WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OfficeMax, Inc. and OMX, Inc. v. Zuccarini
Case No. D2002-0354
1. The Parties
Complainants are OfficeMax, Inc., 3605 Warrensville Center Rd., Shaker Heights, Ohio 44122, and OMX, Inc., 300 S. Fourth St., Suite 1100, Las Vegas, Nevada 89101, United States of America (collectively, "OfficeMax").
Respondent is John Zuccarini ("Zuccarini"), 957 Bristol Pike, Suite D-6
Andalusia, Pennsylvania 19020, United States of America.
2. Domain Name and Registrar
The domain name at issue is: <officmax.com> (the "Domain Name").
The registrar is CSL GmbH d/b/a joker.com (the "Registrar"), Rathausufer 16, 40213 Duesseldorf, Germany.
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the Complaint by e-mail on April 15, 2002, and in hard copy on May 3, 2002. The Center verified that the Complaint satisfies the formal requirements of the ICANN 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"). Complainants made the required payment to the Center.
On April 18, 2002, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On April 22, 2002, the Registrar transmitted via e-mail to the Center its response, confirming that (1) a copy of the Complaint was sent to it by Complainants as required by Supplemental Rule 4(b); (2) the Domain Name was registered through it; (3) Respondent is the current registrant of the Domain Name; (4) the Administrative, Technical and Billing Contacts for the Domain Name are the Respondent; (5) the Policy applies to the Domain Name; and (6) the Domain Name is active.
On May 7, 2002, the Center transmitted the Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint, via e-mail with copy by courier (FedEx) to Respondent and to the Registrar. The Center advised that Respondentís Response was due by May 27, 2002, pointed out that the Response should be in accordance with the Rules and the Supplemental Rules, and described the consequences of a default if the Response was not sent by the due date. The Center also noted that Complainants had elected for a single panelist to decide this matter.
The requirements of Rule 2(a) having been satisfied, the formal date of the commencement of this administrative proceeding, pursuant to Rule 4(c), is May 7, 2002.
No Response was received from Respondent by the May 27, 2002, deadline. On May 29, 2002, the Center transmitted to Respondent, via e-mail, a Notification of Respondent Default. The Center advised Respondent that (a) Respondent had failed to comply with the deadline for submission of its Response and (b) the consequences of default, including (1) a single panelist would be appointed; (2) the Panel would be informed of Respondentís default and would decide, in its sole discretion, whether to consider a Response if submitted later; and (3) notwithstanding the default, the Center would continue to send all case-related materials to Respondent.
No Response conforming to the Rules was received from Respondent, either by the May 27, 2002, deadline or at any other time.
On July 4, 2002, the Center advised the parties, in accordance with Rule 6(f), of the appointment of Michael Albert, the undersigned, as the Panelist in this case. Pursuant to Rule 15(b), the Center further informed the parties that, absent exceptional circumstances, the Panel would forward a decision to the Center by July 18, 2002.
On July 4, 2002, the Center transmitted the case file by e-mail to the Panel.
4. Factual Background; Partiesí Contentions
a. The Trademark
The Complaint is based on Complainantsí alleged ownership of rights in marks either identical or confusingly similar to the Domain Name, including the mark OFFICEMAX, which Complainants claim to have used for office products (among other goods) since at least 1990.
Complainants own several United States federal registrations for the OFFICEMAX mark. Complainants provided the Panel with registration certificates for some of these marks, including U.S. Trademark Registration No. 1,715,669.
U.S. Reg. No. 1,715,669 is for the word mark OFFICEMAX in block letters. A block-letter registration is the broadest claim to a word mark, in that it is "not Ö restricted to any particular form or type." Exxon Corp. v. National Foodline Corp., 579 F.2d 1244, 1247 (C.C.P.A. 1978). This registration issued in 1992 for paper products and office requisites; namely, computer paper, facsimile machine paper, copy paper, envelopes, typing paper, memo pads and adhesive tape for stationery of household purposes, and claims a date of first use in 1990.
b. Jurisdictional Basis
The dispute is within the scope of the Policy, and the Panel has jurisdiction to decide the dispute. A copy of the Registrarís registration agreement, which incorporates the Policy by reference, is appended as Annex 5 to the Complaint.
