain name <staples.biz>. Since July 27, 2001,
Staples The Office Superstore has been the registrant of the domain name <staples.info>.
Since April 19, 2002, Sandy Goldstein, the Manager, Partnerships &
Online Marketing at Staples Contract & Commercial, Inc., has been the registrant
of the domain name <staples.us>.
Staples Contract & Commercial, Inc. operates an "Affiliate Program"
whereby its designated Affiliates receive commissions from sales made through
the <staples.com> website to purchasers referred by the Affiliates. The
contractual arrangements stipulate for Staples Contract & Commercial, Inc.
to specify and provide the only links and marks that Affiliates may use on their
websites in order to provide a "certified" link to the <staples.com>
website. Affliates agree that "Staples.com" shall be the exclusive
Office Products Supplier on their site. They are licensed to use the STAPLES.COM
trademark and logo for the sole purpose of selling Staples products on their
site for Staples.com. Affiliates are assigned a unique identifier number, for
use only in connection with their nominated website, which number is logged
every time a potential Staples customer clicks through the Affiliate’s nominated
website. This enables appropriate commissions to be paid to the Affiliate.
The disputed domain name <staple.com> was registered on April 14, 1998.
5. Parties’ Contentions
Complainants’ extensive use in commerce of the <staples.com> domain name
evidences Complainants’ ownership of common law rights in that mark. Complainants
also own the famous registered mark STAPLES, further evidencing Complainants’
rights in that mark.
The disputed domain name is identical to Complainants’ company name and famous
registered trademarks STAPLES and STAPLES.COM. The removal or addition of the
plural letter ‘s’ at the end of the disputed domain name does not obviate confusion.
Confusing similarity is established by the fact that the disputed domain name
is virtually identical to Complainants’ famous registered trademarks STAPLES
Respondent is not licensed by any of Complainants to use the STAPLES or STAPLES.COM
marks and has no rights or legitimate interests in the disputed domain name.
Removing the letter ‘s’ from the STAPLES mark does not create a new mark in
which Respondent has legitimate rights.
Since registering the disputed domain name, Respondent has not created a website
corresponding to it. At some point after registering the disputed domain name,
it was linked automatically to the <staples.com> website.
The disputed domain name was registered and is being used in bad faith in that,
with both constructive and actual knowledge of Complainants’ trademark rights,
Respondent registered and uses a typosquatted domain name; is misusing Complainants’
Affiliate Program; incorporated Complainants’ famous registered trademark and
company name into the domain name in its entirety; and failed to make any use
of the disputed domain name until it linked to <staples.com>. Further,
there is the implausibility of any legitimate reason for Respondent’s choice
of a domain name that both incorporates Complainants’ famous trademarks 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.
As to constructive knowledge, Complainants’ mark STAPLES was registered in
the United States in 1987 and its domain name <staples.com> was registered
in 1995. Because Complainants are based in the United States and Respondent
is merely redirecting all its web traffic to their website based in the United
States, it is appropriate to apply the principle of constructive notice of Complainants’
trademark registrations, pursuant to 17 U.S.C. § 1072. The domain name registration
agreement states that the governing law is that of California. See also Wal-Mart
Stores, Inc. v. Walmart Canada, WIPO Case
No. D2000-0150, in which principles of law set out in U.S. court decisions
were applied even though Respondent resided in Canada.
As to actual knowledge, it is inconceivable that Respondent did not have 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 the website <staples.com> in 1998. Respondent appears
to maintain some establishment in Edmonton, Canada, in which area Complainants
have seven Staples stores.
The misuse of Complainants’ Affiliate Program comes about in the following
way. First, when web traffic to the disputed domain name is automatically redirected
by Respondent to the <staples.com> website, the unique identifying number
assigned to a Staples Affliate, Smart Biz, is logged with Staples. Under the
Affiliate Program, that number is supposed to be associated only with the website
<smartbiz.com>. Second, the Smart Biz unique identifying number is credited
with commission each time customers who initially typed in <staple.com>
purchase goods from the <staples.com> website.
As the registrant of the disputed domain name, Respondent is responsible for
thus defrauding Complainants into paying commissions on what they were led to
believe were referred sales when in fact the purchasers were seeking to buy
directly from Complainants. Complainants’ customers were defrauded because those
who accessed <staples.com> through the disputed domain name most likely
thought there was some approved, established connection between Respondent and
Complainants or that Complainants and Respondent were one and the same.
Web users may save the disputed domain name as a ‘favorite’ in their web browsers,
thereafter being directed to the website of Respondent’s choosing whenever they
click on their ‘Staples’ favorite’ link.
[Respondent referred to all Complainants compendiously as one].
Complainant claims Respondent must have known of its trademarks STAPLES and
STAPLES.COM when registering the disputed domain name in April 1998. According
to Complainant’s trademark application, STAPLES.COM was not used in commerce
before November 1998.
Complainant’s Affiliate Program was launched some time between May 1999
and March 2000 and according to the Canadian Intellectual Property Office,
Complainant used the mark STAPLES in Canada "since at least as early as
March 2000" but did not register that mark until 2002. Complainant has
not stated when its Edmonton stores were opened nor the business names of those
stores. It’s <staples.ca> website seems to have been launched in 2000.
