WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Aurelius RHO GTM Development Limited v. Office Depot, Inc.

Case No. D2017-2174

1. The Parties

The Complainant is Aurelius RHO GTM Development Limited of Dublin, Ireland, represented internally.

The Respondent is Office Depot, Inc. of Boca Raton, Florida, United States of America (“United States”), represented by Bird & Bird LLP, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <viking.com> is registered with CSC Corporate Domains, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2017. On November 10, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2017. The Response was filed with the Center on December 8, 2017, and an updated Annex D to the Response was filed on December 9, 2017.

The Center appointed Assen Alexiev, Alistair Payne, and Evan D. Brown as panelists in this matter on February 1, 2018. The Panel finds that it was properly constituted. Each member of 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 Complainant is part of the Aurelius Group, which has 23 subsidiaries generating annualized consolidated revenues of about EUR 4.5 billion.

The Respondent was incorporated in 1986. In 1998, it merged with Viking Office Products, Inc., a leading direct mail marketer of office products. The Respondent is a leading provider of office supplies, business products and services in the United States and around the world. In 2016, the Respondent had annual sales of about USD 11 billion and employed approximately 38,000 associates.

On December 31, 2016, the Aurelius Group acquired the Respondent’s European business. The transaction separated the Respondent’s Viking business and the related intellectual property rights by territory, so that the Aurelius Group acquired certain intellectual property rights for “Viking” and certain domain names with regards to the European territory and the Respondent remained the owner of the intellectual property rights for “Viking” and certain domain names for the rest of the world.

As a result of this transaction, the Complainant became the owner of a number of trademark registrations of the sign VIKING, including the following registrations:

- The European Union (“EU”) trademark VIKING with registration No. 009672445, registered on July 21, 2011, for services in International Class 35;

- The trademark VIKING with registration No. UK00002025546, registered in the United Kingdom of Great Britain and Northern Ireland on June 1, 2001, for goods and services in International Classes 9, 16, 17, 20, 21, 35, and 42;

- The trademark VIKING with registration No. 2P-444137, registered in Switzerland on July 22, 1997, for goods and services in International Classes 1, 5, 9, 11, 16, 17, 18, 20, 21, 22, 25, 27, 28, 30, 35, and 42; and

- The trademark VIKING with registration No. 168503, registered in Austria on February 26, 1997, for goods and services in International Classes 1, 5, 9, 11, 16, 17, 18, 20, 21, 22, 25, 27, 28, 30, 35, and 42.

Following the same transaction, the company Viking Office Products, Inc. – a member of the Respondent’s group, remained the owner of the following trademark registrations of the sign VIKING:

- The trademark VIKING with registration No. 607482, registered in Australia on July 21, 1993, for goods in International Class 9;

- The trademark VIKING with registration No. 928680, registered in Chile on August 20, 2011, for services in International Classes 35 and 39;

- The trademark VIKING with registration No. 4644187, registered in Japan on February 14, 2003, for goods in International Class 16;

- The trademark VIKING with registration No. 491980, registered in the Republic of Korea on April 25, 2001, for goods in International Class 21;

- The trademark VIKING with registration No. 95/10908, registered in Malaysia on October 14, 1995, for goods in International Class 21;

- The trademark VIKING with registration No. 199157, registered in the Russian Federation on January 31, 2001, for services in International Class 42; and

- The trademark VIKING with registration No. 160929, registered in Turkey on October 16, 1995, for goods in International Class 16.

The disputed domain name was registered on March 24, 1994. It currently redirects visitors to an active webpage at the domain name <officedepot.com>.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the Complainant’s VIKING trademarks.

The Complainant states that as a result of the December 31, 2016 acquisition of the Respondent’s European business by the Aurelius Group, the disputed domain name was assigned to the Complainant, as the intention of the parties to the transaction was to transfer to the Aurelius Group all trademarks and corresponding domain names necessary for the continuation of the European business, and the disputed domain name was exclusively used for the European business. Even though the disputed domain name is not listed in the annexes to the intellectual property assignment agreements for the transaction, these assignment agreements include a “wrong pockets” clause that requires the intellectual property rights corresponding to the European territory that have not been transferred to the Complainant’s group to be transferred to it in a short period of time. When the Complainant noticed that the disputed domain name had not been transferred to it, it contacted the Respondent and asked for its transfer.

