WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Viking Office Products Inc. v. Darren Jacob
Case No. D2008-0998
1. The Parties
Complainant is Viking Office Products Inc, Torrance, California, United States of America, represented by Howrey LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Darren Jacob, Lichfield, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name is registered with Advantage Interactive Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2008. On July 3, 2008, the Center transmitted by email to Advantage Interactive Ltd. a request for registrar verification in connection with the domain name at issue. On July 16, 2008, Advantage Interactive Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on July 17, 2008. The Center verified that the amended 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 July 25, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 14, 2008. Respondent did not submit any Response. Accordingly, the Center notified Respondent's default on August 15, 2008.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on August 20, 2008. 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
The disputed domain name was registered on January 21, 2008 and subsequently transferred to Respondent. Complainant produces substantial evidence by way of telephone directory entries, email addresses and Company House records showing a close connection between the January 21, 2008 registrant and Respondent.
Complainant is the owner of several United Kingdom and foreign trademark registrations consisting of or including VIKING, registered in respect of a range of goods and services including, office furniture.
Complainant is a Californian corporation and is a subsidiary of Office Depot Inc. It trades under the name Viking in many countries throughout the world including the United Kingdom. In March 1990, Complainant established a United Kingdom subsidiary under the name Viking Direct Limited. That company changed its name to Office Depot International (UK) Limited in May of 2000 but continues to trade under the name Viking Direct. Complainant claims to be the largest mail order supplier of office supplies in the United Kingdom, employing over 1,300 people. Complainant's total turnover for the years 1996 to 2006 amounted to approximately £4 billion, the vast majority of which, it claims, was in respect of goods and services provided under the VIKING mark.
On information provided by Complainant, it appears that Respondent operates or controls an on-line business in office furniture and supplies. The disputed domain name resolves to a website with a banner headline displaying the words “Viking Office Furniture” in prominent type, and offering for sale a range of office supplies including office furniture. The website carries the slogan “There is only one Viking Office Furniture”.
Complainant exhibits to the Complaint a page from the “Office Products International” publication for May 2008 in which Respondent is quoted as saying: “I knew that [Complainant] was thinking of discontinuing its Viking brand” and purchased the domain name when he saw it was available. Respondent is also quoted as saying: “We are experiencing a steep growth curve” and “having the Viking name is doing no harm at all”. Complainant denies that it is discontinuing the Viking brand, (Annex 10).
Complainant also produces evidence to show that Respondent has registered other domain names in both the “.com” domain and “.uk” domains including the words “office” and “depot”, as well as domain names incorporating the name of another well-known retailer of office products in the United Kingdom, Staples Inc.
5. Parties' Contentions
A. Complainant
Complainant contends that it has clearly established trademark rights in the VIKING mark both by registration and at common law by an extensive reputation developed in the United Kingdom and elsewhere through extensive sales and marketing.
Complainant asserts that Respondent is not its licensee, and Complainant has not consented to the use of the VIKING trademark by Respondent. Complainant further asserts that Respondent does not have any legitimate interest in the domain name and did not have any such interest at the time the domain name was registered or when it was transferred to Respondent on June 6, 2008.
Complainant asserts that as Respondent trades in office furniture and as at the date of registration of the domain name, Complainant had been trading on a significant scale in the United Kingdom under the VIKING trademark, Respondent must have known of Complainant and its trademark rights. Complainant further refers to the purported statements by Respondent in the May edition of “Office Products International” and asserts that Respondent deliberately adopted the domain name for the purpose of “cashing in” on Complainant's reputation and, for commercial gain, using the domain name to divert customers to his website. Complainant also cites Respondent's other domain name registrations including the words “Office Depot” and “Staples Business Services” as evidence of a pattern of behavior by Respondent.
B. Respondent
Respondent did not file a response or otherwise reply to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant's proved trademark registrations consisting of or including the VIKING mark clearly establish that Complainant has rights in the VIKING trademark. Such rights are reinforced by the very substantial volume of sales made under the mark and the reputation and common law rights thereby generated. The domain name comprises the VIKING trademark joined to the (in this context) descriptive words “office furniture”, the commodity in which both Complainant and Respondent trade. The descriptive words do not serve to distinguish the domain name from the VIKING trademark.
The Panel therefore finds that the domain name is confusingly similar to a trademark in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant asserts that it has not licensed or authorized Respondent to use its trademark in the domain name and the use which Respondent makes of the domain name on its website appears clearly to be in breach of Complainant's trademark rights. Such use cannot therefore be a bona fide use of the domain name in relation to the goods or services offered. The use is plainly not a noncommercial or fair use and there is no evidence that Respondent has ever been known by the domain name. Respondent had an opportunity to file a response in this respect and failed to do so.
The Panel therefore finds that Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Complainant's evidence establishes a high probability of a close connection between Respondent and the registrant of the domain name, (of January 21, 2008). Moreover, the transfer to Respondent is treated as a new registration for purposes of the Policy e.g. WIPO Overview Panel Views on Selected UDRP Questions, Section 3.7. In either event, Complainant's trademark rights predate the registration by over 10 years.
Complainant is one of the largest suppliers of office furniture and equipment in the United Kingdom. Respondent trades in those goods and he must have known of Complainant and its reputation at the time of registering and subsequently using the domain name. This is established on the balance of probabilities from the facts and circumstances surrounding that registration and use. It is further reinforced by the statements attributed to Respondent in the May issue of “Office Products International”. The Panel notes these alleged statements but does not rely upon them, as hearsay, for the purpose of its decision. Respondent's website speaks for itself in its prominent use of the word “viking” in relation to the office furniture and products which it offers. It clearly demonstrates that the use of the domain name is intentionally for the purpose of relying upon Complainant's reputation in the VIKING trademark to attract users to its website for commercial gain.
The Panel therefore finds that Respondent has registered and is using the domain name 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 name be transferred to Complainant.
Desmond J. Ryan AM
Sole Panelist
Dated: September 3, 2008
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