WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Xerox Corporation v. Imaging Solution

Case No. D2001-0313

 

1. The Parties

The Complainant is Xerox Corporation, a New York corporation having its principal place of business at 800 Long Ridge Road, Stamford, Connecticut 06904, U.S.A. (hereinafter the "Complainant" or "Xerox").

The Respondent is Imaging Solution (Xeroxdealers2-dom), having its principal place of business at Stuart, Florida, U.S.A.

 

2. The Domain Name and Registrar

The Domain Name at issue in this proceeding is "<xeroxdealers.com".>.

The Registrar is Network Solutions, Inc.

 

3. Procedural History

This action was brought in accordance with the ICANN Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the "Policy"), the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, dated October 24, 1999 (the "ICANN Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999.

Complainant submitted its Complaint in this proceeding to the WIPO Arbitration and Mediation Center ("the Center") by e-mail on March 2, 2001, and it was received in hard copy on March 6, 2001. On March 12, 2001 the Center requested that the Complainant amend the jurisdiction paragraph (paragraph 13) of its Complaint with respect to the designation of the appropriate Mutual Jurisdiction (see Paragraph 1 of the ICANN Rules). The requested amendment was made by the Complainant and was received by the Center by e-mail on the same day.

On March 13, 2001, the Center notified the Respondent of the Complaint, informing the Respondent, inter alia, that the deadline for submitting its Response was April 1, 2001. The Respondent did not file a Response by that date, and on April 3, 2001 the Center issued a Default Notice. No Response has been received since that time.

The Complaint was properly notified to the Respondent in accordance with Paragraph 2(a) of the ICANN Rules. Furthermore, the Registrar has confirmed that "<xeroxdealers.com" > was registered through Network Solutions, Inc. and that the current registrant of the domain name registration is Imaging Solution (XEROXDEALERS2-DOM). The Registrar has additionally confirmed that the Policy is applicable to the Domain Name and that the registration has an "Active" status.

On April 4, 2001 the Complainant filed a "Supplement to Address Respondentís Post-Complaint Activities". The Complainant stated in its cover letter to the Center that this Supplement had been sent to the Respondent by certified mail.

The Center appointed D. Brian King as Sole Panelist by Notification of April 10, 2001, and the undersigned Sole Panelist has submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.

No further submissions were received after the appointment of the Sole Panelist.

 

4. Factual Background

The facts relevant to the current matter are set out in the Complaint. Considering the evidence attached to the Complaint, and the fact that the Respondent has not filed a Response contesting the Complainantís contentions, the Panel finds the following facts to have been established.

The Complainant is a global leader in the document management field, providing a wide range of products and services. The mark "Xerox" is well-known both internationally and within the United States of America, and the Complainant spends millions of dollars annually to promote its goods and services.

The Complainant is the owner of the following United States federal trademark registrations: multiple registrations of "XEROX"; "XEROX QUALITY SERVICES"; "THE XEROX COMPANY STORE"; "INCONCERT, INC. A XEROX NEW ENTERPRISE COMPANY"; "XEROX SCAN MANAGER"; "XEROX PROFESSIONAL DOCUMENT SERVICES"; and "XEROX PRODUCTIVITY CENTRE" (see Registrations at Complainantís Exhibit 5).

In addition, the Complainant owns the domain name "<xerox.com", >, which was registered on January 9, 19986 Ė some 3 Ĺ years before the Respondent registered the Domain Name presently at issue, on September 30, 1999.

The Xerox website, which can be accessed at http://www.xerox.com, provides information on many of the goods and services offered by the Complainant. A portion of this website is dedicated to Xerox Authorized Dealers. The site is used both to recruit potential Xerox dealers and to permit consumers to locate Xerox dealers in their geographical area.

 

5. Partiesí Contentions

A. Complainant

The Complainant relies on the above factual background and contends, inter alia, that the three elements of Paragraph 4(a) of the Policy have been met.

