Shopzooey, Inc. v. j park
Claim Number: FA1112001421090
Complainant is Shopzooey, Inc. (“Complainant”), represented by Adam J. Bruno of Bay State IP, Massachusetts, USA. Respondent is j park (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shopzooey.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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2011; the National Arbitration Forum received payment on December 21, 2011.
On December 22, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <shopzooey.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 19, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@shopzooey.com. Also on December 30, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on January 18, 2012.
Complainant’s Additional Submission was received in a timely manner according to Forum Supplemental Rule 7, on January 23, 2012.
On January 23, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
By the Complaint, the Complainant contends:
· The disputed domain name is identical to, virtually indistinguishable from and confusingly similar to the SHOPZOOEY service mark owned by Complainant and also with ZOOEY and ZOOEYVILLE, which are also Complainant’s service marks.
· Complainant has established common law rights in the SHOPZOOEY service mark through use in commerce and promotional efforts which established goodwill and a substantial business reputation in the said service mark.
· Complainant registered the domain name, <myshopzooey.com>, on July 6, 2011.
· Shopzooey is the legal name of the corporation under which the Complainant has been publically conducting business since June of 2011 and Shopzooey was incorporated by Complainant on June 28, 2011 in Apopka, Florida.
· The website, <myshopzooey.com>, was launched on October 18, 2011.
· Respondent registered <shopzooey.com> on September 8, 2010 and renewed it on September 8, 2011.
· Since the launch of the <myshopzooey.com> website, Complainant’s service marks have been used continuously in interstate commerce to provide an innovative, user driven product and service purchase website wherein users are afforded the ability to bid on and purchase deals on goods and services at discounted rates. With Complainant’s system, the user can control the price paid for goods and services and gain incentives by involving others.
· Complainant has diligently promoted its service mark internationally, exploiting Internet and traditional media outlets Complainant’s service mark was promoted via the following: Electronic Bill Board Campaign with Clear Channel Communications, Fixed Bill Board Campaign with Clear Channel Communications, TV Commercial Campaign with Bright House Media Strategies (A Time Warner Company, Email promotion via our website, Verbal promotion to merchants in Orlando and Tampa via our sales team, Radio Promotion Campaign will run from the 15th of December on Clear Channel Radio Channels – Contract in finalization stage.
· Respondent has failed to address continued overtures by Complainant in a good faith attempt to open up a negotiations dialogue for the possible purchase of the domain.
· The disputed domain name has caused confusion, is deceptive, and is likely to continue causing mistake and deception as to the source of origin for the services.
· Respondent’s continued use of the disputed domain name will inevitably cause further confusion, dilution, and blurring of Complainant’s good will in its trademarks, unless Respondent is prevented from causing further damage.
· Complainant has never licensed or otherwise permitted the Respondent to use any domain name incorporating Complainant’s service mark for services substantially identical to Complainant’s.
· There is no relationship whatsoever between the Complainant and the Respondent.
· Therefore, Respondent’s use of Complainant’s service mark as a domain name for services substantially identical to Complainant’s is unauthorized and not in connection with a bona fide offering of goods or services.
· Respondent is not making any legitimate commercial, noncommercial, or fair use of Complainant’s service mark. From the date of purchase of the domain until the present, Respondent has failed to use the domain or launch a proper website under the disputed domain name. Respondent’s non active website, which utilizes the identical “shopzooey” trademark of Complainant, is being knowingly used for Respondent’s profit to divert users to Respondent’s website through confusion. A simple search for the identical term to Complainant’s service mark may result in a user unintentionally finding Respondent’s disputed domain name and never realizing the mistake.
· The site under the disputed domain name is merely parked and merely contains a series of links to web sites owned by other concerns.
· Therefore, there are no discernible goods or services which can be associated with Respondent’s use of the domain shopzooey.com.
· The domain name is being used in bad faith, as upon purchasing the disputed domain name, Respondent failed to put the domain to proper use. To date, Respondent has yet to make proper use of the domain and this misuse has continued for one year and four months.
