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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

OfficeMax, Inc. and OMX, Inc. v. Yong Li

Case No. D2003-0060

 

1. The Parties

The Complainants are OfficeMax, Inc., Shaker Heights, Ohio, U.S.A. and OMX, Inc., Las Vegas, Nevada, U.S.A., represented by Timothy A. Lemper, Baker & Hostetler, L.L.P. of Cleveland, Ohio, U.S.A.

The Respondent is Yong Li, Beijing, Republic of China.

 

2. The Domain Name and Registrar

The disputed domain name <ifficemax.com> is registered with iHoldings.com, Inc., doing business as DotRegistrar.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2003, by e-mail and on February 3, 2003, in hard copy. On January 29, 2003, the Center transmitted a request for registrar verification in connection with the domain name at issue to DotRegistrar.com. On the same date, DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the relevant contact details. 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 February 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for a Response was February 24, 2003. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent of his default on February 27, 2003.

The Center appointed Angelica Lodigiani as the sole panelist in this matter on March 5, 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

According to the Complaint, OfficeMax was founded in Cleveland, Ohio, U.S.A., in April 1988 and opened its first superstore in Cleveland in July 1988. OfficeMax has since become the largest operator of high-volume, deep-discount office products superstores in the United States and is one of the largest in the world, operating approximately 1,000 superstores, 19 delivery centers, and two national catalog call centers within the United States and elsewhere as of the date of the Complaint. OfficeMax now employs more than 40,000 associates in its corporate headquarters, divisional offices, call centers and superstores.

Complainants own 286 OFFICEMAX per se, and OFFICEMAX formative trademark applications and registrations in over 60 countries, including the Republic of China (Annex 10). Furthermore, Complainants own 13 gTLDs and 17 ccTLDs incorporating the OFFICEMAX mark (Annex 12). Many of these domain names are common mispellings of the OFFICEMAX mark acquired from typosquatters (See OfficeMax, Inc. v. Mark Braska, WIPO Case No. D2002-0431 (June 27, 2002); OfficeMax, Inc. v. John Zuccarini, WIPO Case No. D2002-0354 (July 18, 2002).

According to the Complaint, OfficeMax has operated on the Internet at "www.officemax.com" under the mark OFFICEMAX ONLINE since 1995. OfficeMax’s website permits interactive shopping and is accessible from anywhere in the world. The OfficeMax’s website is accessed by over 3 million users per month. In this manner, the mark OFFICEMAX, as well as OfficeMax’s other marks, have become known to consumers throughout the world.

Industry sources have recognized <officemax.com> as the leader in e-commerce space. In a March 2001 CNET News.com article, OfficeMax shared top billing in an online survey by Consumer Reports in the category of E-tailers specializing in office supplies for small business owners. In 1999, OfficeMax’s website was recognized as a 1999 CIO Web Business 50/50 winner for its online business excellence. Media Mextrix, Inc., the worldwide leader in Internet and digital mediameasurement, ranked <OfficeMax.com> No. 1 in measurements such as total unique visitors, unique office visitors, total customer reach, and office reach. OfficeMax was one of only five public companies to receive this designation. In 1997, OfficeMax’s website was named one of PC Magazine’s "30 Best Internet Sites." OfficeMax was also honored with the Retail Network Innovation Award for Excellence in electronic commerce.

On December 30, 2002, the Complainants discovered that the Respondent was using the disputed domain name to redirect consumers to the website of Office Depot, one of the Complainants’ largest competitors. The domain name <ifficemax.com> reverted to "http://www.gotoo.com/treasure/OfficeDepot.htm" and displayed a pop-up advertisement for a gambling website (Annex 5). The consumer’s only means of exiting the screen was to click on the pop-up advertisement. Upon clicking on it, consumers were redirected to Office Depot’s website, located at "http://www.officedepot.com". At the same time, a second window opened, which displayed the gambling website, located at "http://www.super-casino.coim/BestCasino.htm" (Annex 6). Upon exiting the Office Depot’s website, a third window opened, which displayed a portal website located at "http://www.digforgold.com/index.htm". The portal website listed 10 "Top Clicks", which included a link to Office Depot’s website (Annex 7).

