Zumiez Inc. v. Above.com Domain Privacy
Claim Number: FA1202001431587
Complainant is Zumiez Inc. (“Complainant”), represented by Michael P. Matesky of Christensen O'Connor Johnson Kindness PLLC, Washington, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zumeez.com>, <zumieez.com>, <zumiiez.com>, <zumioez.com>, <zuiez.com>, and <zuumiez.com>, registered with Above.Com Pty Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2012; the National Arbitration Forum received payment on February 24, 2012.
On February 28, 2012, Above.Com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <zumeez.com>, <zumieez.com>, <zumiiez.com>, <zumioez.com>, <zuiez.com>, and <zuumiez.com> domain names are registered with Above.Com Pty Ltd. and that Respondent is the current registrant of the names. Above.Com Pty Ltd. has verified that Respondent is bound by the Above.Com Pty Ltd. 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 March 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 26, 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@zumeez.com, postmaster@zumieez.com, postmaster@zumiiez.com, postmaster@zumioez.com, postmaster@zuiez.com, and postmaster@zuumiez.com. Also on March 5, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Zumiez Inc., owns retail stores nationwide and globally, which sell sports equipment and clothing related to board sports.
2. Complainant has rights in the ZUMIEZ mark through its numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,779,379 registered June 29, 1993).
3. Complainant has rights in the ZUMIEZ mark through its registration with the IP Australia (Reg. No. 1,436,986 registered February 13, 2012).
4. Respondent, Above.com Domain Privacy, registered <zumeez.com> on November 5, 2009; <zumieez.com> on February 16, 2010; <zumiiez.com> on July 28, 2009; <zumioez.com> on June 9, 2009; <zuiez.com> on December 11, 2008; and <zuumiez.com> on July 7, 2007.
5. Respondent’s domain names resolve to “parking pages” that advertise businesses whose products are similar to those sold by Complainant.
6. Respondent has never been affiliated with Complainant and has never received authorization to use the ZUMIEZ mark in any way.
7. Respondent’s domain names are confusingly similar to Complainant’s mark.
8. Respondent’s domain names are classic examples of typosquatting.
9. Respondent demonstrates a bad faith pattern of cybersquatting by his registration of the six domain names at issue in the current proceeding, as well as his involvement in previous cases.
10. Respondent is engaged in a “phishing” scam to deceive Internet users to provide personal information.
B. Respondent
Respondent did not submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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.
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.”).
Complainant claims that it owns rights in the ZUMIEZ mark through its registration with the USPTO (e.g., Reg. No. 1,779,379 registered June 29, 1993), as well as the DIISR (Reg. No. 1,436,986 registered February 13, 2012). The panels in Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) and Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) found that holding numerous trademark registrations around the world establishes rights to the mark under Policy ¶ 4(a)(i). The Panel determines that by registering the ZUMIEZ mark in agencies around the world, Complainant has secured rights to the mark under Policy ¶ 4(a)(i).
Complainant alleges that the disputed domain names are confusingly similar to the ZUMIEZ mark because each domain name varies the ZUMIEZ name only by a single letter and adds the generic top-level domain (“gTLD”) “.com.” In Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006), the panel stated that merely misspelling the complainant’s mark does not sufficiently distinguish the domain name from the mark. Further, in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel held that adding a gTLD such as “.com” does not adequately set the domain name apart from the mark. Adding or removing a single letter, as well as attaching a gTLD to a mark does not distinguish the domain names from the ZUMIEZ mark and, therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 argues that Respondent does not have permission to use the ZUMIEZ mark and is not commonly known by any of the domain names. Complainant alleges that the WHOIS records, which identify the registrant as “Above.com Domain Privacy,” do not indicate that Respondent is commonly known by any of the disputed domain names. The Panel concludes that Respondent is not commonly known by the domain names and thus has no legitimate rights or interests in the names based on the WHOIS information and lack of other supporting evidence. See Karmaloop, Inc. v. Above.com Domain Privacy, FA 1402955 (Nat. Arb. Forum Sep. 29, 2011) (holding that the respondent is not commonly known by the disputed domain name when the WHOIS information for the registrant “bear[s] no resemblance to any of the disputed domain names.”); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant contends that Respondent’s domain names resolve to pay-per-click “parking pages” that advertise products that compete with Complainant’s business. Complainant argues that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. See Complainant’s Exhibit E. In Baylor University v. Above.com Domain Privacy, FA 1401924 (Nat. Arb. Forum Sep. 14, 2011), determined that use of domain names to host a parked website featuring links to third parties that compete with the complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The panel in ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), also held that the respondent lacks rights or legitimate interests in the domain name when it uses the domain name to operate a website displaying links to competing websites, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes that Respondent’s use of the domain name to offer Internet users competing hyperlinks is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant argues that Respondent, in at least some instances, used the disputed domain name <zumeez.com> to carry on a “phishing” operation, by displaying a “giveaway” message offering prizes in exchange for personal information. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (defining “phishing” as “a practice that is intended to defraud consumers into revealing personal and proprietary information”). The Panel finds that Respondent’s use of the domain name to collect Internet users’ personal information constitutes phishing and is evidence that Respondent has no rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii). See Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
Complainant alleges that Respondent’s registration of the domain names constitutes typosquatting, by capitalizing on Internet users’ common spelling errors, which indicates that Respondent has no rights or legitimate interests in the domain names. The panel in IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003), held that the respondent does not have rights or legitimate interests in the domain name when it engaged in typosquatting by “taking advantage of Internet users who attempt to access [the complainant’s] website but mistakenly spell [the complainant’s] mark by” mistyping one letter. In LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003), the panel found that the disputed domain names were intentional misspellings of the complainant’s mark, which amounted to typosquatting and thus demonstrated that the respondent had no rights or legitimate interests in the domain names. The Panel holds that Respondent’s use of typosquatting is evidence that it has no rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii).
