ZPower, Inc. (formerly known as Zinc Matrix Power, Inc.) v. Kissan Battery House c/o Mr. Sachin
Claim Number: FA0903001254829
Complainant is ZPower, Inc. (formerly known as Zinc Matrix Power, Inc.) (“Complainant”), represented by Michelle D. Kahn, California, USA. Respondent is Kissan Battery House c/o Mr. Sachin (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zpowerbatteries.com> (the “Dispute Domain Name”) registered with Name.com.
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 27, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 30, 2009.
On March 30, 2009, Name.com confirmed by e-mail to the National Arbitration Forum that the <zpowerbatteries.com> domain name is registered with Name.com and that the Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.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 April 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 28, 2009 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 email@example.com by e-mail.
A Response was received in electronic copy prior to the April 28, 2009Response deadline; however the hard copy was not received prior to the Response deadline. The National Arbitration Forum therefore does not consider the Response to be in compliance with ICANN Rule 5.
On April 6, 2009 and April 13, 2009, Respondent sent two emails to Complainant and provided a copy thereof to the National Arbitration Forum.
On May 1, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.
On May 7, 2009 the Panel issued an order notifying Complainant that the Panel had received a copy of Respondent’s email dated April 6, 2009 and considered it relevant pursuant to Rule 10(d). In this order, the Panel allowed Complainant an opportunity to respond to said April 6, 2009 email from Respondent. Complainant filed a timely Additional Submission with the National Arbitration Forum on May 15, 2009.
On May 7, 2009 Respondent sent an email to the National Arbitration Forum, and a copy was provided to the Panel. This email was not filed pursuant to the Policy and was not timely.
On May 15, 2009 Respondent sent an email to the National Arbitration Forum, and a copy was provided to the Panel, asking whether it could provide a response to Complainant’s additional submission and/or provide additional documents.
On May 19, 2009 the National Arbitration Forum informed the parties that this Panel instructed that no further submissions would be allowed unless specifically requested.
Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.
Complainant is a leading developer of advanced silver-zinc, rechargeable battery technology and a global supplier of batteries utilizing such technology.
Complainant is the owner of a number of United States trademark registrations, including for the marks ZPOWER and ZINC MATRIX POWER. Complainant has two United States registrations for the mark ZPOWER (one a word mark and one a logo incorporating these words), the earliest of which was registered on July 8, 2008 with the earliest claimed date of first use at least as early as July 1, 2007. Complainant has one United States registration for the mark ZINC MATRIX POWER, which was registered on December 5, 2006 with a claimed date of first use at least as early as December 14, 1999.
Both of these marks are for batteries in International Class 9.
Complainant also has a number of registrations and pending applications for these marks in various countries in the world.
Complainant sells its products in the United States and throughout the world under the trade name ZPower and its various trademarks. Complaint further advertises its products and technology together through its Website located at <zpowerbattery.com> and various other media.
Complainant’s considerable marketing efforts have resulted in its marks, and each of them, acquiring valuable reputation and goodwill.
Identical and Confusing Similarity
The Disputed Domain Name is confusingly similar to Complainant’s ZPOWER mark because it wholly incorporates the ZPOWER mark and merely adds the word “batteries” and the top level domain identifier “.com.”
Rights and Legitimate Interests
Respondent has no right to use Complainant’s marks and the Disputed Domain Name. On information and belief, Respondent owns no federal trademark registration in the United States for the marks ZPOWER or ZINC MATRIX POWER.
Further, on information and belief, Respondent is not commonly known by the name ZPower; Respondent is known by the name “Kissan Battery House.”
Upon information and belief, Respondent failed to develop an active website at the Disputed Domain Name for a substantial period of time after the Disputed Domain Name was registered. This late development occurred only after Complainant expended considerable effort and expense marketing under its marks on a worldwide basis. Moreover, the website at the Disputed Domain Name is arguably still inactive, and Respondent is simply parked on this domain name, and this is because the links on such webpage consistently fail to leads a viewer to any new page other than the home page.
Respondent’s “use” of the Dispute Domain Name is adding no value to the internet community, which is better served by transferring the Disputed Domain Name to Complainant, who has a legitimate use for it.
Respondent’s refusal to voluntarily transfer the Disputed Domain Name to Complainant is another factor demonstrating bad faith by Respondent.
Respondent’s use of a privacy service immediately following receipt of Complainant’s letter informing Respondent of its infringing use is further evidence of Respondent’s bad faith.
Respondent’s response generally expresses confusion and consternation about the process under the Policy and further objects to a lock being placed on the Disputed Domain Name.
C. Other Correspondence from Respondent
On April 6, 2009 and April 13, 2009, Respondent sent emails to Complainant’s counsel and copied the National Arbitration Forum. Copies of these emails have been supplied to this Panel by the National Arbitration Forum.
