WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OCE-Technologies B.V., OCE North America, Inc. v. Computoners/Uscher Katz
Case No. D2007-0792
1. The Parties
Complainants are OCE-Technologies B.V., Venlo, the Netherlands, and OCE North America, Inc, Chicago, Illinois, United States of America (collectively “Complainant”).
Respondent is Computoners/Uscher Katz, Brooklyn, New York, United States of America.
2. The Domain Names and Registrar
The disputed domain names and are registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 30, 2007. On June 1, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On June 1, 2007, eNom transmitted by email to the Center its verification response. On June 6, 2007, the Center issued a Notification of Complaint Deficiency, and Complainant filed an Amended Complaint on June 8, 2007. The Center verified that the Complaint, together with the Amendment to 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 Respondent of the Complaint, and the proceedings commenced on June 13, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2007. On July 3, 2007, Respondent sent an email to the Center containing brief unsupported contentions. The Center responded by providing an email link to filing guidelines and a model Response. Respondent did not file a formal response and, on July 4, 2007, the Center issued a notification of Respondent’s default. Respondent subsequently responded by email on July 11, 2007, with substantially the same text as provided in Respondent’s email to the Center of July 3, 2007. On July 11, 2007, the Center acknowledged receipt of the Respondent’s communication, pointing out that it was received after the deadline for filing the Response and that it would be at the discretion of the panel to consider it, in accordance with paragraph 10(d) of the Rules.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on July 20, 2007. 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
Complainant is in the business of providing copying, scanning, and printing apparatuses, toner and associated supplies. Complainant owns and operates the website , which redirects users to the website “2www.oce-usa.com2”.
In the 1970’s, Complainant introduced its first paper copier, the OCE 1700, and in 1978, introduced its first laser printer in the United States of America. Complainant’s OCE mark is protected worldwide with trademark registrations covering, among other things, toner products and copying apparatus and supplies. Complainant’s OCE mark has been previously held to be ”a well-known mark with a world-wide recognition in a large and vital market sector of products and services.” Oce-Technologies B.V. v. , WIPO Case No. D2002-0047 (transferring the domain name to Complainant).
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name is confusingly similar to Complainant’s OCE trademark, that Respondent lacks any right or legitimate interest in the domain name, and that Respondent has registered and used the domain name in bad faith.
B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. Instead, Respondent submitted two emails to the Center on July 3, 2007 and on July 11, 2007, in which he stated “I did not register these domain names for bad faith. I registered it for the future as I desire to open a website that sales [sic] wide format Oce toners and supplies… I absolutely had no intentions of misleading anyone in believing that our company is OCE…I am only adverstising myself as a reseller of OCE supplies and OCE toners. . . . I think we should have the right to keep these domain names as they were only for good faith.” In accordance with paragraphs 10(b) and 10(d) of the Rules, the Panel decides to take Respondent’s above communications into consideration.
6. Discussion and Findings
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Policy have been satisfied:
(i) the domain names in dispute are identical or confusingly similar to a trademark or service mark in which t Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the domain names; and
(iii) the domain names have been registered and are being used in bad faith.
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”.
A. Identical or Confusingly Similar
The disputed domain names and incorporate Complainant’s registered OCE trademark in its entirety. The domain names add only the generic, non-distinctive terms “toner” and “supplies”. The most dominant feature of the domain names is Complainant’s registered OCE mark. The addition of a non-distinctive, descriptive or generic term does not change the overall impression of the mark.
Accordingly, the Panel finds that the domain names are identical or confusingly similar to Complainant’s trademark.
B. Rights or Legitimate Interests
Respondent is not affiliated or related to Complainant in any way, nor is Respondent licensed by Complainant or otherwise authorized to use the OCE mark.
Respondent is not generally known by the domain names and has not acquired any trademark or service mark rights in that name or mark. Respondent uses the domain names in connection with a website which advertises products, some of which compete with Complainant’s products.
Respondent admits that he is not a current reseller of Complainant’s products, but registered the domain names “for the future.”
Respondent’s current use of the domain names to divert visitors seeking Complainant’s products is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain names. Respondent has not put forward any evidence that would rebut Complainant’s case or support a finding that it has rights or legitimate interests in the domain names.
In light of the foregoing, the Panel finds that Respondent has no rights or legitimate interests with regard to the domain names at issue.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain names in bad faith:
(i) circumstances indicating that Respondent has registered or acquired the domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain names; or
(ii) Respondent has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location of a product or service on Respondent’s website or location.
It should be noted that the circumstances of bad faith are not limited to the above.
Respondent admits its awareness of the OCE mark. Here, it is apparent to the Panel that Respondent’s domain names are being used for commercial gain to attract Internet users to Respondent’s website based on a likelihood of confusion with Complainant’s OCE mark.
Respondent profits from use of the domain names by receiving referral fees for redirecting Internet users from its site to other websites. Because Internet users will mistakenly go to Respondent’s site at the domain names when seeking Complainant’s site or goods and services sold under Complainant’s OCE mark, and because Respondent will then profit from the referrals of these users, Respondent’s use of the domain name is in bad faith.
Respondent acquired and began unauthorized use of the domain names long after Complainant’s adoption, use and registration of its OCE mark. In addition, at the time the domain names were registered, Complainant had made widespread substantial use of its OCE mark and domain name for many years. The widespread fame of the OCE mark in the copier apparatus and supply industry and Complainant’s prior domain name registrations and trademark registrations lead to the necessary conclusion that Respondent registered and used the domain names with actual knowledge of Complainant’s trademark rights. Indeed, Respondent admits as much.
Accordingly, the Panel finds the disputed domain names to be registered and used in bad faith.
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 names and be transferred to the Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: August 6, 2007
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