· Therefore, there are no discernible goods or services which can be associated with Respondent’s use of the domain <shopzooey.com>.
· Thus, Respondent’s continued renewal and failure to properly utilize the domain qualifies as a deliberate attempt by Respondent to profit from diverting users to the Respondent’s <myshopzooey.com> website by causing mistake or deception as to the source of origin of the services and intentionally disrupting Complainant’s business.
· The Respondent has registered or has acquired the domain name primarily for the purpose of renting the site for others to merely park web addresses upon the site.
· Additionally, Respondent has renewed the domain name in order to prevent Complainant, the owner of the service marks SHOPZOOEY, ZOOEY and ZOOEYVILLE from reflecting these marks in a corresponding domain name.
· Respondent utilized a third-party registration company (Domains by Proxy, Inc.) to shield the true identity of the Respondent. As such, Complainant submitted numerous requests to the third-party registration company to contact the Respondent to attempt to engage in a dialogue regarding the disputed domain name.
B. Respondent
By its Response , the Respondent has replied that:
· The Complainant does not own trademark or service mark, SHOPZOOEY.
· The Complainant’s service mark only extends to the specific service which is not confusingly similar to the respondent’s business
· The Respondent, J. Park at JW Retail Group has been assiduously developing the SHOPZOOEY business since the registration of the domain and has rights to the disputed domain name.
· The Complainant’s service mark application has been not been approved. In addition, the current status, given by the U.S. Patent and Trademark office, reveals that Complainant had received a letter requiring additional information and/or making an initial refusal of the complainant’s service mark application.
· Additionally, the Complainant’s service marks applications for ZOOEY and ZOOEYVILLE have not been approved as of January 17, 2012.
· Based on the current status from the U.S. Patent and Trademark office, the Complainant does not have rights to service marks for SHOPZOOEY, ZOOEY, and ZOOEYVILLE.
· Moreover, the service mark application for SHOPZOOEY applies to service mark class 35, and only to the goods and services relating to the following description. “The retail marketing services; online retail marketing services; promoting the goods and services of others by providing a website; promoting the goods and services of others, namely providing information regarding discounts, coupons, rebates, vouchers and special offers for the goods and services of others.”
· Since September of 2010, respondent, J. Park at JW Retail Group, has been designing and developing women’s accessories and footwear under the label, SHOPZOOEY.
· Respondent has been meticulously developing its SHOPZOOEY products and arranging promotional venues via the following methods as purchasing initial samples from vendors, starting November, 2010, working closely with several manufacturers, purchasing product shipping material, and working with mall advertisers.
· Since September of 2010, the Respondent has established rights in the trademark and/or service mark of SHOPZOOEY via the use in commerce and promotional efforts. Furthermore, the Respondent is preparing its own service mark application under service mark class 25, and the application description will be women’s wedding accessories and footwear.
· Additionally, since there is a significant difference between the description of Respondent’s business and the description of Complainant’s business, they are not confusingly similar to the end user/customers.
· While knowing that the service mark application has not been granted, the Complainant made a false statement to National Arbitration Forum that it owns a service mark for SHOPZOOEY.
· The Respondent should be considered as having rights and legitimate interests in SHOPZOOEY beginning September of 2010. The disputed domain name is identical to Respondent’s product label. The website under the disputed domain name will provide photographs and information regarding SHOPZOOEY products such as fabric content, sizes, and colors of the products.
· The Respondent has registered the domain name, SHOPZOOEY with a full commitment and investment of developing women’s accessories and footwear under the shopzooey label.
· The Respondent would like to emphasize that Respondent has no intention of selling, renting, or otherwise transferring domain name registration.
C. Additional Submissions
By its additional submission, consistently submitted according to Forum Supplemental Rule, the Complainant contends:
The Complainant is Shopzooey, Inc., which was incorporated on June 28, 2011 in Apopka, Florida. The Complainant asserts common law rights in the Shopzooey trademark dating back to June 2011. The Respondent registered the disputed domain name on September 8, 2010 and further renewed it on September 8, 2011. It is obvious that the disputed domain name registration predated the Complainant’s asserted service mark rights.
