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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Xerox Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / ZULHAM ST / Brave Chaiden, Domain Data Guard / Reza Fahlevi, UNIX

Case No. D2019-1278

1. The Parties

The Complainant is Xerox Corporation, United States of America, represented by Steven M. Levy Esq., United States of America.

The Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / ZULHAM ST, Indonesia / Brave Chaiden, Domain Data Guard, Indonesia / Reza Fahlevi, UNIX, Indonesia.

2. The Domain Names and Registrar

The disputed domain name <driverfujixerox.net> is registered with CV. Rumahweb Indonesia; the disputed domain names <xerox-printerdriver.com> and <xerox-printerdrivers.com> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2019. On June 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 5 and 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 25, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on June 27, 2019.

On June 25, 2019, the Center transmitted an email in English and Indonesian to the Parties regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on June 27, 2019. The Respondent did not comment on the language of the proceeding.

The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent in English and Indonesian of the Complaint, and the proceedings commenced on July 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2019.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on August 19, 2019. 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

The Complainant offers a wide array of products including copiers, printers, fax machines, scanners, desktop software, digital printing and publishing systems, and related supplies. The Complainant has used the XEROX trademark in commerce since 1948 and FUJI XEROX since 1962. It was among the world’s first commercial producers of photocopiers. The Complainant’s stock is publicly traded on the New York Stock Exchange and the company was ranked at number 152 on the 2016 Fortune 500 list of companies. The Complainant promotes its XEROX Marks through print, radio, television and Internet advertising as well as sponsorship of sporting and music events.

The Complainant owns the XEROX and FUJI XEROX trademarks and makes use of them throughout the world, for instance at websites as “www.xerox.com” and “www.fujixerox.com”.

The Complainant owns trademark registrations such as United States of America trademark XEROX registration No. 0525717, registered May 30, 1950 and European Union registration No. 000207035, registered November 23, 2000.

According to the Registrar, the Domain Names <xerox-printerdriver.com> and <xerox-printerdrivers.com> were registered in December 2017, and the Domain Name <driverfujixerox.net> was registered on March 26, 2018. At the time of filing the Complaint, the Domain Names redirected to websites that give the false impression that they are affiliated to and authorized by the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant requests that the language of the proceedings be English as the websites that resolve from the Domain Names are in the English language. The words “printer” and “driver” are words in the English language. The Complainant operates in English and should not be put to the added expense of translating where the Respondent has failed to respond.

Consolidation is allowed where it promotes the shared interests of the parties in avoiding unnecessary duplication of time, effort and expense, reduces the potential for conflicting or inconsistent results arising from multiple proceedings, and generally furthers the fundamental objectives of the Policy. In the present case the Domain Names resolve to websites that appear very similar in format. The websites mention the Complainant’s products and display monetized links to third-party advertisements. Some advertisements compete with the Complainant. The Domain Names use a similar naming convention, and they were registered closely in time to each other. The Domain Names are all listed with an address in Indonesia. The Complainant argues it is most likely the same person using different registrars and aliases to deflect attention from its pattern of conduct.

The Complainant’s trademark is widely recognized by consumers around the world. The Domain Names are confusingly similar to the Complainant’s trademarks. In particular, since the word XEROX is an arbitrary, coined term and has no generic meaning in any language. The Respondent has merely added the descriptive terms “driver”, “drivers”, and/or “printer” as well as a hyphen. It only enhances the consumer confusion.

The Respondent’s actions are not bona fide offering of goods or services under Policy. The Respondent is not affiliated with, or authorized by the Complainant to use its trademarks. Even if the pages were to offer legitimate drivers for XEROX or FUJI XEROX branded products, they do not meet the bona fide use standards set out in the seminal case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

The Respondent intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. The Respondent must have known of the Complainant’s trademark rights. Moreover, the Respondent’s webpages feature the XEROX trademarks, copyrighted images of its products, as well as the Complainant’s logo in certain cases. The Respondent receives compensation each time a user clicks on one of these advertisements or purchases the third-party products or services. The Respondent has not replied to the Complainant’s cease and desist letters. Finally, in registering the three Domain Names, the Respondent has engaged in a pattern of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of proceedings

Pursuant to paragraph 11 of the Rules, “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”.