In Paragraph 11 of its Complaint, Complainants aver that each of the three requirements of Paragraph 4(a) of the Policy have been satisfied.
c. The Complaint
Complainants assert as follows:
- That Complainants own the mark OFFICEMAX and related marks, including possessing numerous registrations in the United States and abroad.
- That Complainants own the registrations for numerous web sites incorporating the mark OFFICEMAX, including <officemax.com>.
- That Complainantsí web site at <officemax.com> attracts over 3 million users per month, and has been recognized as an excellent web site.
- That the Domain Name is confusingly similar to Complainantsí OFFICEMAX mark, and is likely to cause confusion among consumers.
- That Respondent has no legitimate interest in the Domain Name because (1) Respondent is not commonly known by the Domain Name; (2) Respondent has acquired no intellectual property rights in the Domain Name; (3) Respondentís use of the Domain Name is for commercial enterprises including "typosquatting" and "mousetrapping" that are not legitimate, bona fide or fair uses.
- That Respondent registered the Domain Name in bad faith, and that his registration of the Domain Name is part of a pattern of improper activity noted by numerous previous tribunals in published decisions.
- That Respondentís typosquatting and mousetrapping activities are an intentional effort to benefit from the goodwill associated with Complainantsí mark.
d. The Response
As noted above, the Respondent is in default pursuant to Rule 5(e), Rule 14 and Supplemental Rule 7(c) because no Response was received from Respondent by the May 27, 2002, deadline.
Unlike in a U.S. court proceeding, however, a default does not automatically result in a finding for the Complainant(s). Rather, under Paragraph 4(a) of the Policy, it remains the Complainantsí burden to establish that all three of the required criteria for a transfer of the Domain Name or other remedy have been met
Under Rule 5(e) and Rule 14(a), the effect of a default by the Respondent is that the Panel shall proceed to a decision on the Complaint. Under Rule 14(b), the Panel is empowered to draw such inferences from the default as it considers appropriate.
5. Discussion and Findings
a. Regulations Applicable to Consideration of the Merits
The Panel now proceeds to consider this matter on the merits in light of the Complaint, the Response (or lack thereof), the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Rule 15(a). In the Panelís view, given that both parties to this dispute appear to be based in the United States, applicable authority shall include relevant principles of United States trademark law.
Paragraph 4(a) of the Policy provides that Complainants must prove, with respect to the Domain Name, each of the following:
(i) The Domain Name is identical or confusingly similar to a trademark in which Complainant has rights; and
(ii) 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.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondentís rights or legitimate interests in the Domain Name for purposes of Paragraph 4(a)(ii).
b. Effect of the Default
In this case, the Panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by the Complainants. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented to by Complainants and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.
In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interest in the Domain Name, such as use or preparation to use the Domain Name prior to notice of the dispute, being commonly known by the Domain Name, or making legitimate noncommercial or fair use of the Domain Name.
c. Complainantsí Proof
(i) Domain Name Identical or Confusingly Similar to Trademark
Complainants have proven that they are the owners of trademark rights in the mark OFFICEMAX. Complainantsí registrations of their mark on the Principal Register of the USPTO establish a presumption of validity of the marks under United States law. See 15 U.S.C. ß 1057(b); Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999). Additionally, the registrations constitute constructive notice to all other parties of Complainantsí ownership of the marks. See 15 U.S.C. ß 1072.
In comparing Complainantsí mark to the Domain Name, it is well established that the generic top-level domain, in this case ".com," must be excluded from consideration as being a generic or functional component of the Domain Name. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498, (2d Cir. 2000).
The remaining terms, OFFICEMAX and OFFICMAX, are confusingly similar, and indeed nearly identical. This Panel finds that deletion of a single, silent, letter within the Domain Name (the "e" in OFFICEMAX) does not constitute a substantive change or obviate confusion. See Shields v. Zuccarini, 254 F.3d 476, 484 (3d Cir. 2001) ("[A] reasonable interpretation of conduct covered under the phrase Ďconfusingly similarí is the intentional registration of domain names that are misspellings of distinctive or famous names, causing an Internet user who makes a slight misspelling or typing error to reach an unintended site.").
Accordingly, the Panel finds that the Domain Name is virtually identical to Complainantsí mark, and that confusion (among other negative reactions) is likely to result when users attempt to access the Complainantsí web site but are re-directed instead, because of a typographical error, to the web sites to which Respondent directs them.