The Complainant first argues that the Domain Name is identical or confusingly similar to trademarks in which it has rights, namely those listed in Section 4 above, as well as the registered domain name "<xerox.com". >. The Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name, and that it is not making legitimate fair use of the Domain Name. In this regard, the Complainant suggests that even a legitimate business relationship with the Complainant Ė which the Respondent did not have in the present case Ė would not provide a collateral right to make use of a name or mark that is the same as or confusingly similar to a trademark registered to the Complainant.

The Complainant further contends that the evidence indicates that the Respondent registered the Domain Name in bad faith and is using it in bad faith. In this regard, it cites the following activities by the Respondent:

- The sending of letter(s) by the Respondent to (at least one) third-party Xerox dealer, soliciting business for the Respondentís website and offering to list the dealer on its website for a fee (Complainantís Exhibit 6).

- The February 4, 2000 e-mail from Bryan Brown (apparently a principal of the Respondent) to the Complainant, stating that "if Xerox would like to purchase this site that can be discussed" (Complainantís Exhibit 7).

- Changes made to the Respondentís website on or about February 18, 2000 in order to list "product specification sheets" and listings of Xerox Authorized Dealers "that appeared to have been copied verbatim from Xeroxís own websites" (Complaint, paragraph 32).

- The Respondentís February 18, 2000 letter to Xerox refusing to deactivate the website and transfer the Domain Name to Xerox, further declining Xeroxís offer to reimburse its costs in registering the Domain Name, and stating that "[i]t is not for sale at [its] purchase price." In the same letter, the Respondent claimed to have spent in excess of US$30,000 on the website and asked Xerox to "make a fair and reasonable offer for the site as it is now" (Complainantís Exhibit 9).

- A second letter from the Respondent on August 17, 2000 seeking to "come to a workable solution concerning this matter" and asking "that Imaging Solution be granted Xerox Dealership without the initial Machine order, I secondly would like a Tektronix 750 demo printer" (Complainantís Exhibit 10).

- The featuring in the Respondentís website of several Xerox trademarks and logos, including the "XEROX AUTHORIZED DEALER" logo (see Complainantís Exhibit 11).

- The fact that after the ComplainantXerox refused to make the Respondent an aAuthorized Xerox dDealer, the Respondent informed the Complainant on

October 9, 2000 that it had no intention of removing the "XEROX AUTHORIZED DEALER" logo from the website (Complainantís Exhibit 12).

In its submission entitled "Supplement to Address Respondentís Post-Complaint Activities", filed after the initiation of these administrative proceedings but before the appointment of the Panel, the Complainant added the following contentions:

- Subsequent to the filing of the Complaint, the Respondentís website was changed (i) to feature a link to an active "Products Page" listing various Xerox products for sale; and (ii) to contain a prominent logo and link for "CopiersUSA", a third-party website selling various brands of copiers in competition to Xerox. The Complainant alleges that the Respondent earns a percentage of sales from copiers sold to Internet users who visit CopiersUSAís website via the link on the Respondentís website (Complainantís Exhibits 13, 14 and 15).

- On March 13, 2001, the Respondentís Bryan Brown claimed in an e-mail to the Center to be a Xerox Authorized Sales Agent. Subsequently, the Complainant allegedly discovered that Bryan Brown was an employee of a Xerox Authorized Sales Agent (albeit that no evidence of this has been provided). Nevertheless, the Complainant contends that neither Bryan Brown himself nor the Respondent itself are Xerox Authorized Dealers, and yet the Respondent uses the "XEROX AUTHORIZED DEALER" logo on its website.

The Complainant states that it believes that at the time the Respondent registered the Domain Name, it had actual knowledge of the Complainantís rights to the "XeroxEROX" mark and "<xerox.com" > domain name, and that it "registered the Domain Name in bad faith to take advantage of the tremendous reputation and goodwill of the Xerox mark and name" (Complaint at page 8,, paragraph 39). The Complainant alleges the following bad faith acts on the part of the Respondent:

- The Respondent has used the Domain Name intentionally to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainantís "XEROX" mark as to the source of the services offered at the site, thereby violating Paragraph 4(b)(iv) of the Policy.