On December 31, 2002, the Complainants sent a cease and desist letter to the Respondent, by registered mail and e-mail. While the registered mail was returned as undeliverable, the e-mail was not. The Respondent did not reply to the cease and desist letter and the Complainants sent a second letter by e-mail and registered mail. The e-mail was not returned as undeliverable, and the registered mail did not return as undeliverable, at least until the time of the Complainants’ filing of their Complaint (Annex 2).

The Respondent did not reply to the Complainants’ e-mails and letters. However, shortly after they were sent, the Respondent changed his website. On January 24, 2003, the Respondent stopped using the domain name to redirect consumers to Office Depot’s website, and began using it to redirect consumers to a portal website located at "http://www.ownbox.com/treasure/search.html". This website bears the word "Sale!" in the browser header located in the upper left-hand corner of the screen (Annex 9). Apart from that change, according to the Complainants <ifficemax.com> continues to operate in the same manner, resolving to the same pop-up advertisement and launching the same pop-up windows for the gambling and portal websites.

On January 27, 2003, the Complainants attempted unsuccessfully to contact the Respondent by telephone using the number provided in the relevant Whois contact details. The operator informed the Complainants that the telephone number was invalid.

All the aforementioned statements are uncontested and some of them are supported by the evidence. Therefore, the Panel takes the view that the Complainants’ statements are a fair representation of the Complainants’ activity and intellectual property rights, as well as of the factual background of the case at issue.

 

5. Parties’ Contentions

A. Complainants

According to the Complaint, the disputed domain name is confusingly similar to Complainants’ trademarks. <ifficemax.com> is a slight typographical misspelling of the Complainants’ OFFICEMAX marks. Between IFFICEMAX and OFFICEMAX there is only a one-letter difference. While it is common for Internet users to accidentally miss-hit a key or misspell a word when typing a domain name, confusion is particularly likely because the "O" and "I" keys are located next to each other on the standard QWERTY computer keyboard used in countries with Latin-based alphabets. The Respondent’s conduct suggests that the misspelling was chosen precisely because of its confusing similarity to the Complainants’ mark. "Typosquatting" 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.

The Complainants cite a number of decisions holding that a domain name resulting from the misspelling or typographical variation of a well-known mark is confusingly similar to the Complainant’s mark (see WIPO Case No. D2000-0848, AltaVista Co. v. Grandtotal Finances Ltd. et al., of October 17, 2000; Case No. 95251 AltaVista Co. v. Astavista.com, NAF of August 17, 2000; WIPO Case No. D2000-0441 Reuters Ltd. v. Global Net 2000, Inc., of July 13, 2000; WIPO Case No. D2000-0330 Encyclopaedia Britannica, Inc. v. John Zuccarini et al. of June 7, 2000).

Furthermore, the Complainants believe that the Respondent has no rights or legitimate interests in the disputed domain name, for the following reasons:

- there is no evidence that the Respondent has ever been known by the name IFFICEMAX or any variation thereof;

- there is no evidence that the Respondent has ever used the domain name <ifficemax.com>, or made demonstrable preparations to use the domain name, as part of a bona fide offering of goods or services. Instead, the Respondent used the domain name solely to redirect consumers to the website for one of the Complainants’ largest competitors, and now uses the domain name to redirect consumers to unrelated websites with no apparent relation to the mark IFFICEMAX. The Respondent is not listed as the registrant for any of the domain names associated with these websites;

