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DECISION

 

Zappos.com, Inc. v. Umbeke Membe c/o Deleting domain

Claim Number: FA0804001181276

 

PARTIES

Complainant is Zappos.com, Inc. (“Complainant”), represented by Seán F. Heneghan, Massachussetts, USA.  Respondent is Umbeke Membe c/o Deleting domain (“Respondent”), Zimbabwe.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zappoos.com>, registered with Enom, 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 electronically on April 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 2, 2008.

 

On April 25, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <zappoos.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 27, 2008
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@zappoos.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 30, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <zappoos.com> domain name is confusingly similar to Complainant’s ZAPPOS.COM mark.

 

2.      Respondent does not have any rights or legitimate interests in the <zappoos.com> domain name.

 

3.      Respondent registered and used the <zappoos.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Zappos.com, Inc., is an online retailer for footwear and accessories.  Complainant registered the ZAPPOS.COM mark with the United States Patent and Trademark Office (“USPTO”) on December 9, 2003 (Reg. No. 2,791,052). 

 

Respondent registered the disputed domain name on August 16, 2007.  Respondent has been using the <zappoos.com> domain name to redirect Internet users to a website where pop-up advertisements and links to competing online retail services for footwear and accessories are displayed. 

 

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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2)   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 registered the ZAPPOS.COM mark with the USPTO, and thus the Panel concludes that Complainant has established rights to the mark pursuant to Policy ¶ 4(a)(i).  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant contends that the <zappoos.com> domain name is confusingly similar to Complainant’s ZAPPOS.COM mark.  The Panel concludes that the inclusion of the additional letter “o” is not sufficient to distinguish the disputed domain name from Complainant’s mark.  In Marriott International, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003), the Panel found that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark despite the addition of another letter “r” to the mark.  Similarly here, the Panel finds that the disputed domain name is confusingly similar to Complainant’s ZAPPOS.COM mark pursuant to Policy ¶ 4(a)(i).  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). 

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.   

 

Rights or Legitimate Interests

 

Complainant has the initial burden of showing that Respondent lacks all rights and legitimate interests in the disputed domain name.  In Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the Panel held that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.”  The Panel finds that Complainant’s assertion that Respondent lacks all rights and legitimate interests in the <zappoos.com> domain name makes a prima facie case, thereby shifting the burden to Respondent.  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).

 

Respondent failed to respond to the Complaint.  The Panel in American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) held that “based on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”  Therefore, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name.  Nevertheless, the Panel will consider all evidence in the record to determine if Respondent does have rights or legitimate interests under Policy ¶ 4(c).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).

 

Complainant asserts that Respondent is not commonly known by the <zappoos.com> domain name.  The WHOIS information indicates that the registrant is “Umbeke Membe c/o Deleting domain.”  There is nothing in the WHOIS information suggesting that Respondent is commonly known by the disputed domain name.  Complainant contends that it has no association or business relationship with Respondent.  Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c).  See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).

 

Respondent’s use of the disputed domain name to display pop-up advertisements and links to competing websites fails to demonstrate rights or legitimate interests.  The Panel concludes that Respondent’s use of the <zappoos.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that the respondent’s use of infringing domain names to direct Internet traffic to a search engine website that hosted pop-up advertisements was evidence that it lacked rights or legitimate interests in the domain names). 

 

Moreover, Respondent is taking advantage of a common misspelling of Complainant’s mark, and is therefore engaged in typosquatting.  The Panel finds that this practice is additional evidence that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s use of the <zappoos.com> domain name to redirect Internet users to competing websites and to display pop-up advertisements evidences registration and use in bad faith.  The Panel finds that Respondent’s use is capable of creating confusion as to Complainant’s source or sponsorship of the website that resolves from the disputed domain name.  Moreover, Respondent is commercially benefiting from the goodwill associated with Complainant’s ZAPPOS.COM mark.  The Panel finds that Respondent’s use is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv).  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain).

 

Respondent’s use of the disputed domain name is also capable of disrupting Complainant’s business, and evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

Finally, the Panel finds that Respondent’s practice of typosquatting evidences registration and use in bad faith under Policy ¶ 4(a)(iii).  See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).

 

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 relief shall be GRANTED.

 

Accordingly, it is Ordered that the <zappoos.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  May 4, 2008

 

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