The Complainant is Fellowes, Inc. of Itasca, Illinois, United States of America, represented by Melbourne IT Digital Brand Services, United States of America.
The Respondent is fellowesservices of Anaheim, California, United States of America, represented by Syed Hussain, United States of America.
The disputed Domain Name <fellowesservices.com> is registered with Name.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2010. On February 25, 2010, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed Domain Name. On March 5, 2010, Name.com LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 March 23, 2010. The proceedings were suspended on April 9, 2010 at the request of the Complainant to accommodate settlement discussions but recommenced on April 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 21, 2010. The Response was filed with the Center on April 21, 2010.
The Center appointed W. Scott, Blackmer as the sole panelist in this matter on April 28, 2010. 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.
The Complainant is a privately held, family-owned company based in Illinois, with manufacturing plants in Anaheim, California as well as in Illinois. The company was established in 1917 as the Bankers Box Company but changed to the Fellowes name in 1983. It has become a global leader in manufacturing and selling office products, prominently records storage boxes, paper shredders, binding machines, digital media labeling products, mousepads and other desk accessories, and mobile telephone cases. The Complaint reports that the company has some 2,700 employees in 15 countries and that its products (several of which have won industry awards) are sold by office supply retail chains such as Staples and Office Depot in at least 49 countries. The Complainant operates a website at “www.fellowes.com”.
The Complainant holds several registered FELLOWES trademarks, including United States Trademark Registration No. 1711418 (registered September 1, 1992) for FELLOWES as a standard-character mark.
The Respondent “fellowesservices” does not appear to be a legal entity but rather an alias for the individual Syed Hussain of Anaheim, California, who is the registered contact for the Domain Name. Mr. Hussain submitted a brief Response in the form of an email to the Center. The Response states that Mr. Hussain repairs computer parts and peripherals and does not compete with the Complainant.
The Domain Name resolves to what appears to be a parking website with pay-per-click advertising in several categories, the first of which is currently the Complainant's name “Fellowes.” Selecting that category produces a page with links to several online sources for the Complainant's products.
The Complainant's representative emailed a cease-and-desist letter to the Respondent on November 2, 2009, asserting the Complainant's trademark rights and demanding transfer of the Domain Name. The Complaint states that Mr. Hussain responded by telephone that he did not intend to transfer the Domain Name. This proceeding followed.
The Complainant asserts that the Domain Name is confusingly similar to its well-known FELLOWES mark, in which the Respondent has no rights or legitimate interests. The Complainant infers that the Domain Name was registered and used for a pay-per-click advertising website in order to mislead Internet users for commercial gain.
The Respondent disputes that the Domain Name is identical or similar to the Complainant's mark. He states that his business does not compete with the Complainant's and that he did not intend to sell or rent the Domain Name, disrupt the Complainant's business, or profit from creating confusion with the Complainant's mark.
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
It is undisputed that the Complainant holds the registered FELLOWES mark, which the Domain Name incorporates in its entirety. That distinctive spelling does not seem to form a dictionary word.
Adding the generic word “services” to the Domain Name does not reduce the likelihood of confusion with the mark, since the manufacturer might be expected to offer, for example, repair and warranty services in connection with its sales of office machines and supplies. See, e.g., Microsoft Corporation v. Wayne Lybrand, WIPO Case No. D2005-0020 (finding the domain name <microsoftcustomerservice.com> confusingly similar to the MICROSOFT mark).
Accordingly, the Panel finds the Domain Name confusingly similar to the Complainant's FELLOWES mark for purposes of the first element of the Policy.
The Complainant asserts, without contradiction, that the Complainant has not authorized the Respondent's use of the Complainant's FELLOWES mark.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could nevertheless demonstrate rights or legitimate interests in the domain name, including the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not furnish any reason, in the Response, for selecting the Domain Name. There is no evidence that the Respondent uses this name in his computer repair business or is known by this name. The website associated with the Domain Name is commercial, but it does not advertise the Respondent's purported services. The distinctive portion of the Domain Name is not based on a dictionary word or generic phrase, and it is not a bona fide commercial use to mimic as here a trademark held by another party.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing (as it has in this case). See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Respondent has not done so in this proceeding, and the Panel therefore concludes that the Complainant has established the second element of the Policy.
The Policy, paragraph 4(b), sets out a non-exhaustive list of circumstances evidencing bad faith in the registration and use of a domain name, including the following:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Respondent does not explain why he chose a Domain Name incorporating the well-established and distinctive FELLOWES trademark, and there is no evidence in the record that he uses a similar name for his computer-repair business. He does not deny familiarity with the Complainant's mark. Indeed, in addition to the mark's presence in popular retail office supply stores such as Staples and Office Depot, the Panel notes that the Complainant operates a major manufacturing facility in the Respondent's city of Anaheim, California.
The Complainant's and competing products, sold through various online sources, are prominently featured on the pay-per-click advertising website associated with the Domain Name. Thus, despite the Respondent's denial of such an intent, it appears more likely than not that the Domain Name was registered and used precisely to take advantage of the Complainant's mark by misleading Internet users as to source or affiliation and then deriving revenue from advertising relating to the Complainant's (as well as others') products. This might, in the case of links to the Complainant's products, result in some increased sales of the Complainant's products. But it cannot under the circumstances here be considered a good-faith use of the Domain Name to misappropriate the Complainant's mark without authorization for the Respondent's commercial gain, especially where the Respondent also provides links to competing products.
Hence, the Panel finds that the third element of the Policy has been established.
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, <fellowesservices.com>, be transferred to the Complainant.
W. Scott Blackmer
Dated: May 12, 2010