The Complainant further states that the Respondent is not interested in the use of the sign “VIKING” for goods and services, as it has ceased the use of this sign outside of Europe back in 2002 and has allowed its VIKING trademark registrations in the United States and Canada to expire. The Respondent does not use the disputed domain name by itself for commercial purposes, and does not promote, offer or sell any goods or services on the associated website. According to the Complainant, the only use of the disputed domain name is the redirection to the Complainant’s website at “www.viking-direct.co.uk”. (As noted above, however, it seems to redirect to an active webpage at the domain name <officedepot.com>.)

The Complainant contends that the disputed domain name has been registered and used in bad faith by the Respondent. The Complainant says that in spite of the assignment to it and fact that the disputed domain name is related to the European business, the Respondent is considering the sale of the disputed domain name to an unrelated third party. By doing so, the Respondent intends to misleadingly divert consumers and to tarnish the Complainant’s VIKING trademarks, as the disputed domain name is shown on the catalogues of the Complainant. Such sale would result in the discontinuance of the redirection of visitors accessing the disputed domain name to the Complainant’s website at “www.viking-direct.co.uk”.

According to the Complainant, this conduct of the Respondent shows that it has maintained and refuses to transfer the disputed domain name to the Complainant except for valuable consideration in excess of the Respondent’s out-of-pocket costs and that the Respondent has maintained the disputed domain name primarily for the purpose of selling or transferring it to a third party. According to the Complainant, it would thus be forced to buy the disputed domain name for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name, even though it was already the Complainant’s property and the Complainant possessed earlier rights in the Complainant’s VIKING trademarks. In the Complainant’s submission, the Respondent, by trying to sell the disputed domain name to a third unrelated party, which might be a competitor to the Complainant, has maintained its registration in order to prevent the Complainant from reflecting the Complainant’s VIKING trademarks in a corresponding domain name. The Complainant also notes that the sale of the disputed domain name to a third party would impede the redirection of visitors to the Complainant’s website and thus disrupt its business.

B. Respondent

The Respondent states that it has registered the disputed domain name in good faith and has used it in good faith in conjunction with its VIKING office products business for more than fifteen years. The Respondent says that it has rights and legitimate interests in the disputed domain name, and that the Complainant knew this when it filed this Complaint in a last-ditch effort to stop a sale of the disputed domain name, thus abusing the UDRP. The Complainant’s attempt to have its contractual dispute with the Respondent heard before a UDRP panel, instead of the competent courts, is misguided. The Respondent’s arguments in support of these statements are set out below.

The Respondent states that in light of its 1998 merger with Viking Office Products, Inc., and as a related company of the holder of certain VIKING trademarks, the Respondent had a good faith basis for the registration of the disputed domain name and for its use. The Respondent points out that its group has owned trademark registrations for VIKING in the United States, and continues to own VIKING trademarks registered in Australia, Chile, China, Japan, the Republic of Korea, Malaysia, New Zealand, the Russian Federation, South Africa, Taiwan Province of China, and Turkey. Even though the Respondent’s group’s United States trademarks have subsequently lapsed, the Respondent had rights and legitimate interests as of the date of the registration of the disputed domain name, which is the date on which the existence of such rights and legitimate interests is relevant, not some later date.

The Respondent contends that its rights and legitimate interests in the disputed domain name predate any rights that the Complainant asserts. The disputed domain name was registered to the Respondent many years before the Respondent entered into negotiations to sell its European business to the Complainant’s group, and the Complainant was incorporated on December 15, 2016. The Respondent has been the registrant of the disputed domain name since at least as early as October 20, 2004. Prior to that date, an affiliated entity, Office Club, Inc. was listed as the registrant of the disputed domain name at least as early as November 16, 2001. On April 5, 2010, the registration was transferred to another of the Respondent’s related companies, Officesupplies.com Inc., but was transferred back to the Respondent on June 6, 2011, and has been held by it continuously since then.