(ii) Whether Respondent Has Rights or Legitimate Interest in the Domain Name
There is no evidence in the record that Respondent has any legitimate interest in the Domain Name. Complainants stated in the Complaint that Respondent has no rights or legitimate interest in the Domain Name. The Panel finds this contention to be credible, particularly in view of the numerous published decisions setting forth in detail Respondentís pattern of conduct; and in any event the contention is unrebutted. The federal registration of Complainantsí mark, coupled with the Domain Nameís overwhelming similarity to Complainantsí mark and corporate name, and Respondentís failure to advance any of the defenses provided in Paragraph 4(c) of the Policy lead this Panel to conclude that Respondent has no rights or legitimate interest in the Domain Name.
(iii) Registration and Use in Bad Faith
Complainantsí third hurdle is to establish that Respondent has registered and used the Domain Name in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances of the registration and use of a domain name in bad faith. The first is acquisition or registration of 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 Ö or to a competitor of that complainant, for valuable consideration in excess of [registrantís] documented out-of-pocket costs directly related to the domain name."
In this case, the Panel finds no evidence of this type of bad faith. Complainants do not allege that Respondent offered to sell the Domain Name back to them or to another competitor. Indeed, it does not appear to be Respondentís strategy to make money off of selling his domain names to the owners of the trademarks to which they are confusingly similar. Rather, Respondent apparently profits from his endeavors by selling advertising space, and links to other web sites, on web sites established at the domain names he registers (see the fourth illustration of bad faith, discussed below).
The second illustration of bad faith in the Policy occurs when the registrant registers the domain name to prevent the trademark owner from reflecting the mark in a corresponding domain name, particularly when Respondent has engaged in a pattern of such conduct. Complainants do not allege that this was Respondentís intention in registering the Domain Name, and indeed Complainants have not been prevented from registering the correctly-spelled mark as a domain name. Accordingly, the Panel does not find this illustration applicable here.
The third illustration of bad faith is registration "primarily for the purpose of disrupting the business of a competitor." On the facts of this case, there is no evidence that Respondent is a competitor of Complainants. Accordingly, the Panel need not reach the question of whether Respondentís registration of the Domain Name has disrupted Complainantsí business. It may well have Ė the "mousetrapping" (see supra footnote 2) and the directing of Complainantsí actual or prospective customers who type the OFFICEMAX name wrong to pornographic web sites all point in the direction of possible disruption to Complainantsí business and goodwill Ė but since the threshold requirement of illustration three, namely competition between the parties, is absent, this illustration is inapplicable.
The fourth illustrative example of bad faith in the Policy is a respondentís use of the domain name in an effort to attract, for commercial gain, Internet users to the respondentís web site by creating a likelihood of confusion with the complainantís mark. This illustration is plainly applicable here, as explained in the numerous decisions cited in the Complaint involving similar conduct by this same Respondent. E.g., Dow Jones & Co. v. Zuccarini, WIPO Case No. D2000-0578 (August 28, 2000) (concluding that Zuccarini acted in bad faith based on a finding that he "registered and has used the two domain names [<wallstreetjounal.com> and <wallstreetjournel.com>] solely for the purpose of trading on the global reputation of THE WALL STREET JOURNAL, taking advantage of the tendency of Internet users to misspell, and attracting such users to his own sites, and thus to profit from his own sales of advertising and from links to other websites."). The Panel concludes that, because the Domain Name currently resolves to commercial web sites, and because Respondent places advertising on them designed to further generate revenue off of the Internet userís likely confusion and error, the fourth illustration of bad faith is unquestionably met. Indeed, although not a necessary finding for purposes of reaching this conclusion, it appears that Respondent has engaged in a pattern of similar activities.
In sum, the Panel concludes that Respondent has registered and used the Domain Name in bad faith, as exemplified by illustration (iv) in Paragraph 4(b) of the Policy.
In light of the findings and analysis by the Panel, the Panel decides that Complainants have met their burden of proving: (1) the Domain Name is confusingly similar to Complainantsí trademark(s) and/or service mark(s); (2) Respondent has no rights and no legitimate interest in respect of the Domain Name; and (3) the Domain Name has been registered and is being used by Respondent in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy and Rule 15, the Panel requires that the Domain Name be transferred to Complainants.
Michael A. Albert
Dated: July 18, 2002