WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Staples, Inc., Staples Contract & Commercial, Inc. v. Ryan Conrad
Case No. D2003-0713
1. The Parties
The Complainant is Staples, Inc. and Staples Contract & Commercial, Inc., both of Framingham, Massachusetts, United States of America, represented by Wolf, Greenfield & Sacks, P.C., United States of America.
The Respondent is Ryan Conrad, Pine Grove, Pennsylvania, of United States of America.
2. The Domain Name and Registrar
The disputed domain name <staplesrebate.com> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 10, 2003. On September 10, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 10, 2003, Go Daddy Software 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 September 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 6, 2003.
The Center appointed M. Scott Donahey as the sole panelist in this matter on October 15, 2003. The Panel finds that it was properly constituted. 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.
4. Factual Background
Complainant is a retailer of office supplies and business furniture in North American and Europe. Complainant has used the mark STAPLES in commerce continuously since 1986. Complainant owns registrations of the mark STAPLES issued by the United States Patent and Trademark Office ("USPTO") issued as early as April 28, 1987, and of the mark STAPLES.COM issued by the USPTO on October 24, 2000. Complaint, Annex E.
Complainant has invested millions of dollars in the promotion of its marks and has sales in the billions of dollars annually.
On February 11, 2000, Complainant caused to be registered on its behalf the domain name <staplesrebates.com>. Complaint, Annexes G and H. The domain name was used to resolve to a Rebate Center operated by Complainant.
On September 11, 2001, Respondent registered the domain name at issue. Respondent has yet to use the domain name at issue to resolve to a web site. Rather the domain name resolves to a "Coming soon" place holder web site. Complaint, Annex I.
5. Partiesí Contentions
Complainant contends that the domain name at issue is confusingly similar to Complainantís marks, that Respondent has no rights or legitimate interests in respect of the domain name, and that Respondent has registered and is using the domain name in bad faith.
The Respondent did not reply to the Complainantís contentions. An e-mail from the Respondent was received on October 11, after the Notification of Response Default. This email stated that the Respondent had no objections to the Complainant owning the domain name.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and
3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Respondentís domain name includes in its entirety Complainantís registered marks. As such, Respondentís domain name is confusingly similar to Complainantís marks. Wal-Mart Stores v. Richard MacLeod, d/b/a For Sale, WIPO Case No. D2000-0662.
B. Rights or Legitimate Interests
Complainant has in a credible way alleged that Respondent has no rights or legitimate interests in respect of the domain name at issue. Respondent has failed to show that Respondent has any rights or legitimate interests in respect of the domain name at issue. This entitles the Panel to infer that Respondent has no rights or legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011.
C. Registered and Used in Bad Faith
Respondent has made no affirmative use of the domain name at issue. However, even where such use is affirmative absent, it may still be that the Complainant can establish bad faith registration and use.
It is true that Respondent's conduct cannot be said to come squarely within any of the examples of bad faith registration and use set out in paragraph 4(b) of the Policy. However, the examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
In Telstra it was established that "inaction" can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by many subsequent Panels. See, e.g., Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Association of British Travel Agents Ltd. v. Sterling Hotel Group Ltd., WIPO Case No. D2000-0086; Sanrio Co. Ltd. and Sanrio, Inc. v. Neric Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Tenenbaum Ofer, WIPO Case No. D2000-0075.
Telstra established that whether "inaction" could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
In this case, the Panel finds that where (1) the mark is one that is widely known in the United States, where Respondent purportedly resides, and was widely known at the time Respondent registered the domain names at issue; (2) Respondent failed to file a formal response to complainant's allegations, despite having acknowledged receiving such allegations; (3) Respondent registered a domain name that differed from a domain name previously registered by the Complainant nineteen months earlier only by the omission of the plural -s; and (4) Respondent has made no use of the domain name at issue in the more than two years since Respondent registered the domain name, Respondent's inaction constitutes bad faith registration and use of the domain names at issue.
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 <staplesrebate.com> be transferred to the Complainant.
M. Scott Donahey
Dated: October 27, 2003