- numerous panels have held that use of a domain name to redirect consumers to the relevant Respondent’s website as a result of inadvertent or slight misspellings does not create rights or legitimate interests in the domain name (NetWizards, Inc. v. Spectrum Enters., WIPO Case No. D2000-1768 of April 4, 2001; Accord Hollywood Casino Corp. v. Go Call Inc., NAF Case No. FA 95741, of October 30, 2000; Marriott Int’l, Inc. v. Vladimir Kyznetsov, NAF Case No. FA 95648, of October 24, 2000; Bank of America Corp. v. Micah Abrams, NAF Case No. FA 95479, of October 11, 2000; and ESPN, Inc. v. Danny Ballerini, NAF Case No. FA 95410, of September 15, 2000);

- the disputed domain name has been used in bad faith. Bad faith use of a domain name is not a legitimate use, and cannot serve to create rights or legitimate interests in a domain name;

- it is inconceivable that the Respondent was unaware of the Complainants’ marks at the time he registered the domain name. The Complainants have more than 200 trademark registrations worldwide and 30 domain name registrations incorporating the OFFICEMAX mark. The Respondent’s choice of the disputed domain name is explicable only as a likely misspelling of the Complainants’ well-known OFFICEMAX mark. There is no other apparent logic behind the choice of the word IFFICEMAX in connection with Office Depot’s website, or—for that matter—with the gambling or portal websites. The Respondent registered and is using <ifficemax.com> to divert errant typists, poor spellers, and other unwary browsers from the OfficeMax website. Once diverted, consumers are confronted with a pop-up screen from which they can only escape by clicking on the Respondent’s ad. The Respondent generates revenue from advertisers for each click (See U.S. Federal Trade Commission, Cyberscam Targeted by FTC, of October 1, 2001). The Respondent thus knowingly and deliberately usurps the goodwill and strength of the Complainants' mark for commercial gain by exploiting common typographical errors. Numerous decisions have held that "typosquatting" is not a legitimate or bona fide use of a domain name (See, e.g., WIPO Case No. D2000-1495, America On-Line, Inc. v. Zuccarini, of January 22, 2001; NAF Case No. 0007000095233, Cabela's Inc. v. Zuccarini, of August 28, 2000; NAF Case No. 0007000095294, Gamesville.com, Inc. v. Zuccarini, of August 30, 2000).

According to the Complainants, the aforementioned facts and allegations are sufficient to shift the burden to the Respondent to demonstrate that he has rights and legitimate interests in the domain name <ifficemax.com> (WIPO Case No. D2000-1306, World Wrestling Federation Ent., Inc. v. Ringside Collectibles, of January 24, 2001: "The Policy [¶ 4(c)(i)] clearly provides that, to show a legitimate interest, a Respondent must come forward with evidence of ‘use, or demonstrable preparations to use, the domain name . . . in connection with a bona fide offering of goods or services. . . . Complainant’s prima facie showing that Respondent lacks a legitimate interest places upon the Respondent a burden of production on this factor.").

In the Complainants' view, the Respondent is using the domain name <ifficemax.com> in bad faith, for the following reasons:

- considering the high number of OFFICEMAX per se, and OFFICEMAX formative trademarks and domain names owned by the Complainants (including 13 trademark registrations only in China) , it is inconceivable that the Respondent was unaware of the Complainants’ marks at the time he registered the domain name. Even a cursory search of trademark records, domain name registrations, or Internet search engines yields evidence of the Complainants’ marks. Complainants have also made widespread and extensive use of their marks worldwide and on the Internet. In light of these facts, it is inconceivable that the Respondent registered IFFICEMAX as a domain name and used it to redirect browsers to Office Depot’s website without knowledge of the Complainants’ OFFICEMAX marks. Such knowing and deliberate exploitation of another’s mark is in bad faith, and violates the Respondent’s registration agreement, which requires registrants to certify that the domain name "does not interfere with or infringe upon the rights of any third party." (Annex 3, ¶ 5);

