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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Staples, Inc., Staples The Office Superstore, LLC, and Staples Contract & Commercial, Inc. v. Spiral Matrix a/k/a Kenyatech.com a/k/a Kentech.com

Case No. D2006-0227

 

1. The Parties

The Complainants are Staples, Inc., Staples The Office Superstore, LLC, and Staples Contract & Commercial, Inc., all of Framingham, Massachusetts, United States of America.

The Respondent is Spiral Matrix a/k/a Kenyatech.com a/k/a Kentech.com, of Eldoret, Kenya.

 

2. The Domain Names and Registrar

The disputed domain names <staplesbuisnessdepot.com>, <staplescatalog.com>, <staplescopyandprintcenter.com>, <staplesofficecenter.com>, <staplesofficedepot.com>, and <staplesweb.com> are registered with Intercosmos Media Group d/b/a directNIC.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2006. On February 22, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain names at issue. On February 22, 2006, Intercosmos Media Group d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 the Respondent of the Complaint, and the proceedings commenced on February 27, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 19, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 20, 2006.

The Center appointed Edward C. Chiasson, Q.C. as the Sole Panelist in this matter on March 24, 2006. The panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Administrative Panel finds that it was properly constituted.

 

4. Factual Background

The following information derives from the Complaint and material delivered by the Complainants.

The Complainants are related corporations.

The Complainants retail, among other things, office supplies, business services, furniture and technology to consumers and businesses in North America and throughout Europe.

The Complainants’ first store opened in 1986, and has operated continuously under the name STAPLES since then. The Complainants prominently and continuously have used the mark STAPLES for the sale of the aforementioned products and services since 1986. The Complainants operate a primary website and e-commerce business at <staples.com> and have operated this website since at least 1998, before any of the subject domain names were registered.

In addition to their rights in the mark STAPLES at common law, the Complainants own 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;

- 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; and

- Reg. No. 2,926,932 (February 15, 2005) for the mark STAPLES COPY & PRINT CENTER ADVANTAGE for printing and copying services.

In each of the past several years, the Complainants have had several billion dollars in annual sales under and in conjunction with the STAPLES trademarks. The Complainants have invested millions of dollars in the advertising and promotion of these marks and the associated goods.

The Complainants registered the domain name <staples.com> on March 5, 1995, and have used this domain name for on-line merchandising since at least as early as 1998.

The Complainants also have registered the domain names <staples.biz>, <staples.info>, <staples.us>, and <staplesbusinessdepot.com>.

The Complainants also market their “Staples Copy & Print Center” on their website at “http://http://www.staples.com/copyemail”. Staples Copy & Print Center is well known to the public as one of the services the Complainants provide.

The Complainants have been successful in a number of proceedings under the Policy in establishing their rights to domain names such as <staplesrebate.com>, <ataples.com>, <sstaples.com>, <staaples.com>, <staoles.com>, <staple.com>, <stpales.com>, <wwwstaples.com>, and <wwwstaple.com>. Staples, Inc. et al. v. Ryan Conrad, WIPO Case No. D2003-0713 (October 27, 2003); Staples, Inc. et al. v. John Sansone, Case No. D2004-0018 (February 26, 2004); Staples, Inc. et al. v. John Morgan, WIPO Case No. D2004-0537 (September 20, 2004); Staples, Inc. et al. v. Staple.com, WIPO Case No. D2003-1028 (March 17, 2004); Staples, Inc. et al. v. SkyLabs Corporation and DL Enterprises, WIPO Case No. D2004-0220 (June 4, 2004).

The Respondent has only created websites that are portal sites at all of the subject domain names. These pages link to sponsored websites on a variety of topics, including numerous sponsored links to websites of entities not connected with the Complainants.

Several of the entities linked from the subject domain names are competitors of the Complainants. For example, at <staplesofficedepot.com>, the top link under “Popular Categories” is “Office Depot”, under which there is a “Featured Site” link to Office Depot, a competitor of the Complainants.

The sponsored links at <staplesofficedepot.com> are provided by “searchportal.information.com”. This provides links to sponsored websites on a variety of topics.

The websites at other of the subject domain names are similar to that at <staplesofficedepot.com>, although they appear to be run by the Respondent rather than the “searchportal.information.com” sponsored link service. In addition, the other subject domain names feature a “Buy This Domain!” link.