- The Respondentís responses to the Complainantís Xeroxís approaches indicate that it registered the Domain Name primarily to sell, rent or otherwise transfer it for valuable consideration in excess of its out-of-pocket costs, thereby violating Paragraph 4(b)(i) of the Policy.

- The Respondentís actions in attracting Internet users away from Xeroxís website and toward its own website indicates that it registered the Domain Name primarily for the purpose of disrupting the business of a competitor, thereby violating Paragraph 4(b)(iii) of the Policy.

- The Respondentís attempt to become an Authorized Dealer indicates that it registered the Domain Name to obtain leverage over the Xerox Corporation for the purpose of encouraging a prospective business arrangement, thereby demonstrating bad faith in violation of Paragraph 4(b) of the Policy.

The Complainant asks that the Domain Name be transferred to it.

B. Respondent

The Respondent has not submitted a formal Response to the Complainantís contentions. Nevertheless, on March 13, 2001 the Respondentís Bryan Brown did send one e-mail to the Center in response to the Notification of the Complaint. This e-mail reads as follows:

hi I have not intention to give up or close this site. For your information I sell Xerox equipment through the agent program as well I am a Xerox reseller. Imaging solution has never listed itself on the site as a dealer. Also the site was changed some weeks ago you might want to take a look. So far as my offer to sell that is not accurate I simply want my time and money reimbursed. Also why donít you go after the other people ie. .

xeroxagents.com,

xeroxdealer.com,

getxerox.com,

just to name a few, I bought this name because I have been selling xerox equipment for 7 years, I simply am providing control for the local dealer and buyer without Xerox intervention.

have a nice dayÖ

P.S. Imaging Solution will not give up the name without a fight. So see you in the hearing I guess.

thanks, bryan brown.

No further communication has been received from the Respondent.

 

6. Discussion and Findings

A preliminary issue arises as to the admissibility of the "Supplement" filed by the Complainant on April 4, 2001 and the documentary evidence appended thereto. The filing of statements by a complainant other than the Complaint is not authorized by the ICANN Rules, except upon the request of the Panel (see Paragraph 12 of the ICANN Rules). However, in view of the fact that the "Supplement" appears to have been properly served on the Respondent in accordance with Paragraph 2(f)(ii) of the ICANN Rules, and that it was submitted prior to the constitution of the Panel, the Panel determines that the submission is admissible in these proceedings. The Panel notes, however, that it views the arguments and evidence therein as cumulative, in the sense that the same result would have been reached even without considering the contents of the "Supplement" submission.

Paragraph 4(a) of the ICANN Policy requires the Complainant to prove each of the following elements in order to obtain relief:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) The respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Notwithstanding the Respondentís default, the Complainant retains the burden of proving each of these elements. They will be examined in turn below.

a. Identical or confusingly similar

The Domain Name at issue wholly incorporates the Complainantís central trademark ("Xerox"). This is sufficient to justify the finding that the name is "confusingly similar" to the Complainantís registered trademarks, listed in Section 4 above, notwithstanding the addition of the word "dealers" after the trademark "Xerox" in the Domain Name. In this regard, see, e.g., Yahoo! Inc. v. David Ashby, Case No. D2000-0241 (WIPO June 14, 2000); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., Case No. D2000-1525 (WIPO January 29, 2001); Chanel, Inc. v. Estco Technology Group, Case No. D2000-0413 (WIPO September 18, 2000); and Nikon, Inc. and Nikon Corporation v. Technilab, Inc., Case No. D2000-1774 (February 26, 2001) [hereinafter the "Nikon Decision"].

b. Rights or legitimate interests of the Respondent

The Panel finds that the Respondent does not have rights or any legitimate interests in the Domain Name within the meaning of Paragraph 4(a)(ii) of the Policy. In this connection, the Panel notes that the Respondent has no right to use or be associated with the "XeroxEROX" trademark, is not itself a Xerox Authorized Dealer, and has no other legitimate structural relationship with the Xerox Corporation that would legitimize its use of a Domain Name confusingly similar to a world-renowned trade name. Although the Respondent claimed in one of its letters to the Complainant (Complainantís Exhibit 9) to be a "reseller of Xerox", there is no evidence that this is the case, nor would such status, even if true, suffice to establish a right on the Respondentís part to use the Domain Name in the circumstances of this case. In sum, the Panel is satisfied that the Respondentís use of the Domain Name does not constitute a legitimate use of the Complainantís trademark and associated logos. In this regard, compare the Nikon Decision (at Section 6B) and the cases cited as the "majority view" therein.