In these emails, Respondent argues that Respondent has been using the name Z Power for the importation and sale of lead/acid batteries in India since April 1990.
Respondent adopted the trademark ZPower to denote that the batteries manufactured by Respondent generate maximum power in that “Z” stands for the last letter in the alphabet and denotes “maximum” and “ultimate.”
Respondent registered the “Z Power” trademark under the Indian Trade & Merchandise Act of 1959 on August 14, 2003. This registration is for “batteries and its [sic] parts including dry cell battery, storage battery, battery plates, battery charges, batteries for vehicle and accessories,” in International Class 9. The claimed date of first use is April 1, 1990. Respondent provided a copy of the Indian trademark registration certificate.
Respondent has not and will not infringe on Complainant’s trademarks because Respondent does not operate in the United States, nor does it intend to do so.
C. Complainant’s Additional Submission
Respondent’s various submissions, including its “official” submission, should be disregarded.
No late response should be allowed. Respondent was fully informed of all deadlines on numerous occasions, including by Complainant in its cover letter, which accompanied the complaint served on Respondent.
Emails sent by Respondent prior to the deadline for its response should be disregarded because they do not contain the requisite certification, namely that the information contain therein is, “to the best of Respondent’s knowledge, complete and accurate.” Absent this certification, the submissions were and are unreliable and should not be considered. Given Respondent’s failure to submit a certified, substantive answer in a timely fashion, the Panel should accept as true all of the allegations of the Complainant.
Even if the emails submitted by Respondent prior to expiration of the April 28, 2009 deadline were deemed competent evidence, it would not affect the decision to be rendered because in addition to the absence of the required certification, Respondent’s email submissions failed to rebut that Respondent was not using the domain name in connection with a bona fide offering of goods or services, or to counter the charge that Respondent registered the domain name in bad faith.
Complainant was founded in 1996 and was originally named Zinc Matrix Power. Complainant used the ZINC MATRIX POWER mark at least as early as December 14, 1999 and has registered and/or filed trademark applications for this mark in numerous countries. In early 2007 it shortened its name by changing it to ZPower, Inc. Prior to shortening its name and registering the ZPOWER mark in the United States and numerous other countries, Complaint conducted extensive research to ensure there were no confusingly similar uses of “ZPower” in the areas in which such mark would be used, including in the context of domain names. Complainant’s trademark research report identified the domain name <zpowerbatteries.com> as being registered to Respondent. However, the website provided under the Dispute Domain Name was a parking page with no useful information. Additionally, Complainant conducted numerous Google and other search engine searches for “ZPower” and both Respondent and “ZPower” products relating to Respondent were never identified.
On information and belief, it was not until late 2008, subsequent to extensive use and marketing and worldwide recognition of Complainant’s marks that Respondent developed any content whatsoever for the website at the Disputed Domain Name, which remained entirely inactive. Respondent was simply parked on the Disputed Domain Name as the links on such webpage consistently failed to lead a viewer to any page other than the home page. Accordingly, Respondent failed to use the Disputed Domain Name in connection with a bona fide offering of its goods and had no legitimate interests in the Disputed Domain Name prior to receiving notice from Complainant of Respondent’s infringing use.
It was not until Complainant was forced to file this complaint with the National Arbitration Forum that Respondent began to develop the website at the Disputed Domain Name to hide the fact that it had essentially parked itself there. As of today, the links on the home page now appear to be active. Information about a “ZPower” product is identified, and contact information for the Respondent is provided. This after-the-fact action demonstrates Respondent’s bad faith intent to attract consumers looking for Complainant and to trade and benefit from Complainant’s reputation and goodwill. Additionally, this after-the-fact action demonstrates Respondent’s intent to deceive the National Arbitration Forum as to the legitimacy of Respondent’s claim to the subject Disputed Domain Name.
Complainant is the owner of two United States trademark registrations for the mark ZPOWER; one is for a word mark and the other is for a logo. These registrations were issued on July 8, 2008 and February 24, 2009, respectively. The underlying trademark applications were filed on March 7, 2007 and August 6, 2007, respectively.
Complainant’s business is to develop, manufacture, and sell batteries within the United States and internationally.
Respondent is the owner of an Indian trademark registration for the mark Z-Power. This registration was issued on December 26, 2005. The underlying trademark application was filed on August 14, 2003.
Respondent registered the Disputed Domain Name on June 21, 2006.
Respondent re-registered the Disputed Domain Name on September 9, 2009 through a proxy service.
Respondent’s business is to import and sell batteries within India.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
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.
Preliminary Issue #1 – Deficient Response
Respondent’s official response was sent by it to the National Arbitration Forum by email. This email was submitted on a timely basis, but was not followed by a hard copy. As such, this response was deficient pursuant to the National Arbitration Forum’s Supplemental Rules, number 5.