- the Complainants’ letters and e-mails gave the Respondent explicit written notice that (a) the Complainants have exclusive rights in the OFFICEMAX trademark and service mark; (b) the Respondent’s registration and use of the disputed domain name is likely to cause confusion as to source or sponsorship of the mark and to dilute the distinctiveness of such mark; and (c) the Respondent’s registration and use of the disputed domain name is in violation of United States federal law, which governs judicial disputes related to the domain name (Annex 2, Annex 3, ¶ 33);

- despite knowledge of the Complainants’ marks, and despite knowing that he lacks any legal right to use the domain name <ifficemax.com>, the Respondent has not responded to the Complainants’ letters and e-mails, and continues to use the disputed domain name to exploit the confusion he has deliberately caused with the Complainants’ marks. There is evidence that the Respondent received these e-mails. First, the e-mails were not returned as undeliverable. Second, shortly after the e-mails were sent, the Respondent's use of <ifficemax.com> was changed: from a redirection to the Complainants’ competitor Office Depot, to the redirection to a portal website. Under such circumstances, the Respondent’s failure to respond is evidence of bad faith registration and use (WIPO Case No. D2000-1395, Gruner + Jahr Printing & Publ’g Co. v. Global Media Consulting, of January 4, 2001: failure to respond to a cease and desist letter is evidence of bad faith because "a lack of response raises the possibility that the contact information is incorrect or that the registration was obtained for a bad faith purpose" and "one expects that a good faith registrant would provide some reply to reasonable inquiries"; WIPO Case No. D2000-0586, Mars, Inc. v. Vanilla, Ltd., of September 1, 2000);

- the Respondent’s postal address and telephone number are invalid. The provision of false or inaccurate contact information is evidence of bad faith (WIPO Case No. D2000-0376, Sud-Chemie AG v. tonsil.com, of July 3, 2000: bad faith registration and use where the Complainant "was unsuccessful in its attempts to contact Respondent by using the contact details in the Registrar’s registry"; WIPO Case No. D2000-0111, Home Director, Inc. v. HomeDirector, of April 11, 2000: bad faith registration and use where Respondent used "false and misleading information in connection with the registration of the Domain Name"). The Respondent’s failure to provide current, accurate contact information is also grounds for canceling or reassigning the disputed domain name under the registration agreement (Annex 3, ¶¶ 10, 12);

- the Respondent’s conduct is classic typosquatting. The Respondent has done nothing to develop the disputed domain name and neither uses nor has made demonstrable plans to use the domain name as part of a bona fide offering of goods or services. Instead, the Respondent deliberately registered and uses the domain name to generate advertising revenues by diverting consumers from OfficeMax’s website to unrelated websites and pop-up ads. The Respondent does this for commercial gain, with the intent to profit at the Complainants’ expense by creating a likelihood of confusion with a mark the Complainants’ have made famous by building a world-renowned reputation. The Respondent does this with full knowledge that his conduct breaches his registration agreement and infringes the Complainants’ trademark rights. In so doing, the Respondent harms the goodwill associated with the Complainants’ marks;

- numerous decisions have held that "typosquatting" constitutes both bad faith registration and use (WIPO Case No. D2001-0184, Time Warner Ent. Co., L.P. et al. v. Zuccarini, et al., of April 11, 2001: "Respondents are using the disputed domain names to show large volumes of advertising to the web traffic the disputed domain names attract. . . . [T]he disputed domain names attract traffic because they contain the good will of the Complainants' famous marks; as the Respondents intend, humans and search engines confuse the Respondents for the Complainants . This violates the Policy at 4b(iv) and leads the Panel to find the Respondents registered and were using the disputed domain names in bad faith."; WIPO Case No. D2001-0617, The Sportsman’s Guide, Inc. v. Zuccarini, of July 19, 2001:"Respondent's registration of a domain name consisting of a slight misspelling of Complainant’s mark in an effort to redirect traffic to other sites, for purposes of commercial gain, itself, constitutes evidence of ‘bad faith.’"); Abercrombie & Fitch Stores, Inc. v. Zuccarini, WIPO Case No. D2000-1004 (November 1, 2000) (misdirection of web traffic to other websites is evidence of bad faith"; WIPO Case No. D2000-0578, Dow Jones & Co. v. Zuccarini, of August 28, 2000: bad faith where Respondent "registered and has used the two domain names solely for the purpose of trading on [Complainant’s global reputation], taking advantage of the tendency of Internet users to misspell, and attracting such users to his own sites").