Others have registered STAPLE and STAPLES at the USPTO. Other applications
to register those marks have been rejected, including applications by Complainant
to register marks incorporating STAPLES.
Respondent denies that it knew of Complainant’s rights in the mark STAPLES
when it registered the disputed domain name. Respondent had no knowledge other
than the fact that a common dictionary word was available for registration.
It is not a violation of the Policy simply to register a generic word and match
that word with a pool of advertisers seeking to use them [sic].
Respondent expends considerable time and effort to configure the domain for
shared use among advertisers in the third party database. It derives revenue
from its business, has a legitimate expectation in the continuation of its revenue,
and consequently, UDRP panels have repeatedly found that companies that employ
this business model such as Ultimate Search to be engaged in a legitimate business
The term "staple" has meanings including a commodity, a basic element
or feature, a basic dietary item and/or a city. Respondent maintains that <staple.com>
has always been active and has and is being used as a search engine that serves
advertisements from partners since April 1998.
Respondent asserts that it has been commonly known and has been doing business
as Staple.com since April 1998, prior to Complainant’s use of "Staples.com"
in commerce. Respondent contends that since it has been using <Staple.com>
since April 1998, it has common law rights to the name "Staple.com".
As documented by Complainant, Respondent registered and was using <staple.com>
prior to Complainant’s use of "Staples.com".
Respondent maintains that there is and always has been a website associated
with <staple.com> and users would therefore not be able to bookmark it
if the redirection Complainant alleges is accurate.
The dispute between Complainant and SmartBiz is beyond the limited scope of
this arbitration. Complainant alleges that SmartBiz violated the terms of its
Affiliate Program. According to SmartBiz, it was accepted into Complainant’s
Affiliate Program on May 27, 2003, and was removed on January 7, 2004,
the commencement date of this proceeding.
Respondent and SmartBiz entered into a contract for specific keywords between
June 1, 2003, until Respondent terminated its relationship with SmartBiz
on January 7, 2004. During that time, SmartBiz was licensed to use
Complainant’s Affiliate Program and until this proceeding, Complainant never
notified Respondent or SmartBiz of SmartBiz’s alleged abuse. Upon notification
of this proceeding, Respondent terminated its contract with SmartBiz and in
addition, removed all instances of partner links including Complainant’s to
Respondent denies it has intentionally attempted to attract, for commercial
gain, Internet users to its website or other on-line location, by creating a
likelihood of confusion with Complainant's mark as to the source, sponsorship,
affiliation, or endorsement of Respondent’s website or location or of a product
or service on Respondent’s website or location.
The confusion Complainant alleges stems from Complainant’s and others (including
SmartBiz) use of keyword advertising of Respondent’s mark <staple.com>
and <staple> in partner engines. Complainant is paying .07/click for <staple.com>
and .25/click for <staple> in Overture and approximately .25/click for
<staple> and $10 Canadian dollars for <staple> to appear above the
1.1 million results for "staple" in Google. By employing these tactics,
Complainant is purposely diverting traffic from Respondent’s site to its own.
Once again, all of these partner links have been removed from Respondent’s website.
The confusion Complainant alleges was not intentional as Complainant has no
trademark on "staple" or "staple.com".
Additionally, upon notice of disputes, Respondent promptly seeks to resolve
The practice of registering generically-applicable domain names and deriving
revenue from advertiser referral links from the corresponding website was affirmed
as establishing a legitimate interest in Sweeps Vacuum v. Nett Corporation,
WIPO Case No. D2001-0031, which involved
the domain name <sweeps.com>, in which the domain name was used not in
the trademark sense, but to describe the types of businesses (sweepstakes related)
listed on the directory page. See CRS Technology Corporation v. Condenet,
Inc., NAF Case No. FA93547 (finding that where the registrant is
using the domain name to communicate some aspect of the services it provides,
then the first to register a domain name containing a generic or descriptive
mark should prevail, absent bad faith and a lack of legitimate interest).
Respondent denies that it is "typosquatting" Complainant’s trademarks,
as evidenced by Respondent’s registration of the domain name prior to Complainant’s
trademarks and commercial usage. Additionally, Complainant’s argument that Respondent
is diverting traffic or controlling Complainant’s members to Respondent’s website
through <staple.com> is outrageous.
Respondent denies that it is incorporating Complainant’s entire corporate name
and famous trademark as Respondent’s usage preceded Complainant’s commercial
As in America Online Inc. v. Media Dial Communications, WIPO
Case No. D2001-0799, Respondent should have a right to use a common
English word to describe its services. Otherwise, parts of the English language
would soon be acquired and removed from common use by those wishing to name
their businesses or describe their services.
6. Discussion and Findings
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,
the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy requires that a complainant must prove each of
the following three elements to obtain an order that a domain name should be
cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trademark
or service mark in the complainant has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect
of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad
A. Identical or Confusingly Similar
It is established that essential or virtual identity is sufficient for the
purposes of the Policy. Likewise, it is established that the test of confusing
similarity under the Policy is confined to a comparison of the disputed domain
name and the trademark alone, independent of the other marketing and use factors
usually considered in trademark infringement or unfair competition cases.