In such a circumstance, a panel may ignore the response, thus placing a respondent in a default posture. See Six Continents Hotels, Inc. v. Norwak, D2003-022 (WIPO Mar. 4, 2003)(holding that the respondent’s failure to submit a hard copy of the response and its failure to include evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint.)
In the present action, whether this Panel accepts Respondent’s response has no bearing on the outcome because the response contains nothing of substance, and this Panel will consider it no further.
This would have placed Respondent into a default posture, but for the following.
Preliminary Issue #2 - Other Correspondence from Respondent
During the time in which Respondent could have filed a response, that is, after notice of this matter and before the deadline in which to file a response, Respondent sent two emails to the Complainant, one on April 6, 2009 and the other on April 13, 2009. The National Arbitration Forum was copied on these emails, and copies were, in turn, provided to this Panel.
This Panel believes that these emails, primarily the email of April 6, contain pertinent information, and this Panel will consider this information pursuant to Policy Rule 10.
In reaching this decision, this Panel is impressed that these emails were sent during the response period and were directed to Complainant, so Complainant was aware of the contents thereof. Further, this Panel allowed Complainant an opportunity to file an Additional Submission with respect to the email of April 6, and Complainant did file an Additional Submission addressing both the email of April 6 and April 13. As such, Complainant has not been prejudiced by not having had an opportunity to address the information contained in these emails.
Complainant argues in its Additional Submission that these two emails should be disregarded because these emails “…did not contain the required certification, namely that the information contained therein is, ‘to the best of Respondent’s knowledge, complete and accurate.’” Complainant further argues that, “Absent this certification, the submissions were and are unreliable and should not be considered.”
This Panel is mindful of the absence of this important certification and has been cautions with Respondent’s assertions of fact; however, it would be overstating the instruction of Policy Rule 14 to completely disregard these emails. Rather, Policy Rule 14 instructs that a panel should draw such inferences from a failure to comply with the Rules as it considers appropriate.
For purpose of Policy Rule 4(a)(i), the relevant comparison is between the Complainant’s trademark and the Disputed Domain Name. See Atlantic Station, LLC v. Dargan Burns III (Nat. Arb. Forum Apr. 26, 2009)(“[T]he comparison is at the level of the relevant trademarks and domain names, and in this, the traditional trademark law concepts of marketplace confusion are not the primary focus.”)
In making this comparison, top level name identifiers (gTLDs), spaces and dashes, and other trivial variations are ignored. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel finds that the omission of the space found in Complainant’s mark and the addition of a hyphen are immaterial. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Where a Disputed Domain Name contains additional content that is not trivial, then the question is whether the additional content tends to strongly lead back to Complainant and its trademark. See Enterprise Rent-A-Car Company v. Richard Lanoszka a/k/a/ Silent Register (Nat. Arb. Forum, Feb. 25, 2009)(“In the view of this Panel, the difference between these two groups of administrative actions lies in whether the additional of a word and its associated concept strongly leads an average Internet user back to a complainant and the complainant’s trademark…”).
In the present action, this Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s trademark ZPOWER (“Complainant’s Trademark”). The Disputed Domain Name includes the entirety of Complainant’s Trademark and it includes the additional word “batteries.” This additional word does strongly lead back to Complainant given its market position as a supplier of batteries.
In addition to Complainant’s Trademark, Complainant presents evidence about its ZINC MATRIX POWER trademark registrations and applications. However, these marks and applications are not relevant because they are not identical or confusingly similar to the Disputed Domain Name, and consequently, these trademarks will not be considered further.
Pursuant to the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant’s burden in this regard focuses on the elements set out in Policy Paragraph 4(c). Complainant must provide evidence from which this Panel could determine that none of the specified conditions exist. In the present matter, Complainant carries this light burden.
Firstly, Complainant demonstrates that Respondent is not known by the Disputed Domain Name. Respondent’s name is “Kissan Battery House.” See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Secondly, Complainant demonstrates that Respondent is operating a commercial enterprise. As stated by Respondent on its website (copy of a screenshot provided by Complainant): “…we are importing world class quality batteries from a no. of countries as Malaysia, Thailand & RBL Bangladesh under our brand name ‘Z-Power’, the hallmark of our monumental success. It comes as no surprise as our products are one of the best & most reliable in the market.”
Thirdly, Complainant asserts facts from which this Panel could conclude that Respondent was not engaged in a bona fide offering of goods and service, but rather was attempting to cause confusion within the marketplace as to the source of its goods. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods”).
Additionally, Complainant demonstrates that Complainant did not authorize Respondent to use Complainant’s Trademark.