In addition, numerous decisions have held that registration and use of a domain name to redirect consumers to a competitor’s website constitutes bad faith registration and use (WIPO Case No. D2000-1768, NetWizards, Inc. v. Spectrum Enters., of April 4, 2001; AF-0585a-b, Cisco Systems, Inc. v. Haag, eResolution of December 29, 2000; WIPO Case No. D2000-0037, Zwack Unicum Rt. v. Duna, of March 10, 2000; NAF Case No. FA 95940, Oly Holigan, L.P. v. Private, of December 4, 2000; NAF Case No. FA 95741, Hollywood Casino Corp. v. Go Call Inc., of October 30, 2000; NAF Case No. FA 95648, Marriott Int’l Inc. v. Kyznetsov, of October 24, 2000; NAF Case No. FA 95479, Bank of America Corp. v. Abrams, of October 11, 2000; NAF Case No. FA 95410, ESPN, Inc. v. Ballerini, of September 15, 2000; Case No. AF-00109 Anne of Green Gables Lic. Auth., Inc. v. Internetworks, eResolution of June 12, 2000);

- The Respondent’s subsequent change in the use of the domain name <ifficemax.com> is evidence of bad faith. Shortly after the Complainants sent their letters and e-mails, the Respondent began using the domain name to resolve to a placeholder website bearing the title "Sale!" in the browser header in the upper left-hand corner of the screen (Annex 9). The use of the word "Sale!" is evidence of a bad faith intent to sell the infringing domain name for profit (WIPO Case No. D2002-0285, Yьksel Inşaat A.Ş. v. Erdogan Koparal, of May 28, 2002: listing "for sale" on registrant information is evidence that domain names were registered in bad faith "primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant"; WIPO Case No. D2000-0010, Home Interior & Gifts, Inc. v. Home Interiors, of March 7, 2000:"[U]se of a counter at the website to which the domain name resolves without other content is tantamount to an offer to sell the domain name."; NAF Case No. FA0011000096113, Los Angeles Cty Bar Ass’n v J.D. Barnett Law Offices, of January 2, 2001: language soliciting joint ventures to develop domain names is "tantamount to offering the names for sale").

In support of their belief, the Complainants cite a case that presents numerous analogies with the case at issue, namely WIPO Case No. D2001-0959, Charles Schwab & Co, Inc. v Polanski, of September 21, 2001. Also, like this case, the Respondent in Schwab provided "inaccurate or incomplete" contact information on his domain name registration. As in this case, the Respondent adopted a misspelling of a well-known trademark and used it to redirect browsers to the same pop-up ad for the same gambling website at issue in this case. The domain name in Schwab was redirected to the same website (http://www.gotoo.com/treasure/france.html) as <ifficemax.com> (http://www.gotoo.com/treasure/OfficeDepot.html) before the Respondent changed it. Similarly, the respondent in Schwab used the domain name merely to redirect browsers to unrelated websites with no apparent connection to the disputed domain name. Finally, (after the Complainants’ e-mails), the Respondent in Schwab redirected consumers to a placeholder website whose minimal content consisted largely of advertising banners and links to other commercial websites. Based on these facts, the panel in Schwab held that the respondent’s typosquatting precluded him from acquiring rights or legitimate interests in the domain name, and established registration and use of the domain name in bad faith.

According to the Complainants, the facts of the present case warrant the same conclusion as that reached by the panel in Schwab.

The Complainants' conclusion is that the Respondent has no rights or legitimate interests in the domain name <ifficemax.com>, yet knowingly and deliberately registered and continues to use the domain name in bad faith, primarily for the purpose of benefiting from the recognition and goodwill associated with the Complainants’ OFFICEMAX marks.

