Walker & Zanger, Inc. v. Guangzhou Commerce LTD c/o Cai Xui Ping
Claim Number: FA0806001199225
Complainant is Walker & Zanger, Inc. (“Complainant”), represented by Don
H. Min, of Belasco Jacobs &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <walker-zanger.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 4, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 5, 2008.
On June 5, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <walker-zanger.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").
6, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 26, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 1, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <walker-zanger.com> domain name is confusingly similar to Complainant’s WALKER & ZANGER mark.
2. Respondent does not have any rights or legitimate interests in the <walker-zanger.com> domain name.
3. Respondent registered and used the <walker-zanger.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Walker & Zanger, Inc., is a stone and tile company that, since 1952, has operated under the WALKER & ZANGER mark (Reg. No. 2,222,404, issued February 9, 1999), which was registered with the United States Patent and Trademark Office (“USPTO”). In connection with its Internet operations, Complainant owns and operates the <walkerzanger.com> domain name.
Respondent registered the <walker-zanger.com> domain name on September 19, 2004. Respondent is currently using the disputed domain name to divert Internet users to a website labeled as “Xiamen Elite Industry Corporation,” which offers stone and tile products and services in direct competition with Complainant.
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.
In order to achieve requisite standing under the UDRP, Complainant must assert rights in its WALKER & ZANGER trademark. This is most commonly achieved by asserting trademark registration with a governmental entity such as the USPTO. The Panel finds that Complainant has indeed registered the mark with the USPTO, which confers upon Complainant sufficient rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <walker-zanger.com> domain name does not carry many distinctions from Complainant’s WALKER & ZANGER mark. For one, the mark takes up the entire disputed domain name, with the sole change in the substitution of the ampersand for a hyphen. Since the mere inclusion of a hyphen would not lead to a meaningful distinction, it is logically consistent that a substitution of existing punctuation carries even less merit. There is no phonetical difference between the mark and the disputed domain name, and it is highly doubtful that anyone would take the substitution to be so significant as to consider the two distinct. To find otherwise would render decisive the most trivial of distinctions and moot the entire 4(a)(i) analysis process. As an aside, it should be noted that regardless of what Internet users would discern from such alterations, an ampersand is not reproducible in a disputed domain name, which explains Complainant’s <walkerzanger.com> domain name and the marginal distinctive utility of the swap for a hyphen. Moreover, while there is an inclusion of the generic top-level domain (“gTLD) “.com,” such is irrelevant under Policy ¶ 4(a)(i) and the Panel will spend no more time expounding upon such inclusions. The Panel therefore finds that the <walker-zanger.com> domain name is confusingly similar to Complainant’s WALKER & ZANGER mark under Policy ¶ 4(a)(i). See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (noting that PG&E’s home web page is found at <pge.com> because the ampersand symbol is not reproducible in a domain name); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the <walker-zanger.com> domain name. Complainant must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests. The Panel finds that Complainant has met its burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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).
Based on the evidence within the record, there is no indication that Respondent is known by the disputed domain name. The WHOIS domain name registration information even lists the registrant of record as “Guangzhou Commerce LTD c/o Cai Xui Ping.” Moreover, the corresponding websites list the identity of the owner as “Xiamen Elite Industry Corporation.” Neither of these names relate to the disputed domain name. As such, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent’s confusingly similar disputed domain name resolves to a commercial website that offers the same products and services as Complainant. What signifies Respondent’s lack of rights and legitimate interests is that the disputed domain name incorporates Complainant’s mark. The Panel finds that Respondent has failed to create a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name diverts Internet users seeking Complainant’s products to a directly competitive website owned by Respondent. As such, Complainant’s business is disrupted due to the diversion and potential chance of lost business. The Panel finds this to constitute evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Because Respondent has registered a confusingly similar disputed domain name used to divert Internet users to a directly competitive website, Respondent has therefore created a likelihood of confusion as to Complainant’s affiliation and endorsement of the disputed domain name and corresponding website. Such registration and use easily constitutes evidence of Complainant’s bad faith registration and use under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <walker-zanger.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: July 8, 2008
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