The burden thusly shifts to Respondent to demonstrate that it does have rights or legitimate interests in respect to the Disputed Domain Name, and this Panel finds that Respondent does so demonstrate.
Policy Paragraph 4(c) sets forth three conditions which, if proven, established a respondent’s rights or legitimate interests in a disputed domain name. Importantly, these three conditions are not exclusive. Policy Paragraph 4(c) reads in pertinent part: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interest in to the domain name for purposes of Paragraph 4(a)(ii)” (emphasis supplied). In stepping out beyond the three listed conditions, a panel should be guided by the overarching purpose of the Policy, which is to address the problem of cyber-squatting.
This Panel concludes that it is permissible for an entity to reflect its own trademark, duly registered in one country, in a domain name, even if doing so results in a domain name that is identical or confusingly similar to another entity’s trademark that has also been duly registered, but in another country. Such does not constitute cyber-squatting. See Angels Baseball, L.P. v. Lee Dongyeon, FA 925418 (Nat. Arb. Forum May 17, 2007)(the domain name <angels.com> was left undisturbed by a panel in the face of an objection by the owner of a United States trademark registration for the mark ANGELS, where the respondent owned a Korean trademark registration for the service mark ANGELS); see also Westec Interactive Security, Inc. v. Express Post Ltd. (Westec Div.), D2005-0811 (WIPO Oct. 7, 2005) (finding that the respondent had rights in respect of the domain name because there was nothing suggesting that the respondent’s Russian Federation trademark registration was anything other than genuine).
This Panel is mindful that it is possible this rational might not apply in all situations, but it is for other panels faced with other facts to consider limitations as may be appropriate.
In the present action, and in reaching the above conclusion, this Panel is impressed by the fact that Respondent’s Indian trademark registration was issued on December 26, 2005, which pre-dated the issuance of Complainant’s United States registration by approximately three years, and the date of Respondent’s trademark application pre-dates Complainant’s date of application by approximately 4 years. As such, Respondent could not have been attempting to cyber-squat on a trademark that did not then exist.
Once this threshold is traversed, it does not matter whether Respondent parked the Disputed Domain Name or began using the Disputed Domain Name only after Complainant began a worldwide marketing campaign. In either event, Respondent had a legitimate interest in respect to the Disputed Domain Name.
As such, Complainant has failed to establish the second element of the Policy.
Having failed to establish one element of the Policy, it is not necessary for this Panel to consider the last element. See Raxorbox v. Torvben Skjodt, FA 150795 (Nat. Ar. Forum May 9, 2003)(“[B]ecause Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary.”) However, this Panel believes that Complainant also failed in proving that Respondent registered the Disputed Domain Name in bad faith.
Complainant argues that Respondent used the Disputed Domain Name to create a likelihood of confusion as to Complainant’s sponsorship and affiliation with the Disputed Domain Name and corresponding website, and this is evidence of bad faith. This Panel is not persuaded that Respondent was attempting to create a likelihood of confusion. This Panel believes that Respondent’s intention was to reflect its trademark in a domain name.
Complaint argues that the Disputed Domain Name was not used by Respondent from the time of the registration thereof in 2006 until late 2007. Whereas some panels have found non-use of a domain name a factor in finding bad faith, this Panel believes that such a conclusion should be reached cautiously. Inaction can have any number of legitimate reasons. In the present action, this Panel is not persuaded that Respondent’s delay was the result of a bad faith motive.
Complainant argues that Respondent used a proxy service as its WHOIS registration, and that this proxy service was started only after Complainant initially contacted Respondent. Complainant asserts that this is evidence of bad faith. This Panel has some sympathy with this argument. The coincidence in time does appear to argue for an intentional attempt to make things difficult for Complainant. However, at the time, Complainant already knew Respondent’s identity and contact information, and Respondents efforts in this regard, if the conduct was in fact intentional, were ineffectual. Additionally, Respondent eventually did have counsel communicate with Complainant (a copy of a letter from Respondent’s counsel was included as an attachment to the noted email of April 6), and matters moved forward.
Complainant argues that it made a number of demands on Respondent to transfer the Disputed Domain Name, which Respondent refused, and this is evidence of bad faith. This Panel believes this argument proves too much. Whereas some panels have found a failure to voluntarily transfer a domain name to be evidence of bad faith, such administrative actions have tended to involve egregious conduct, such as described in Encyclopaedia Britannica v. Zucarini, D2000-0330 (WIPO June 7, 2000)(respondent found to have engaged in a pattern of registering misspellings of famous marks). To apply this principle as broadly as suggested by Complainant would place respondents with legitimate defenses in an untenable position: either they “voluntarily” transfer a domain name or they are ordered to do so as a direct consequence of a refusal to do so.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Kendall C. Reed,
Dated: June 1, 2009
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