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."
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.
Under the under Policy ¶ 4(a)(i), the Complainant has to demonstrate that the disputed domain name is identical or similar with a trademark in which the Complainant holds rights.
The Complainant claims it applied for a trademark registration with United States Patent and Trademark Office (“USPTO”) for its SHOPZOOEY mark (App. No. 85,361,382). See Complainant’s Annex 3. Complainant notes that its application has not been granted yet. However, past panels found that a trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i) if the complainant can demonstrate common law rights by showing that its mark has acquired secondary meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel agrees with this precedent and allows Complainant to prove common law rights in its SHOPZOOEY mark under Policy ¶ 4(a)(i).
Complainant argues that its common law rights in the SHOPZOOEY mark date back to June 2011. Complainant alleges it provides deals on goods and services that Internet users may purchase under its SHOPZOOEY mark. Complainant asserts that it was incorporated under the SHOPZOOEY mark on June 28, 2011 in Florida, USA, according to the evidences provided by Complainant’s Annex 5. Complainant in its Annex 5 provides the Panel with a copy of its trademark application for its SHOPZOOEY mark that Complainant filed with the USPTO on July 1, 2011. Complainant alleges that it registered its <myshopzooey.com> domain name on July 6, 2011, according to according to the evidences provided by the Complainant’s Annex 4. Complainant contends that it launched its website from the <myshopzooey.com> domain name on October 18, 2011. Complainant avers that it has continuously and extensively promoted its SHOPZOOEY mark since it began using the mark in June 2011. Complainant in its Annex 8 provides copies of its contracts with media outlets for advertising for its SHOPZOEY mark. Based on this evidence, Complainant argues that its SHOPZOOEY mark acquired secondary meaning. Previous panels found that a mark acquires secondary meaning if the complainant continuously and extensively uses the mark in connection with the complainant’s goods and services. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark). The Panel agrees with the Complainant and this precedent and concludes that, on the preponderance of the evidences, the Complainant appears to own common law rights in its SHOPZOOEY mark for the purposes of Policy ¶ 4(a)(i), dating back to June 28, 2011.
Complainant contends that Respondent’s <shopzooey.com> domain name is identical to Complainant’s SHOPZOOEY mark. The Panel notes that the disputed domain name differs from Complainant’s mark by the addition of the generic top-level domain (“gTLD”) “.com.” Prior panels concluded that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis because a top-level domain is required in a domain name. See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark). Consequently, the Panel holds that Respondent’s <shopzooey.com> domain name is identical to Complainant’s SHOPZOOEY mark under Policy ¶ 4(a)(i).
The Respondent asserts itself common law trademarks rights in the disputed domain name, dating back to September of 2010. The Panel, considers that this is a issue to be analyzed at the second element under Policy ¶ 4(a)(ii), as for the first one under Policy ¶ 4(a)(i) it is sufficient that the Complainant demonstrates rights in a trademark to which the disputed domain name is identical or confusingly similar.
As a conclusion to all above mentioned, the Panel decides that the disputed domain name is identical with a mark in which the Complainant holds trademark and that the first element under Policy ¶ 4(a)(i) had been proven.
The 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 alleges that Respondent is not commonly known by the <shopzooey.com> domain name. Complainant asserts that it never licensed or otherwise permitted Respondent to use Complainant’s SHOPZOOEY mark in a domain name. Complainant contends that Respondent and Complainant are not related in any way. The WHOIS information identifies “j park” as the registrant of the <shopzooey.com> domain name. Previous panels determined that the lack
of relationship between the complainant and the respondent and the WHOIS information were factors in determining that a respondent is not commonly known by a disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Thus, the Panel determines that Respondent is not commonly known by the <shopzooey.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant avers that Respondent is making neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the <shopzooey.com> domain name. Complainant claims that Respondent’s disputed domain name does not resolve to an active website.
