WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
OfficeMax, Inc., OMX, Inc. v. Miguel A. Mayo
Case No. DCC2003-0001
1. The Parties
The Complainants are OfficeMax, Inc., OMX, Inc., of Shaker Heights, Ohio, United States of America; Las Vegas, Nevada, United States of America, represented by Baker & Hostetler, LLP of United States of America.
The Respondent is Miguel A. Mayo, Bubo Mayo Mayo, Hawthorne, CA, United States of America..
2. The Domain Name and Registrar
The disputed domain name is registered with .tv Corporation International.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 28, 2003. On March 4, 2003, the Center transmitted by e-mail to .tv Corporation International a request for registrar verification in connection with the domain name at issue. On March 17, 2003, .tv Corporation International transmitted by e-mail to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on March 20, 2003. 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 the Respondent of the Complaint, and the proceedings commenced on March 21, 2003. In accordance with the Rules, Paragraph 5(a), the due date for Response was April 10, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 17, 2003.
The Center appointed Bruce E. O'Connor as the sole Panelist in this matter on May 2, 2003. 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
Given the default of Respondent, the Panel is entitled to and does draw the inference from that default that all facts alleged in the Complaint are true. See Rule 14(b) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Policy").
Complainants own numerous U.S. and international trademark registrations and applications for the trademark OFFICEMAX, as well as numerous top-level and country-level domain names incorporating the trademark OFFICEMAX. These registrations and applications predate the registration by Respondent of the domain name in dispute on February 25, 2003. Complainants also operate numerous retail stores in the United States and elsewhere using the trademark OFFICEMAX, and operate an online store under the trademark OFFICEMAX ONLINE using one of its top-level domain names, including the trademark OFFICEMAX. All of these activities predate the registration by Respondent of the domain name in dispute.
On February 25, 2003, Respondent sent Complainants an unsolicited e-mail offering to sell the domain name in dispute to Complainants for an undisclosed price. This offer was sent on the same day that Respondent registered the domain name in dispute. In response to that offer, Complainants sent Respondent a letter on February 26, 2003, by both postal mail and e-mail, advising Respondent of its Complaint and demanding that Respondent immediately transfer the domain name in dispute to Complainants. On that date, Respondent replied by e-mail to Complainants and offered to sell the domain name in dispute to Complainants in exchange for the payment of Respondent's registration and transfer fees of One Hundred Fifty Dollars ($150).
On February 27, 2003, Complainants sent Respondent an e-mail reply accepting that offer, and requested that Respondent sign an attached Transfer Agreement.
On February 28, 2003, Respondent replied to that e-mail by another e-mail, responding that Respondent now had an offer for Ten Thousand Dollars ($10,000) to transfer the domain name to another country where Complainants did not have the name OFFICEMAX registered. In that e-mail reply, Respondent stated that Complainants would now have to match the offer of Ten Thousand Dollars ($10,000), including payment of an escrow fee of Two Hundred Fifteen Dollars ($215).
On February 28, 2003, the domain name in dispute resolved to a Web site supplied by A, described as a "domain name exchange." That Web site includes multiple references indicating that the domain name in dispute is for sale, and solicits bids for the domain name. That Web site also indicates closing bids of Three Hundred Fifty Dollars ($350) and Three Hundred Seventy Dollars ($370) for two other domain names, suggesting bid prices in excess of the registration and transfer fees requested by Respondent for transfer of the domain name in dispute.
On March 6, 2003, and after filing of the Complaint, Respondent sent an e-mail to the Center, indicating that he was not able to "cancel this domain" because "[T]his domain name is subject to a WIPO and is locked pursuant to eNIC's dispute policy."
5. Parties' Contentions
A. Complainants
Complainants contend that the domain name in dispute is identical to Complainants' trademark OFFICEMAX, to be distinguished only by the top-level domain suffix ".cc" which does not figure into the analysis of confusing similarity.
Complainants contend that Respondent has no rights or legitimate interest in the domain name in dispute. In this regard, Complainants point out that: there is no evidence that Respondent has ever been known by the name OFFICEMAX or any variation thereof; there is no evidence that Respondent has ever used the domain name in dispute, or made demonstrable preparations to use the domain name in dispute, as part of a bona fide offering of goods or services; that Respondent's only use of the domain name has been in conjunction with the operation of a Web site at which the domain name in dispute has been offered for sale; that Respondent's use of the domain name in dispute has been in bad faith, and that Respondent must have been aware of the trademark OFFICEMAX at the time he registered the domain name in dispute, and that Respondent knew of the trademark OFFICEMAX and sought to capitalize on the fame and goodwill of that trademark by ransoming the domain name in dispute containing that trademark back to the Complainants.
Complainants contend that Respondent registered and was using the domain name in dispute in bad faith. In support of this contention, the Complainants argue that Respondent registered the domain name "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 . . . for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name." In support for this argument, Complainants point out the second offer by Respondent to Complainants to transfer the domain name in dispute for the sum of Ten Thousand Dollars ($10,000) plus an escrow fee of Two Hundred Fifteen Dollars ($215), which was far in excess of the previously requested payment of One Hundred Fifty Dollars ($150) for the Respondent's registration and transfer expenses. In further support for this argument, Complainants point out the statements of Respondent at its Web site using the domain name in dispute, at which other domain names are listed with selling prices in excess of the amount initially demanded by Respondent for his registration and transfer cost.
B. Respondent
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") states that a domain name can be transferred where the Complainant has established the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interest in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainants have established their rights in the trademark OFFICEMAX.
The Panel also finds that the domain name in dispute is confusingly similar to the trademark OFFICEMAX. Because Web users must add a top-level domain to a trademark when attempting to locate the owner of that trademark on the Internet, the top-level domain is properly ignored when considering similarity. In addition to the case cited by Complainants, Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, WIPO Case No. D2000-1532 (January 25, 2001), also see Herbalife International, Inc. v. H, WIPO Case No. D2002-0234 (May 13, 2002).
The Panel finds that Complainants have met their burden of proof under Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of Paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent's use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent individual, business, or other organization has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of the circumstances in Paragraph 4(c) of the Policy appear from the record. Respondent was notified of the dispute within one day after registration of the domain name in dispute, and there is no evidence that Respondent's Web site using the domain name in dispute was in operation prior to that notice.
Likewise, there is no evidence that the Respondent has ever been known by the domain name in dispute.
Finally, the Respondent's employment of the domain name in dispute at a Web site at which the domain name in dispute is offered for sale is clearly an intentional, commercial use.
The Panel is struck by Respondent's e-mail of March 6, 2003, in which Respondent reported to the WIPO Arbitration and Mediation Center that he had attempted to cancel the domain name. This document is particular evidence of the lack of any legitimate interest of Respondent in and to the domain name in dispute.
The Panel finds that the Complainants have met their burden of proof under Paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The circumstances of Paragraph 4(b) of the Policy appear to be fairly met by the evidence of record. That paragraph states:
For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, who is the owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; �.
The only facts of record indicate that: Respondent has attempted to sell, rent, or otherwise transfer the domain name registration to others; the transfer fee to Complainants and to others is in excess of Respondent's admitted registration and transfer costs. The Panel thus draws the inference that Respondent registered the domain name solely for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainants or to a competitor of Complainants in excess of the Respondent's out-of-pocket costs directly related to the domain name in dispute.
The Panel finds that Complainants have met their burden of proof under Paragraph 4(a)(iii) of the Policy.
7. Decision
For all of the foregoing reasons, in accordance with Paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainants.
Bruce E. O'Connor
Sole Panelist
Dated: May 13, 2003
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