B. Respondent

The Respondent did not reply to the Complainants’ contentions. The Panel, in compliance with Paragraph 14 of the Rules, shall therefore proceed to a decision on the Complaint and shall draw such inferences therefrom as it considers appropriate.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in an administrative proceeding, the Complainant must prove that each of following three elements are present: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (2) the Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain name is <ifficemax.com>. The Complaint encloses several documents attesting that the Complainants are the owners of OFFICEMAX per se and OFFICEMAX formative trademarks. The disputed domain name only differs from the Complainants OFFICEMAX trademarks by the first letter. In the Panel’s view, this is a minor difference, not sufficient to avoid confusing similarity.

The disputed domain name is to be considered as an intentional misspelling of the Complainants’ trademark. Indeed, as it will be further discussed below, the Respondent appears to have registered the disputed domain name to mislead and divert Internet users attempting to reach the Complainants’ website. Considering that the "O" and the "I" keys are located next to each other on the standard QWERTY computer keyboard used in countries with Latin-based alphabet, the typing error, which would divert the users to the Respondent’s website, is likely to occur frequently. As a result, the Internet users seeking the Complainants’ website would reach the Respondent’s website (or at least the website accessible through the disputed domain name), without initially realizing how. Therefore, the domain name <ifficemax.com> is confusingly similar with the Complainants' trademark since it is likely to create confusion among Internet users with their OFFICEMAX trademark.

In light of the foregoing, the Panel is satisfied that the first condition is met.

B. Rights or Legitimate Interests

According to Paragraph 4 (a) of the Policy, the Complainant must prove that the Respondent lacks rights or legitimate interests in the disputed domain name. Since proving a negative circumstance is always difficult and burdensome, and often almost impossible, previous Panel's decisions have established that prima facie evidence of the lack of rights or legitimate interests is sufficient to shift the onus of proof from the Complainant to the Respondent.

Under Paragraph 4 (c) of the Policy, the Respondent may demonstrate that he has rights to and legitimate interests in the domain name by proving that:

(i) before any notice of the dispute to the Respondent, the Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark.

The Respondent failed to prove any of the above-mentioned circumstances as it did not reply to the Complaint.

The Complainant stated that the Respondent lacks rights or legitimate interests in the domain name <ifficemax.com> because: (i) there is no evidence that the Respondent has ever been known by the name IFFICEMAX or any variation thereof; and (ii) there is no evidence that the Respondent has ever used the domain name, or made demonstrable preparations to use the domain name, as part of a bona fide offering of goods or services. To the contrary, the Respondent used the domain name solely to redirect consumers to the website of one of the Complainants' largest competitors, and at the time of the filing of the Complaint, used the domain name to redirect consumers to unrelated websites with no apparent relation to the mark IFFICEMAX. The Respondent does this for commercial gain and with the full knowledge that his conduct infringes the Complainants' trademark rights. The Respondent harms the goodwill associated with the Complainants marks; and (iii) the Respondent uses the domain name in bad faith. Bad-faith use of a domain name is not a legitimate use and cannot serve to create legitimate rights or legitimate interests in a domain name; and (iv) The Respondent's conduct is classic typosquatting. It is inconceivable that the Respondent was unaware of Complainants' marks at the time he registered the domain name. The Respondent registered and is using the domain name to divert errant typists, poor spellers, and other unwary browsers from the OfficeMax website.

In the Panel's view, all the aforementioned circumstances provide prima facie evidence of the Registrant's lack of rights or legitimate interests in the domain name.

First, the Respondent does not appear to have been commonly known by the domain name <ifficemax.com>, by the name IFFICEMAX or by any variation thereof.

Second, the use of the disputed domain name as described in the Complaint and relevant enclosures, does not appear to be in connection with a bona fide offering of goods and services, nor a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant's trademark.