It is not disputed and the Panel finds that the domain name <staple.com>
is virtually identical and confusingly similar to Staples Inc.’s trademark STAPLES.
Complainants have established this element of their case.
B. Rights or Legitimate Interests
Although the words ‘staple’ and ‘staples’ are common descriptive words in the
English language, Complainants have shown that the mark STAPLES, to which the
word ‘staple’ is confusingly similar, has been used by them since 1986 and has
become distinctive of their business and services in North America. Complainants
have not licensed Respondent to use that mark or any mark confusingly similar
Respondent says it entered into a contract with Smart Biz a few days after
Smart Biz joined Complainants’ Affiliate Program and that Respondent terminated
its contract with Smart Biz on the very day on which Complainants terminated
their commission arrangement with Smart Biz. This account is consistent with
Complainants’ assertions regarding the use by Respondent of the disputed domain
name to link to Complainants’ <staples.com> website and the use by Respondent
of the Smart Biz identifier in order to generate commissions to Smart Biz from
sales made to Internauts reaching the <staples.com> website via the disputed
domain name. Respondent has not specifically denied that it acted in this way
prior to notice of the Complaint.
The Panel infers that Respondent’s contract with Smart Biz ceased to be of
value to Respondent once those commissions from Complainants were terminated
and concludes that Respondent did use the disputed domain name in the manner
described by Complainants, in order improperly to siphon profits from Complainants
to Smart Biz.
It appears that such use of the disputed domain name began shortly after Smart
Biz was accepted into Complainants’ Affiliate Program, which Respondent says
was on May 27, 2003.
Respondent has asserted that it has been commonly known and has been doing
business as Staple.com since 1998; that it "expends considerable time and
effort to configure the domain for use among advertisers in the third party
database"; and that <staple.com> "has always been active and
has and is being used as a search engine that serves advertisements from partners
since April 1998". However, Respondent has produced no evidence of any
of these assertions. Its claim to common law trademark rights arising out of
its asserted use of the disputed domain name since 1998 is likewise unsubstantiated.
Having asserted that the disputed domain name has always been active and then
to fail to provide any evidence of its use for the period of over 5 years between
registration and the commencement of its siphoning activity leads the Panel
to conclude that Respondent has no right or legitimate interest in the disputed
domain name, despite that name comprising a common English word. See Alberto-Culver
Company v. Pritpal Singh Channa, WIPO
Case No. D2002-0757.
Complainants have established this element of their case.
C. Registered and Used in Bad Faith
Respondent’s use of the disputed domain name since about June
2003 to redirect traffic to Complainants’ website <staples.com> in order
to siphon profits to Smart Biz was clearly done with knowledge of Complainants’
rights in the mark STAPLES. It involved intercepting traffic intended for Complainants’
website but mis-typed by omitting the final 's'. Respondent stood to gain from
this syphoning of profits, through its contract with Smart Biz, which was of
value to Respondent only so long as Smart Biz remained an Affiliate of Complainants.
Such use falls squarely within the circumstances contemplated in the Policy,
paragraph 4(b)(iv), being use of the disputed domain name intentionally to attract,
for commercial gain, Internauts to Respondent’s on-line location by creating
a likelihood of confusion with Complainants’ mark as to the source of Respondent’s
Use within that paragraph of the Policy is to be taken as evidence of both
bad faith registration and bad faith use, both of which must be established.
Registration in bad faith is insufficient if Respondent does not use the domain
name in bad faith, and conversely, use in bad faith is insufficient if Respondent
originally registered the domain name for a permissible purpose.
In this case the bad faith use commenced some 5 years after registration. The
Policy enables a finding of bad faith registration to be made where bad faith
use within the Policy, paragraph 4(b)(iv) is the only evidence tending to show
the purpose for which the domain name was registered. Where, however, there
is other relevant evidence, such as evidence that the domain name was registered
for a permissible purpose, it must be weighed against any evidence of bad faith
registration constituted by evidence of bad faith use within paragraph 4(b)(iv).
It is difficult to imagine circumstances in which, under this approach, subsequent
bad faith use within paragraph 4(b)(iv) would suffice to prove that a domain
name was originally registered in bad faith: Passion Group Inc. v.Usearch,
Inc., eResolution case AF-0250, followed in Viz Communications, Inc.,
v. Redsun dba "www.animerica.com" and David Penava, WIPO
Case No. D2000-0905.
Here, there is simply no evidence that the domain name was registered for a
permissible purpose and the evidence of bad faith use within paragraph 4(b)(iv),
albeit after 5 years, is the only evidence tending to show the purpose for which
the domain name was registered. Accordingly the Panel finds the disputed domain
name was registered and is being used in bad faith.
Complainants have established this element of their case.
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 <staple.com>
be transferred to Complainant Staples, Inc.
Alan L. Limbury
Clive L. Elliott
Date: March 17, 2004