WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mid-Continent Office Distributors, LP, d.b.a. Office Source v. Office Source, Incorporated
Case No. D2002-0152
1. The Parties
The complainant in this proceeding is Mid-Continent Office Distributors, LP, d.b.a. Office Source ("Complainant"), a Missouri corporation having a principal place of business at 1340 Burlington, North Kansas City, Missouri 64116, USA.
The respondent is Office Source, Incorporated, the registrant of the domain name in issue ("Respondent"), with a listed mailing address of 7500 Lindbergh Drive, Gaithersburg, Maryland 20879, USA.
2. The Domain Name and Registrar
The domain name in issue is .
The registrar of the domain name in issue is Network Solutions, Inc. ("Registrar") with a corporate address of Verisign Worldwide Headquarters, 487 E. Middlefield Road, Mountain View, California 94043, USA.
3. Procedural History
On February 14, 2002, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain name in issue and paid the required filing fee for appointing a single member Panel.
On March 4, 2002, the Center found the Complaint to be in compliance with the formal requirements of ICANN�s Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANN�s Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPO�s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules") and sent a "Notification of Complaint and Commencement of Administrative Proceeding" ("Notification") and the Complaint to the Respondent at the postal address, e-mail addresses and facsimile number listed in the domain name registration. The Center received confirmation that the facsimile and postal transmission of these documents were received by the Respondent. With respect to the e-mail transmission of these documents, the Center received an error message that two of the five e-mail addresses used to send these documents to the Respondent were not recognizable.
On March 25, 2002, after the twenty-day period had expired as required by paragraph 5(a) of the Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainant.
On April 2, 2002, the Center invited the undersigned Panelist to serve as a single member panel in this proceeding. The Panelist, as required, submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center and the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties on April 11, 2002.
Having reviewed the entire record submitted for this proceeding, the Panelist concurs with the Center�s finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the panel was properly constituted and appointed. The Panelist also finds that the Center has fully discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a response to the Complaint. The Panelist shall therefore draw inferences from the Respondent's default as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant bases the Complaint on U.S. Registration No. 1,357,317 for the mark OFFICE SOURCE and Design (first use and first use in commerce 1/05/84; issued 08/27/85) used in connection with retail office supply and furniture store services. The Complainant provided a copy of the registration information for the mark OFFICE SOURCE and Design ("Mark") as Annex B to the Complaint. The Complaint is also based on the Complainant's common law mark OFFICE SOURCE.
The domain name in issue was registered on June 10, 1998, to the Respondent and there is currently a Web page accessible at this domain name. A copy of the Whois information for the domain name as well as a printout of the corresponding Web page dated December 26, 2001, were attached as Annexes A and E, respectively, to the Complaint.
5. Parties� Contentions
Complainant
The Complainant asserts that it provides wholesale and retail sales of office supply products and furniture products and that its services include retail, catalog and on-line promotion and sale of various office supply products, furniture products and related services and products. The Complainant further asserts that its services and products are advertised extensively on the Internet through a web site accessible at the domain name that was registered on or about June 23, 1995.
The Complainant asserts that it has continuously used the Mark to advertise, promote and sell office supplies, furniture and related products and to provide related services to consumers and the trade since as early as January 5, 1984. In addition, the Complainant asserts that it is the owner of the Mark which is now incontestible and is the owner of extensive common law trademark rights in the mark OFFICE SOURCE based on extensive sales of office products, furniture products and related products and services throughout the United States.
The Complainant asserts that the Respondent registered the domain name in issue on or about June 10, 1998, and that the Respondent�s web site at the domain name uses the phrase "Office Source" in a prominently displayed banner appearing on the web site and in the site�s metatags.
The Complainant asserts that on or about August 3, 2000, a demand letter was sent to the Respondent to notify it that the registration and use of the domain name in issue violated the Complainant's rights. The Complainant asserts that on or about August 10, 2000, the Respondent�s attorney spoke with the Complainant�s attorney and stated that the Respondent would change its corporate name, would cease using "Office Source" in connection with the advertising and promotion of furniture and office related goods and services, and would cease using the domain name. The Complainant asserts that no such changes have been made.