Accordingly, pursuant to Paragraph 4(a)(ii) of the Policy, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name at issue.

c. Bad faith

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name 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; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent 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 the complainantís mark as to the source, sponsorship, affiliation, or endorsement of the respondentís website or location, or of a product or service on the website or location.

In this regard, the Panel finds that the Complainant has convincingly shown that the Domain Name is intended to refer to the Complainant and its business. This is indicated by the Respondentís use on its website of the trademark "XeroxEROX", as well as related marks and/or logos belonging to or associated with the Complainant. This is further illustrated by the Respondentís letter of early 2000 to third-party "Xerox Dealers", which states that by using the Respondentís website, "[t]he public will be able to go online, in all search engines, and ask for Xerox, then xeroxdealers" (Complainantís Exhibit 6, page 1). Furthermore, it is clear from the evidence that the Respondent had a commercial purpose in registering and using the Domain Name. The Complainant has also shown that, as of April 2001, the Respondentís website contained a link directing Internet users to a website of a Xerox competitor. (sSee Complainantís Exhibits 13, 14 and 15.).

In the view of the Panel, these usages had the intent and effect of attracting users to the Respondentís website by creating a likelihood of confusion with the Complainantís trademark. The effect of this was not lessened by the Respondentís disclaimer in small print on its website that "Xeroxdealers.com is not affiliated with Xerox Corporation," when contrasted with the confusing similarity of the Domain Name and the presence of Xerox trade names and logos on the site. From these facts, the Panel infers that the Respondent used the Domain Name with the intention of diverting business from the Complainant to itself, which improper use constitutes a violation of Paragraph 4(b)(iv) of the Policy. See, e.g., the Nikon Decision.

The Panel further notes that in itsthe correspondence of February 4, 2000 (Complainantís Exhibit 7), February 18, 2000 (Complainantís Exhibit 9) and August 17, 2000 (Complainantís Exhibit 10), the Respondent from Bryan Brown to Xerox put forward various conditions for the sale of the Domain Name to the Xerox Corporation. Such conditions included (i) monetary compensation beyond the out-of-pocket costs directly related to the Domain Name and (ii) a request for the establishment of a new business arrangement with the Complainant. With respect to the latter point, the Respondentís letter to the Xerox Corporation of August 17, 2000 stated the following:

Originally this situation came up when I ask to become a Xerox Dealer I still wish to become a dealer. I have a similar infringement issue with NASCAR Corporation. . . .

I request that Imaging Solution be granted Xerox Dealership without the initial Machine order, I secondly would like a Tektronix 750 demo printer. (Complainantís Exhibit 10).

The Panel finds, based upon this letter and the other correspondence noted above, that the Respondent registered the Domain Name in the hope and expectation of being able to sell it to the Complainant for a sum of money in excess of its out-of-pocket expenses and/or in the hope of forcing the establishment of a business arrangement beneficial to the Respondent. Either circumstance amounts to bad faith in violation of Paragraph 4(b) of the Policy. See Kinkoís, Inc. v. eToll, Inc., Case No. FA 94447 (NAF May 27, 2000); Nikon Decision.

 

7. Decision

In conclusion, the Panel finds that the Domain Name is confusingly similar to trademarks in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name; and that the Domain Name has been registered in bad faith and is being used in bad faith.

Accordingly, the Complaint succeeds and the Panel directs that the Domain Name "<xeroxdealers.com" > be transferred to the Complainant.

 


 

D. Brian King
Sole Panelist

Dated: April 25, 2001