Zerorez Franchising Systems, Inc. v. Whois Privacy Protection Service, Inc. c/o Whois Agent c/o zerorez.com
Claim Number: FA0910001291278
Complainant is Zerorez
Franchising Systems, Inc (“Complainant”), represented by William
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <zerorez.com>, registered with Godaddy.com, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 26, 2009; the National Arbitration Forum received a hard copy of the Complaint on October 27, 2009.
On October 26, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <zerorez.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 4, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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 postmaster@zerorez.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <zerorez.com> domain name is identical to Complainant’s ZEROREZ mark.
2. Respondent does not have any rights or legitimate interests in the <zerorez.com> domain name.
3. Respondent registered and used the <zerorez.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Zerorez Franchising Systems, Inc., is involved in the carpet and living surfaces cleaning industries. Complainant has operated under its ZEROREZ mark since September of 2003. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its ZEROREZ mark (Reg. No. 2,912,416 issued December 21, 2004).
Respondent registered the <zerorez.com> domain name on April 30, 1999. Respondent has not used the disputed domain name in connection with an active website.
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.
The Panel finds that Complainant has sufficiently
established rights in the ZEROREZ mark under Policy ¶ 4(a)(i) through its
registration of the mark with the USPTO (Reg. No. 2,912,416 issued December 21,
2004).
The <zerorez.com> domain name contains Complainant’s ZEROREZ mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.” The mere addition of a gTLD to a mark does not sufficiently distinguish the disputed domain name from Complainant’s mark. See SCOLA v. Wick, FA 1115109 (Nat. Arb. Forum Feb. 1, 2008) (concluding that “the domain name at issue is identical to [the] complainant’s SCOLA mark, as the only alteration to the mark is the addition of the generic top-level domain “.com.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that the <zerorez.com> domain name is identical to Complainant’s ZEROREZ mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. Upon Complainant making such a showing, the burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). The burden now shifts to Respondent, from whom no response was received. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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).”). Although Respondent has made no allegations that it has rights or legitimate interests in the disputed domain name, the Panel elects to examine the record under Policy ¶ 4(c).
Complainant alleges that Respondent has not used the disputed domain name in the ten years since Respondent registered the disputed domain name. The Panel agrees and finds that Respondent’s failure to actively use the disputed domain name is not 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 Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Respondent is listed in the WHOIS information as “Whois
Privacy Protection Service, Inc. c/o Whois Agent c/o zerorez.com.” Respondent
has not offered any evidence to suggest that Policy ¶ 4(c)(ii)
applies in this case. Therefore, the
Panel finds that Respondent is not commonly known by the disputed domain name
under Policy ¶ 4(c)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has provided evidence of its rights in the mark
through the registration of its ZEROREZ mark with the USPTO. Previous panels have held that the relevant
date that a complainant’s rights in a mark commence is the filing date of the
application for federal registration.
The earliest evidence of Complainant’s registration of its ZEROREZ mark
with the USPTO dates back to an application filing date of October 31,
2003. Complainant has not provided any
evidence that it possessed common law rights or other trademarks prior to this
date. Since Respondent registered the
disputed domain name on April 30, 1999, over four years before Complainant has alleged
rights in the mark, the Panel finds Respondent did not register or use the mark
in bad faith pursuant to Policy ¶ 4(a)(iii). See
Open Sys. Computing AS v. degli
Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where the
respondent registered the domain name in question before application and
commencement of use of the trademark by the complainant); see also Interep Nat'l Radio Sales, Inc. v. Internet
Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith
where the respondent registered the domain prior to the complainant’s use of
the mark).
The Panel finds Policy ¶ 4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is ordered that the <zerorez.com> domain name shall REMAIN with Respondent.
Sandra J. Franklin, Panelist
Dated: December 16, 2009
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