Complainant has proven this element.
Complainant argues that Respondent has demonstrated a pattern of registering domain names that are determined to be confused with registered trademarks. Complainant also asserts that Respondent operates under an alias, “David Woo,” that is associated with Above.com Domain Privacy to register domain names that are confusingly similar to trademarks. Complainant contends that David Woo is associated with the registration of the disputed domain name in this proceeding based on correspondence received from the dnwdns@googlemail.com email address, in which Outlook identified the sender as “David Woo.” Complainant asserts that Respondent Above.com DomainPrivacy is involved in over fifty cases wherein the domain name was transferred to the holder of the mark. See The Am. Auto. Assoc., Inc. v. Above.com DomainPrivacy a/k/a Goldsmith/ Host Master, Transure Enter. Ltd. / David Wood, DNWDNS/ Shu Lin, D2011-1884 (Dec. 26, 2011). Complainant also alleges that the “David Woo” alias, working with Above.com Domain Privacy, has been involved in multiple proceedings since September 2010 where the disputed domain names were transferred to the respective complainants. See, e.g., Revlon Consumer Prods. Corp. v. David Woo / Above.com Domain Privacy, D2010-1483 (WIPO Oct. 27, 2010); Intesa Sanpaolo S.p.A. v. Above.com Domain Privacy / David Woo, D2010-1566 (WIPO Nov. 10, 2010); Intesa Sanpaolo S.p.A. v. Above.com Pty Ltd./ David Woo, D2010-1611 (WIPO Nov. 3, 2010); Universidad Autónoma de Nuevo León v. Above.Com Domain Privacy / David Woo, D2010-1160 (WIPO Sept. 1, 2010). The Panel finds that Respondent’s history of UDRP decisions in which the disputed domain names were transferred to the respective complainants is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).
Complainant asserts that Respondent’s domain names disrupt Complainant’s business because the corresponding websites featuring pay-per-click links draw Internet traffic away from Complainant’s website and to its competitors’ businesses. The Panel finds that the disputed domain names divert potential customers to Complainant’s competitors and cause a disruption to Complainant’s business, which demonstrates that Respondent registered and uses the domain names in bad faith under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Complainant argues that the confusing similarity of Respondent’s disputed domain names attracts Internet users to the resolving to “pay-per-click” websites that link Internet users to competing businesses, which demonstrates bad faith registration and use. In AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv), the panel found that using the domain name to maintain a website that displays links to third-party websites which offer products similar to the complainant’s products amounts to bad faith. Also, in Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), the panel held that the respondent was engaged in bad faith registration and use when its domain name was confusingly similar to the complainant’s mark and the resolving web page had links to third-party commercial websites in competition with the complainant’s business. The Panel concludes that Respondent’s maintenance of a website that displays pay-per-click links to competitors’ websites under a confusingly similar domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant contends that Respondent is engaged in “phishing” by using the <zumeez.com> disputed domain name fraudulently to obtain Internet users’ personal information by offering the visitor a “prize” in exchange for personal information. The Panel finds that Respondent’s use of the domain name constitutes “phishing” and reveals bad faith registration and use under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant argues that Respondent’s registration and use of the domain names constitutes typosquatting because the domain names create confusion with Complainant’s mark and the domain names are common misspellings of the ZUMIEZ mark. The Panel concludes that Respondent’s registration and use of the disputed domain names are in bad faith under Policy ¶ 4(a)(iii) because they are classic examples of typosquatting. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <zumeez.com>, <zumieez.com>, <zumiiez.com>, <zumioez.com>, <zuiez.com>, and <zuumiez.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 12, 2012
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