The Complainant asserts that on August 24, 2001, the Complainant�s attorney sent another letter to the Respondent�s attorney reiterating the demands set forth in the August 3, 2000, letter and further demanding that the Respondent promptly assign all rights in the domain name to the Complainant. The Complainant further asserts that on November 18, 2001, the Complainant�s representative sent an e-mail to the Respondent�s Chief Executive Officer, Scott Lubore, inquiring when the Respondent intended to stop using "Office Source." The Complainant asserts that on November 19, 2001, Mr. Lubore replied stating that he did not know what was going to be done at that time with respect to the Web address and that he did not see the Respondent giving the Complainant that address in the near future. The Complainant further asserts that on December 26, 2001, Mr. Lubore sent the Complainant�s representative another e-mail stating that the Respondent has figured out the name change, that the Respondent was striving for a January change over and that the web site would point to that company name.
The Complainant continues by asserting that the domain name in issue is substantially identical and confusingly similar to the Complainant�s Mark and that the domain name in issue incorporates the Complainant�s Mark in its entirety.
The Complainant further asserts that the Respondent has no rights or legitimate interests in the domain name and that the Complainant has the exclusive right to use the Mark in connection with the products and services covered by its registration and by its extensive common law rights in the mark OFFICE SOURCE. The Complainant further asserts that the Respondent is not a licensee of the Complainant, is not authorized by the Complainant to use the Mark as a domain name or in any other manner and that the Complainant's rights to the Mark pre-date the Respondent�s domain name registration by many years. The Complainant also asserts that the Respondent is not making a legitimate, noncommercial or fair use of the phrase "Office Source" or of the domain name in issue and that the Respondent is improperly seeking to attract the Complainant�s customers to its site through the use of the Complainant�s Mark. The Complainant further alleges that the Respondent�s proposal to change its corporate or business name, while continuing to use the domain name in issue, does not comprise a legitimate or fair use of the domain name in issue.
The Complainant asserts that the Respondent has registered and is using the domain name in bad faith to intentionally attract for commercial gain Internet users to its site by creating a likelihood of confusion with the Complainant�s Mark as to the source, sponsorship, affiliation or endorsement of the Respondent�s site. The Complainant asserts that each party�s respective site offers under the identical second level domain identical products both by type and manufacturer. The Complainant asserts that the Respondent is trading on the Complainant�s goodwill in the Mark and is seeking to capitalize on consumer and/or trade demand for the Complainant�s services. The Complainant further asserts that the Respondent registered the domain name with actual or constructive notice of the Complainant�s rights in OFFICE SOURCE®. In addition, the Complainant asserts that the Respondent has registered and is using the domain name in bad faith for the purpose of disrupting the Complainant�s business.
Respondent
No response was received from the Respondent with respect to this proceeding.
6. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:
(i) the domain name holder�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
The Panelist can only rule in a complainant�s favor only after the complainant has proven that the above-listed elements are present.
Element (i) - Domain Name Identical or Confusingly Similar to the Mark
In the present proceeding, the Complainant provided sufficient documentation showing that it is the owner of a registered service mark that consists of the words "office source" and a design element. Since domain names are currently limited to text, the Panelist finds that the second-level domain "officesource" of the domain name in issue is confusingly similar if not virtually identical to the words "office source" constituting the textual element of the Mark. The design element of the Mark, while not reproducible in a domain name, is not considered a distinguishing feature in this case sufficient to avoid a finding that the domain name is identical or confusingly similar to the Mark. The Panelist accordingly finds that Element (i) has been satisfied.
