Officemaxsolution.com

The timeline behind officemaxsolution.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION OMX, Inc. c/o OfficeMax Incorporated v Domain Administration Limited c/o David Halstead Claim Number: FA0605000720880 PARTIES Complainant is OMX, Inc. c/o OfficeMax Incorporated (“Complainant”), represented by Kevin M. Hayes, of Klarquist Sparkman, LLP, One World Trade Center, Suite 1600, 121 SW Salmon Street, Portland, OR 97204. Respondent is Domain Administration Limited c/o David Halstead (“Respondent”), PO Box 37410, Auckland, NZ 1033. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <officemaxsolution.com>, registered with Fabulous.com Pty Ltd. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Tyrus R. Atkinson, Jr., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 2, 2006. On June 1, 2006, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <officemaxsolution.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On June 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 28, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@officemaxsolution.com by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On July 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <officemaxsolution.com> domain name is confusingly similar to Complainant’s OFFICEMAX mark. 2. Respondent does not have any rights or legitimate interests in the <officemaxsolution.com> domain name. 3. Respondent registered and used the <officemaxsolution.com> domain name in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, OMX, Inc., is a wholly owned subsidiary of OfficeMax North America, a wholly owned subsidiary of OfficeMax Incorporated. The Panel hereinafter will refer to OfficeMax Incorporated, OfficeMax North America and OMX, Inc. collectively as “Complainant.” Complainant is one of the largest office supply retailers in the world. Through brick-and-mortar stores and a website at the <officemax.com> domain name, Complainant offers consumers a wide variety of office products and business services. Complainant operates 935 stores around the world. Complainant is the owner of numerous trademark registrations for the OFFICEMAX mark around the world, including several trademark registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,511,330 issued November 1, 1988; Reg. No. 1,715,669 issued September 15, 1992; Reg. No. 1,948,932 issued January 16, 1996; Reg. No. 2,240,842 issued April 20, 1999; Reg. No. 2,114,795 issued November 18, 1997) and the Intellectual Property Office of New Zealand (“IPONZ”) (Reg. No. 713,158 issued May 31, 2004). Respondent registered the <officemaxsolution.com> domain name on January 14, 2005. Respondent’s domain name resolves to a webpage that features links to Complainant’s competitors in the office computer industry, including Dell. When Complainant attempted to contact Respondent via telephone, Complainant reached a woman in Auckland, New Zealand. The woman confirmed that the address and phone number listed in the WHOIS record was hers, but that she had never heard of Respondent or the disputed domain name and had not registered the <officemaxsolution.com> domain name herself. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "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." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. Identical and/or Confusingly Similar Complainant has established rights in the OFFICEMAX mark through registration of the mark with the USPTO and the IPONZ. See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see Miller Brewing Co. v. The Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Respondent’s <officemaxsolution.com> domain name is confusingly similar to Complainant’s OFFICEMAX mark because the domain name wholly incorporates Complainant’s OFFICEMAX mark and Respondent has merely added the term “solution.” In Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002), the panel found that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark. Consequently, Respondent’s mere addition of a common term to Complainant’s OFFICEMAX mark in the <officemaxsolution.com> domain name renders the disputed domain name confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Disney v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). The Panel concludes that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant contends that Respondent lacks rights and legitimate interests in the <officemaxsolution.com> domain name. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <officemaxsolution.com> domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c). In addition, the WHOIS information lists the registrant of the <officemaxsolution.com> domain name as “Domain Administration Limited,” and there is no other evidence in the record to indicate that Respondent is commonly known by the disputed domain name. Hence, Respondent does not have rights or legitimate interests in the <officemaxsolution.com> domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). The Panel also finds that Respondent is not using the <officemaxsolution.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), because Respondent is using the disputed domain name to redirect Internet users to a commercial webpage where there are links to Complainant’s competitors in the office computer industry and to content unrelated to Complainant. Because Respondent likely receives click-through fees for diverting consumers to third-party websites via these links, Respondent is using the disputed domain name for its own commercial gain and thus has no rights or legitimate interests in the <officemaxsolution.com> domain name pursuant to Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) The Panel concludes that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith By using the <officemaxsolution.com> domain name to redirect Internet users to a website with links to Complainant’s direct competitors in the office computer industry, potentially disrupting Complainant’s business, Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business). Respondent is using the <officemaxsolution.com> domain name to divert Internet users to a website with links to Complainant’s competitors and to unrelated content. The Panel infers that Respondent receives click-through fees for each consumer it diverts to third-party websites. In Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005), the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website displaying links to competing computer products and services. The panel found that the respondent’s use constituted bad faith registration and use under Policy ¶ 4(b)(iv). Id. In this case, Respondent is also diverting Internet users seeking Complainant’s computer products to the websites of Complainant’s competitors. Therefore, Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s OFFICEMAX mark in order to profit from the goodwill associated with the mark, which constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent). The Panel concludes that Policy ¶ 4(a)(iii) has been satisfied. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <officemaxsolution.com> domain name be TRANSFERRED from Respondent to Complainant. Tyrus R. Atkinson, Jr., Panelist Dated: July 17, 2006 Click Here to return to the main Domain Decisions Page. 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Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.