The Respondent acknowledges that, as a result of the sale of certain EU and European national trademarks, the Complainant has VIKING trademarks rights that are valid in Europe. The Complainant’s rights, however, are not global nor exclusive and do not blot out the Respondent’s current rights to certain VIKING trademarks, nor do they retroactively undo the Respondent’s historic rights to the VIKING trademarks as were in effect at the time of the registration of the disputed domain name.

According to the Respondent, the Complainant deceptively asserts prior rights to the disputed domain name to obtain its transfer despite the fact that the Complainant did not purchase the disputed domain name along with the other assets it purchased from the Respondent. The Respondent refers to the Complainant’s letter of November 13, 2017, where the Complainant acknowledges that it has made several offers to the Respondent to purchase the disputed domain name prior to the filing of the Complaint and after the Respondent informed the Complainant that it intended to sell the disputed domain name. According to the Respondent, such offers are inconsistent with the Complainant’s claims that the Complainant already owns the disputed domain name and are an admission to the contrary.

The Respondent denies that it has registered and used the disputed domain name in bad faith. The Respondent does not contest that it makes efforts to sell the disputed domain name, but points out that it is free to use or sell its lawful property as it sees fit. According to the Respondent, the real dispute between the Parties is not whether the Respondent is a cybersquatter; it is rather contractual in nature and is ill-suited for resolution under the UDRP.

The Respondent requests that the Panel state in its decision that the Complaint was brought in bad faith and constitutes reverse domain name hijacking under the Policy. In support of this request, the Respondent submits that the Complainant has filed this Complaint with brazen disregard for the Respondent’s rights to the disputed domain name which arise from group ownership of corresponding trademark rights for over fifteen years and from use of the disputed domain name in conjunction with its office supplies business. The Respondent says that the Complainant falsely paints it as a cybersquatter, fabricating its alleged bad faith registration and use of the disputed domain name. The Respondent says that this amounts to reverse domain name hijacking.

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

As is apparent from the evidence submitted by the Complainant, it owns a number of registrations for VIKING trademarks in various European jurisdictions, including in particular, European Union trademark registration No. 009672445 for VIKING, registered on July 21, 2011. This satisfies the Panel that the Complainant has established that it owns registered trademark rights in the VIKING mark for the purposes of the Policy.

The Panel notes that a common practice has emerged among UDRP panels under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore “viking”, which is identical to the VIKING trademarks referred to by the Complainant. In view of this, the Panel finds that the disputed domain name is identical to the VIKING trademarks in which the Complainant has rights. As a result, the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain name, stating that as a result of the 2016 acquisition of the Respondent’s European business by the Aurelius Group, the disputed domain name was assigned to the Complainant, on the ground that it was exclusively used for the European business and was necessary for its continuation, although it was not listed in the annexes to the intellectual property assignment agreements for the transaction. The Complainant further states that the Respondent is not interested in the use of the sign “VIKING”, as it does not use the disputed domain name by itself and has allowed its VIKING trademark registrations in the United States and Canada to expire, while configuring the disputed domain name to redirect visitors to the Complainant’s website at “www.viking-direct.co.uk” and subsequently to an active webpage at the domain name <officedepot.com>.

The Respondent states that in light of its 1998 merger with Viking Office Products, Inc., and as a related company of the holder of certain VIKING trademarks, the Respondent has rights and legitimate interests in the disputed domain name which predate any rights of the Complainant. The Respondent points in this regard to its group company ownership of current trademark registrations for VIKING in the United States, Australia, Chile, China, Japan, the Repubic of Korea, Malaysia, the Russian Federation, and Turkey and notes that the disputed domain name was registered to the Respondent many years before it entered into negotiations to sell its European business to the Complainant’s group and that the Complainant was only incorporated on December 15, 2016. The Respondent acknowledges that the Complainant has rights in certain European Union and European national trademarks, but these rights are not global or exclusive and do not affect the Respondent’s current rights to certain VIKING trademarks or the Respondent’s historic rights to the VIKING trademarks at the time of the registration of the disputed domain name. According to the Respondent, the Complainant has admitted that it does not have rights to the disputed domain name, by acknowledging in its letter of November 13, 2017, that prior to the filing of the Complaint it made various offers to the Respondent to purchase the disputed domain name.