In its Response, the Respondent claims that it is preparing to use the <shopzooey.com> domain name. Respondent contends that it registered the disputed domain name to use the domain name in connection with designing and developing women’s accessories and footwear. Respondent argues that since the registration of the disputed domain name, Respondent has worked to prepare its website for operation. Respondent provides a copy of an invoice that it claims is evidence that it purchased initial samples from vendors in November 2010, according to the Respondent’s Annex 7. Nonetheless, the said invoice does not mention any reference, as to disputed domain name.
Respondent also presents in its Annex 8, an e-mail exchange as proof that it worked with manufacturers in December 2010. Respondent alleges it purchased product shipping materials for its business and presents evidence in this sense in its Annex 9. Respondent further argues that it worked with mall advertisers to market its <shopzooey.com> domain name and presents evidence in this sense in its Annex 10. The Panel notes that none of the evidence contained with the Response lists Respondent’s disputed domain name or alleged SHOPZOOEY mark.
The Panel determines that the Respondent, on the preponderance of the evidences, has not sufficiently demonstrated that it is preparing to use the <shopzooey.com> domain name.
Therefore, the Panel concludes that Respondent does not own rights and legitimate interests in the <shopzooey.com> domain name and the Complainant has proven the second element under Policy ¶ 4(a)(ii).
Under Policy ¶ 4(a)(iii), the Complainant has to demonstrate that the Respondent registered and uses the disputed domain name in bad faith.
The Complainant contends that the Respondent has registered or has acquired the domain name primarily for the purpose of renting the site for others to merely park web addresses upon the site.
The Panel agrees with previous Panels decisions that the enumerated Policy ¶ 4(b) factors are not exhaustive, and thus the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Nevertheless, it is the opinion of this Panel, that the bad faith registration cannot be analyzed in abstracto, but only in connection to the rights of the Complainant in the trademark to which the disputed domain name is identical. The registration of the disputed domain name was made initially on September 8, 2010 and further renewed on September 8, 2011. Such registration obviously predates the rights of the Complainant in the trademark, and the Complainant had not indicated that the Respondent had known the intent of Complainant as to the service mark SHOPZOOEY at the registration time of the disputed domain name. The Panel notes that the Respondent did not argue that its registration of the <shopzooey.com> domain name predates Complainant’s rights in the SHOPZOOEY mark. However, the Panel is prepared to give full consideration to the practice of prior panels which failed to find bad faith registration and use in cases where the respondent registered the disputed domain name before the complainant owned rights in the mark. See 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); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark). Consequently, the Panel holds that the Respondent did not register or use the <shopzooey.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel also notes Complainant’s references to Respondent’s renewal of the disputed domain name. As regarding this particular defense, past panels have found that renewal of a disputed domain name by the original owner of the domain name is irrelevant to a Policy ¶ 4(a)(iii) analysis. See Spirit Airlines, Inc. v. Spirit Airlines Pty. Ltd., D2001-0748 (WIPO July 25, 2001) (holding that, “[r]enewal of a domain name registration . . . is no different from renewal of a trademark registration [as] it represents a continuation of the original registration. Were Complainant’s argument to succeed, all ‘innocent’ registrants of domain names would be at risk of becoming branded ‘cybersquatters’”); see also Substance Abuse Mgmt., Inc. v. Screen Actors Modesl Int'l, Inc. (SAMI), D2001-0782 (WIPO Aug. 14, 2001) (finding that domain name registration renewals are a mere “ministerial function” performed by Registrars, and that a renewal is not the same as a registration for purposes of the Policy), and this Panel finds accordingly.
As a conclusion to all above mentioned, the Panel decides that the Complainant failed to demonstrate the third element under Policy ¶ 4(a)(iii).
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 <shopzooey.com> domain name REMAIN WITH Respondent.
Beatrice Onica Jarka, Panelist
Dated: February 6, 2012
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