The Respondent does not own any trademarks containing STAPLES, STAPLES.COM, STAPLES COPY & PRINT CENTER ADVANTAGE, or any similar term.

The Respondent has not been known commonly by the mark STAPLES or by the subject domain names.

The Respondent has not made any demonstrable preparations to use the subject domain names in connection with any bona fide offering of goods or services.

The Respondent is not making any legitimate non-commercial or fair use of the subject domain names.

The Respondent has been the losing respondent in at least fifteen other UDRP proceedings.

Some of the subject domain names are registered to the name “Spiral Matrix” while one is registered to the name “Helois Lab”. All of the subject domain names have the same mailing address and phone number for their administrative, billing, and technical contacts.

The Respondent derives revenue from the passive use of the websites to which the subject domain names resolve.

The Respondent did not participate in this proceeding.

 

5. Parties’ Contentions

A. Complainants

The Complainants rely on their common-law use and registration of the word STAPLES and assert that the subject domain names are virtually identical or confusingly similar to their mark.

The Complainants contend that the Respondent does not have a legitimate interest in the subject domain names and state that the Respondent is not authorized to use the Complainants’ mark and that no legitimate use is being made of the subject domain names. The Respondent is not known commonly by either the Complainants’ mark or the subject domain names.

Bad faith is said to be shown by a number of factors, including the fact that the Respondent has a history of cybersquatting, the notoriety of the Complainants’ mark, the presence of a link offering the subject domain names for sale and the fact that the Respondent is profiting by capitalizing on the goodwill of the Complainants’ name and mark.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainants to prove that:

(i) the subject domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the subject domain names; and

(iii) the subject domain names have been registered and are being used in bad faith.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the subject domain names primarily for the purpose of selling, renting, or otherwise transferring the subject domain names’ registration to the Complainants who are the owners of the trademark or service mark or to a competitor of the Complainants, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the subject domain names;

(ii) registration of the subject domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the subject domain names primarily for the purpose of disrupting the business of a competitor;

(iv) by using the subject domain names, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainants rely on previous domain name dispute decisions. While often these are helpful, they are neither controlling nor binding on this Administrative Panel.

A. Identical or Confusingly Similar

It is clear that the Complainants have rights to the word STAPLES, both at common-law through use and by registration. While it is true that some of the domain names are “virtually” identical to the Complainants’ mark, different criteria are involved in a consideration whether a domain name is identical or is confusingly similar to a mark.

In this case, all of the subject domain names incorporate the Complainants’ mark. All, but one, couple the Complainants’ mark with words that connote aspects of the Complainants’ business. The remaining domain name, <staplesweb.com>, combines the Complainants’ mark with a generic word descriptive of the World Wide Web. There is a clear likelihood of confusion.

The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainants point to the usual indicia of a lack of legitimate interest: not known by the subject domain names; not authorized to use the Complainants’ mark; trading on the Complainants’ reputation. These criteria raise an inference that the Respondent does not have a legitimate interest in the subject domain names.

Although a respondent is not obliged to participate in a domain name dispute proceeding, if it were to fail to do so, it would be subject to the usual inferences that derive from the not unreasonable factual assertions of the complainant.

In this case the Respondent has not participated.

The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

A finding that a respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of a complainant does not lead automatically to a conclusion of bad faith, but the facts that give rise to the finding may be relevant to the bad faith inquiry.

The Complainants’ mark clearly is well known and well known in the context of the office supply business. The Respondent linked the subject domain names to the product of a competitor, which suggests that the Respondent was well aware of the Complainants’ business and mark.

Although previous activity as a cybersquatter is not conclusive, such similar conduct legitimately can be considered by an administrative panel, particularly where a respondent makes no comment on it.

The course of conduct of the Respondent using the subject domain names passively to make revenue and linking them to a sales portal also raise a spectre of bad faith.

The Administrative Panel is satisfied that the Complainants have met the requirements of paragraph 4(a)(iii) of the Policy.

 

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainants have established their case.

The Complainants request that the subject domain names, <staplescopyandprintcenter.com>, <staplesweb.com>, <staplescatalog.com>, <staplesofficecenter.com>, <staplesbuisnessdepot.com>, and <staplesofficedepot.com>, be transferred to them. The Administrative Panel so orders.

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Edward C. Chiasson Q.C.
Sole Panelist

Dated: April 3, 2006