Having reviewed the case file and considered the submissions of the Parties, the Panel has reached the conclusions set out below.

The Respondent has provided evidence that its affiliate Viking Office Products, Inc. is currently the holder of valid registrations of the VIKING trademark in a number of jurisdictions outside Europe, including Australia, Chile, China, Japan, the Republic of Korea, Malaysia, the Russian Federation, and Turkey, the earliest of which registrations dates back to 1993. As is evident from the historic WhoIs records submitted by the Respondent, it or its related companies have been the registrant of the disputed domain name since March 29, 2001. As is also evident from the Wayback Machine records at “www.archive.org”, the Respondent has used the disputed domain name for a commercial website offering office supplies since at least January 1, 2011, and at some point in 2011, started using the disputed domain name to redirect visitors to the Respondent’s commercial website at the domain name <viking-direct.co.uk>, which also offered office supplies. The domain name <viking-direct.co.uk> was operated by the Respondent’s group until the 2016 transaction with the Complainant’s group for the Respondent’s European business. Subsequently the disputed domain name redirects to an active webpage at the domain name <officedepot.com>.

In view of the above, the Panel is satisfied that before any notice to it of the dispute, the Respondent has used the disputed domain name in connection with a bona fide offering of goods or services, which supports a finding under paragraph 4(c)(i) of the Policy that the Respondent has rights and legitimate interests in the disputed domain name.

The domain name <viking-direct.co.uk>, to which the disputed domain name has redirected visitors since 2011, was transferred to the Complainant’s group with the 2016 transaction for the Respondent’s European business. However, the disputed domain name was not explicitly included in the list of domain names that were transferred to the Complainant’s group with the same transaction, and the Parties have not provided to the Panel any agreement specifically regulating the ownership and use of the disputed domain name (either directly or through redirection to other domain names) following the 2016 transaction. The Complainant states that the disputed domain name was necessary for the Respondent’s European business so it was transferred to it with the 2016 transaction and that if this has not happened, the Respondent should transfer it to the Complainant pursuant to the “wrong pockets” clause in their agreement, but the Respondent disputes this statement and maintains that the disputed domain name was not part of the 2016 transaction and should remain with it.

The Panel notes that the administrative proceeding under the Policy is limited in scope to cases of “cybersquatting” and is not intended to resolve complex commercial or contractual disputes. A dispute between the Parties on the issue of whether the disputed domain name was intended to be transferred or should be transferred to the Complainant pursuant to the 2016 transaction between the Parties is beyond the relatively limited scope of the UDRP and would be more appropriately addressed by a court of competent jurisdiction. It is outside the scope of the policy for the Panel to opine on this issue and the Panel declines to do so.

In any case, the Panel notes that at least as of the date of the 2016 transaction the Complainant must have been aware that the disputed domain name redirected visitors to the domain name <viking-direct.co.uk>, which is evident from the Complainant’s letter to the Respondent of November 13, 2017. In such situation, one would expect the Complainant to have raised with the Respondent during the negotiations for the 2016 transaction the issue of the use of the disputed domain name following the 2016 transaction. There is no evidence on the record that such a discussion took place or indeed to support the Complainant’s allegation that the common understanding of the Parties was that the disputed domain name was part of the Respondent’s European business and should thus be transferred to the Complainant. Further, the Panel notes that the Complainant’s offer to the Respondent to purchase the disputed domain name, made following the 2016 transaction for the Respondent’s European business and acknowledged in the Complainant’s letter of November 13, 2017, raises a question as to the Complainant’s position that the Complainant should have acquired the disputed domain name.

