In the recent domain name dispute decision of The Office Club, Inc. and Office Depot, Inc. v. Name Holding Company c/o Name Holding FA1287148 (Nat. Arb. Forum, November 16, 2009), a single member Panel was faced with a dispute over the domain www.officedpot.com. Complainant, Office Depot is the well known office products retailer and has used the OFFICE DEPOT mark since 1986. Office Depot maintains a website at www.officedepot.com. Respondent registered the disputed domain in May 2000 and failed to respond to this dispute.
Paragraph 4(a) of the ICANN UDRP 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.
In addressing the first element, the Panel noted that Complainant established rights in the OFFICE DEPOT mark. The Panel explained that the disputed domain differed from the mark only in that there was no space and the domain had removed the second letter “e” from the word. The Panel found this to be too close and thus confusingly similar to the OFFICE DEPOT mark.
Moving to the second element, the Panel noted that Office Depot presented a prima facie case, b ut still reviewed the record in consideration of the elements. The Panel found that Respondent was not commonly known by the disputed domain. Additionally, the disputed domain resolved to a web site where links to competitors were presented. This was considered to not be a bona fide offering of services. As a result, the Panel found Office Depot satisfied the second element.
The Panel analyzed the last element, bad faith, the Panel found that Respondent’s web site was disrupting Office Depot’s business by its competitive activity. Additionally, since Respondent was presumably commercially benefitting from the competing products and services, this was an intentional creation of likelihood of confusion.
Ultimately, the Panel found that Office Depot proved all three elements and ordered the domain be TRANSFERRED.