Element (ii) - Rights or Legitimate Interests in the Domain Name
A review of the submitted evidence shows the listing of the registrant of the domain name in issue as "Office Source, Incorporated" with the domain name having been registered on June 10, 1998. A copy of the home page of the corresponding Web site dated December 26, 2001 exhibited a title of "OFFICE SOURCE The One Source For All Your Office Needs". The Panelist has also reviewed the site at the domain name in issue since the filing of the complaint and finds a posting now stating "Thank you for your interest in Opivotal Corporation! We have recently changed the name of our company to better reflect our business strategy. As a result, we no longer own the web address . To visit our site, please use our new address at ." Based upon the uncontested evidence submitted, the Panelist does not find such a listing or the prior web site at the domain name in issue sufficient to support a finding that the Respondent has been "commonly known by the domain name." Nor does the current posting, without evidence being submitted to show otherwise, change the Panelist's finding.
Furthermore, no evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the domain name in connection with any type of bona fide offering of goods or services. A review of the evidence submitted shows that the registration and use of the domain name in issue by the Respondent do not predate the Complainant's much earlier first use and first use in commerce of its Mark or the Complainant's registration of the domain name . In addition, no evidence has been presented that at any time has the Complainant ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Mark in any manner. Rather the Complainant has presented evidence showing that the Respondent has been operating a site and using the domain name in issue to target the same audience to which the Complainant's site is aimed so as to offer office supply and furniture-related products and services that are directly competitive with the products and services offered by the Complainant under its Mark and that are also directly competitive with the Complainant�s own site.
The Panelist therefore finds that the Respondent's offering of such services and products under a domain name that is confusingly similar to the Complainant's Mark, coupled with that domain name directing Internet users to a site that furthers confusion, suggests to those users that they are obtaining services and purchasing products from the Complainant. Viewing the evidence submitted and the findings in their entirety, the Panelist cannot conclude that such constitutes a bona fide offering of goods or services for sale by the Respondent. Nor does such support a finding of legitimate noncommercial or fair use of the domain name in issue. The Panelist therefore finds that Element (ii) has been satisfied based on the Respondent having failed to establish rights or legitimate interests in the domain name.
Element (iii) - Domain Name Registered and Used in Bad Faith
Based upon the uncontested evidence submitted by the Complainant, the Panelist finds that the Respondent had knowledge of the Complainant's Mark when registering the domain name in issue. This finding is supported by the evidence showing that the domain name in issue was registered well after the first use and the first use in commerce by the Complainant of its Mark and of its domain name . Coupled with the above findings that the domain name in issue is confusingly similar to the Complainant's Mark and that the Respondent has no rights or legitimate interests in the domain name, the Panelist finds that the Respondent registered the domain name in issue in bad faith.
The Complainant asserts that the Respondent by using the domain name in issue has intentionally attempted to attract, for commercial gain, Internet users to its Web site, by creating a likelihood of confusion with the Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent�s site or of a product or service offered on the Respondent�s site. Based upon the findings and evidence submitted, the Panelist concludes that the Respondent's registration and use of a domain name, confusingly similar to the Complainant's Mark along with a Web site accessible at this domain name that has promoted and offered the same or similar products and services and that are directed to the same audience to which the Complainant's site is directed, is an attempt by the Respondent to profit from the traffic generated by Internet users seeking the Complainant's site. In addition, the evidence submitted also supports the finding that the Respondent registered and has used the domain name in issue to create initial interest confusion among Internet users who visit the Respondent's site as to the source, sponsorship, affiliation or endorsement of the site and the products and services offered thereon for apparent commercial gain. Based upon the above, the Panelist accordingly finds that Element (iii) has been satisfied.
7. Decision
The Panelist concludes that: (i) the domain name is confusingly similar to the Complainant's Mark; (ii) the Respondent has no rights or legitimate interests in the domain name; and (iii) the Respondent has registered and is using the domain name in bad faith. The Panelist therefore requires that the registration of the domain name be transferred to the Complainant.
Marylee Jenkins
Sole Panelist
Dated: April 25, 2002
Full & Egal Universal Law Academy