Given the renown of the OFFICEMAX trademark, considering that the Complainants appear to own 13 Chinese OFFICEMAX trademark registrations, the older of which dates back to 1996, as well as more than 200 worldwide registrations for OFFICEMAX per se, and OFFICEMAX formative trademarks plus 13 top-level and 17 country-level domain names incorporating the OFFICEMAX trademark, in the absence of any contrary statement by the Respondent, the Panel believes that it is likely that the Respondent was well aware of the existence of the OFFICEMAX trademarks when, on November 20, 2002, it registered the domain name <ifficemax.com>.

Accordingly, the Respondent appears to have purposefully misspelled the Complainants' OFFICEMAX trademarks, at first, to divert the Internet users to the website of a Complainants' competitor (OfficeDepot), and subsequently, to a portal website bearing the title Sale! in the browser located in the upper left-hand corner of the screen. Also, the Panel shares the Complainants' view that the Respondent generates revenues from the pop-up advertisements for gambling websites appearing on the websites to which the user is automatically directed once he has typed the address "http://www.ifficemax.com".

In the Panel's view and in line with other prior decisions (WIPO Case No. D2000-1495, American On-Line, Inc. v. Zuccarini; WIPO Case No. D2000-1768, NetWizards, Inc. v. Spectrum Enters), the deliberate use of a confusingly similar domain name to redirect Internet users to a competitor's website, and to unrelated sites displaying pop-up advertisements from which the Respondent most likely generates revenues, cannot grant Respondent's legitimate rights or interests in the disputed domain name.

In the absence of any reply from the Respondent, the Panel considers that all the circumstances described above are sufficient to establish prima facie evidence of the Respondent's lack of rights and interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under Paragraph 4 a. (iii) of the Policy, the Complainant must prove two additional requirements, (i) that the disputed domain name was registered in bad faith; and (ii) that said domain name is used in bad faith.

The Panel finds from both the Complainant's statements and the evidence provided in support of these statements that the disputed domain name was registered and is used in bad faith.

As already examined above, it may be inferred that the Respondent was very well aware of the Complainants' earlier intellectual property rights when he registered the domain name <ifficemax.com>. Nevertheless, the Respondent registered the domain name at stake in order to divert the Internet user from the "official" website. The Panel believes, in line with the Complainants' arguments, that the sole possible purpose for which the Respondent has registered the domain name <ifficemax.com> is to derive commercial gain from the diversion of Internet users from the Complainants' website.

Indeed, the Respondent generates profit if not directly from the redirection of the domain name, at least from the pop-up advertisements, which automatically appear when the user types the address "http://www.ifficemax.com". Furthermore, when the domain name leads consumers to a portal website located at "http://www.ownbox.com/treasure/search.html", the website bears the title "Sale!" in the borwser header located in the upper left-hand corner of the screen. By doing so, the Respondent harms the goodwill associated with the Complainants' rights.

In the absence of any contrary statement by the Respondent, it is the Panel's belief that the use of the domain name <ifficemax.com>, which is a misspelling of the Complainants' well-known OFFICEMAX mark, as described by the Complainants and supported by the evidence, indicates that the Respondent harms the goodwill associated with the Complainants' marks by intentionally registering a confusingly similar domain name to divert, for commercial gain, Internet users from the Complainants' website. Furthermore, the offer for sale of a domain name which is confusingly similar to the Complainants' well-known OFFICEMAX trademark after receiving the Complainants' cease and desist letter is also evidence of use of the disputed domain name in bad faith.

In light of the foregoing, the Panel has found sufficient elements to conclude that the domain name <ifficemax.com> was registered and is being used in bad faith. Therefore, the Panel does not believe it necessary to examine whether the Respondent provided false contact details and whether this should be considered evidence of bad faith registration.

 

7. Decision

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 <ifficemax.com> be transferred to the Complainant.

 

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Angelica Lodigiani
Sole Panelist

Date: March 19, 2003