In view of all the above, and without prejudice to the right of the Parties to have their contractual dispute finally resolved by the courts of competent jurisdiction, the Panel finds that the Complainant has failed to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name and resultantly the Complaint fails under this element of the Policy.

C. Registered and Used in Bad Faith

The Complainant bases its allegations that the disputed domain name has been registered and used in bad faith by the Respondent on the intention of the Respondent to sell the disputed domain name because such sale to a third party would result in the discontinuance of the redirection of visitors to the Complainant’s website at “www.viking-direct.co.uk”. According to the Complainant, the Respondent’s attempt to sell the disputed domain name to a third party shows that:

- the Respondent intends to misleadingly divert consumers and to tarnish the Complainant’s VIKING trademarks;

- the Respondent has maintained the disputed domain name primarily for the purpose of selling or transferring it either to a third party or to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name; and

- the Respondent, trying to sell the disputed domain name to a third unrelated party, which might be a competitor to the Complainant, has maintained its registration in order to prevent the Complainant from reflecting the Complainant’s VIKING trademarks in a corresponding domain name.

The Respondent denies the Complainant’s allegations. It does not contest that it makes efforts to sell the disputed domain name, but points out that it is free to use or sell its lawful property as it sees fit. According to the Respondent, the real dispute between the Parties is contractual in nature and it is not a question as to whether the Respondent is a cybersquatter, or not.

As discussed under Part 6.B. above, the evidence on the record shows that before any notice to it of the dispute, the Respondent had for a number of years used the disputed domain name in connection with a bona fide offering of goods or services. However, the key determinant is that the Respondent, or its group companies, owned the disputed domain name for many years prior to the 2016 transaction and the Complainant’s acquisition of the European part of the business. In these circumstances the Complainant is unable to show that the disputed domain name was registered in bad faith as required under this limb of the Policy and the Complainant must have been aware of this difficulty before it filed the Complaint.

Since the requirements for registration and use are cumulative, the lack of bad faith registration is sufficient for the Complaint to fail, so it is unnecessary for the Panel to decide whether the Respondent’s conduct in redirecting the disputed domain name to an active webpage at the domain name <officedepot.com>, or otherwise, amounts to use in in bad faith, or not.

Based on the record, it appears that the Parties did not explicitly agree to transfer the disputed domain name to the Complainant as part of their 2016 transaction. The issue as to whether they had a common intention to do so and whether the disputed domain name should be regarded as being included in the scope of the Respondent’s European business are contractual issues that go beyond the scope of the Policy and are not appropriate for resolution under the Policy. The Panel notes again that this is not a case of cybersquatting suitable for resolution under the Policy, but rather a contractual dispute that should be addressed to the courts of competent jurisdiction.

On this basis, the Panel finds that the disputed domain name was not registered in bad faith and the Complaint also fails under this element of the Policy.

D. Reverse Domain Name Hijacking

The Respondent has requested that the Panel state in its decision that the Complainant brought this action in bad faith, constituting Reverse Domain Name Hijacking (“RDNH”) under the Policy. The Panel grants the request, and hereby finds that the Complainant engaged in RDNH.

UDRP panels have found RDNH in circumstances where the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required under the Policy. As noted above, the Complaint is deficient in a number of respects.

Perhaps the most striking deficiency, however, which is sufficient in this Panel’s mind to establish RDNH, is the lack of any allegations in the Complaint as to how the Respondent registered the disputed domain name in bad faith. But looking at the circumstances in their entirety, it is not difficult to understand why there are no such allegations – the facts at hand simply do not provide any basis for them. This disregard of such a striking deficiency in the Complainant’s case is enough to sustain a finding of RDNH, and accordingly, the Panel so finds.

7. Decision

For the foregoing reasons, the Complaint is denied.

Assen Alexiev
Presiding Panelist

Alistair Payne
Panelist

Evan D. Brown
Panelist
Date: February 23, 2018