DECISION
Cytodyne Technologies Inc v. Royco a/k/a Jeffrey Roy
Claim Number: FA0110000101317
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@zmass.com,
postmaster@z-mass.com, and postmaster@zmasspm.com 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.
RELIEF SOUGHT
Complainant requests that the domain names be
transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
No Response was received.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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