Noting the aim of conducting the proceedings with due expedition, paragraph 10 of the UDRP Rules vests a panel with authority to conduct the proceedings in a manner it considers appropriate while also ensuring both that the parties are treated with equality, and that each party is given a fair opportunity to present its case.

The Registrar of the third Domain Name has informed that it uses Bahasa, the official language of Indonesia. The Complainant filed the Complaint in English and requested that English be the language of the proceeding, as the Domain Names includes English words as “printer” and “driver”, and the Domain Names resolve to websites in the English language. Furthermore, the Complainant operates in English and translating the Complaint and all supporting documents would cause an unnecessary burden to the Complainant and unnecessarily delay the proceeding.

The Center has sent “dual language” case-related communications to the Parties. The Respondent has not responded. The Respondent has not requested a translation of the Complaint.

Taking into account the above, in particular that the Respondent has not, despite receiving case-related communication in both languages, objected to English as the language of the proceeding, the Panel proceeds in English.

B. Consolidation against multiple respondents

The Complainant argues that the Domain Names resolve to websites that appear very similar in format and content mentioning the Complainant’s products and displaying monetized links to third-party advertisements. The Domain Names use a similar naming convention, were registered closely in time to each other and are all owned by registrants in Indonesia. The Complainant argues that it is most likely the same person using different registrars and aliases to deflect attention from its pattern of conduct.

Paragraph 10(e) of the Rules grants the Panel authority to “decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Similarly, paragraph 3(c) of the Rules provides that a complaint “may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”. Prior UDRP panels have treated multiple registrants controlled by a single person as one single respondent for the purposes of the Policy. See, e.g., Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; Archipelago Holdings LLC. v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales, WIPO Case No. D2001-0729.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2 states:

“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.

Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”

The Panel finds it more likely than not that the same person controls the three Domain Names. The Domain Names resolve to websites that are very similar in format and content. The Domain Names use a similar naming convention. The Domain Names were registered close in time to each and provide an address for the registrant in Indonesia. Finally, the Respondent has not replied to the Complainant’s contentions, or the Center’s “dual language” case-related communications.

C. Identical or Confusingly Similar

The Complainant has established trademark rights. The test for confusing similarity involves the comparison between the trademark and the Domain Names. In this case, the Domain Names incorporate the Complainant’s trademark in its entirety with the addition of descriptive terms “driver”, “drivers”, and/or “printer”, with a hyphen. The addition does not prevent a finding of confusing similarity. For the purpose of assessing confusing similarity, it is permissible for the Panel to ignore the generic Top-Level Domains (“gTLD”) “.com” and “.net”, see WIPO Overview 3.0, section 1.11.

The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

D. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register a domain name containing the Complainant’s trademark or otherwise make use of the trademark. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired unregistered rights. The way the Respondent has used the Domain Names is not bona fide. The Panel agrees with the Complainant, the Respondent gives a false impression of a commercial relationship between the websites and the Complainant. It is not clear if the Respondent actually offers the goods of the Complainant, or if the Respondent only sell the trademarked goods of the Complainant. The websites do not accurately disclose the relationship with the Complainant.

The Panel finds the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.

E. Registered and Used in Bad Faith

Taking into account the Respondent’s use of the Domain Names, the Panel concludes that the Respondent knew of the Complainant and its business when the Respondent registered the Domain Names.

The Respondent has attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. By reproducing the Complainant’s trademark in the Domain Names and on the webpages, together with using the Complainant’s product images, the Respondent’s websites suggested that the source was the Complainant. The use of a privacy protection service and the fact that the Respondent has not replied to the Complainant’s contentions, further point to bad faith.

The Panel concludes that the Domain Names were registered and is being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <driverfujixerox.net>, <xerox-printerdriver.com> and <xerox‑printerdrivers.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: August 27, 2019

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