Cytodyne Technologies Inc v. Royco a/k/a Jeffrey Roy
Claim Number: FA0110000101317
Complainant is Cytodyne Technologies, Inc., Lakewood, NJ (“Complainant”) represented by Lawrence D. Mandel, of Mandel & Peslak, LLC. Respondent is Royco a/k/a Jeffrey Roy, West Warwick, RI (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zmass.com> and <z-mass.com>, registered with aitdomains.com, and <zmasspm.com> registered with Tucows, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 24, 2001; the Forum received a hard copy of the Complaint on October 29, 2001.
On October 29, 2001, aitdomains.com confirmed by e-mail to the Forum that the domain names <zmass.com> and <z-mass.com> are registered with aitdomains.com and that Respondent is the current registrant of the name. aitdomains.com has verified that Respondent is bound by the aitdomains.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 30, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain names <zmasspm.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc.has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 2, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 23, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On December 4, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain names be transferred from the Respondent to the Complainant.
The disputed domain names are identical and confusingly similar to Complainant’s ZMASS registered trademark.
Respondent has no rights or legitimate interests in respect to the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
No Response was received.
Since 1999, Complainant has used its Z-MASS mark in connection with the sale and manufacture of dietary and nutritional supplements. The Z-MASS trademark was registered on the Principal Register of the United States Patent and Trademark Office on December 26, 2000 as Reg. No. 2,416,576. Complainant also uses its Z-MASSPM mark in connection with similar dietary and nutritional supplements.
Respondent registered the <zmasspm.com> domain name on March 17, 2000. Respondent, at one time, developed a website located at the <z-mass.com> and <zmass.com> domain names which offered Complainant’s ZMASS product for sale. Currently, Respondent is offering the <zmasspm.com> and <zmass.com> domain names for sale, and links the disputed domain names to a municipalities website, located in the town of Arlington, Massachusetts.
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.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant has established rights in the ZMASS trademark through its registration on the Principal Register of the United States Patent and Trademark Office. Furthermore, the <zmass.com> and <z-mass.com> domain names are identical to Complainant’s registered mark. The <z-mass.com> domain name wholly incorporates Complainant’s mark with the addition of a hyphen. It is well established that the addition of a hyphen to a mark makes a disputed domain name identical to the mark at issue. See InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
Furthermore, the <zmasspm.com> domain name is confusingly similar to Complainant’s ZMASS mark as it combines Complainant’s ZMASS mark with the letters “pm.” This domain name also identifies another product marketed by Complainant, for which it does not have registration on the Principal Register. Nonetheless, the <zmasspm.com> domain name is confusingly similar to Complainant’s ZMASS mark. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names "tdwatergouse.com" and "dwaterhouse.com" are virtually identical to Complainant’s TD WATERHOUSE name and mark); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR) (finding that “kelsonmd.com” is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to submit a Response in this proceeding. It is well established that Panels may presume that a Respondent has no rights or legitimate interests in a disputed domain name where the Respondent fails to submit a Response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).
Furthermore, it is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) to use the disputed domain names to either sell Complainant’s goods without Complainant’s authority, or to offer the disputed domain names for sale. See National Collegiate Athletic Assoc. v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell complainant’s goods without complainant’s authority, as well as others’ goods is not bona fide use); see also J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent’s offer to sell the <zmass.com> and <zmasspm.com> domain names for sale is evidence of bad faith pursuant to Policy ¶ 4(b)(i). Respondent’s act of linking these domain names to a municipalities website, with the word “Zone” and “Massachusetts” as the subject/title do not function to thwart a finding of bad faith registration and use on the part of Respondent. See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding Respondent's offer to sell the domain name at issue to Complainant was evidence of bad faith); see also Corinthians Licenciamentos LTDA v. Sallen, D2000-0461 (WIPO July 17, 2000) (finding bad faith where Respondent’s claimed use for the mark was “most likely an excuse for camouflaging the purpose of trafficking with the domain name”).
Respondent’s former use of the disputed domain names to offer Complainant’s goods for sale without Complainant’s authority is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv), as Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s ZMASS mark. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent acted in bad faith by registering the domain name <fossilwatch.com> and using it to sell various watch brands).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the <zmass.com>, <z-mass.com> and <zmasspm.com> domain names be transferred from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY ( Ret.)
Dated: December 6, 2001
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