Zoological Society of San Diego v. DN Media / DN Media, Inc
Claim Number: FA1206001447706
Complainant is Zoological Society of San Diego (“Complainant”), represented by Nicholas S. Barnhorst of The Trademark Group, APLC, California, USA. Respondent is DN Media / DN Media, Inc (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sandiegozoo.info>, registered with GoDaddy.com LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2012; the National Arbitration Forum received payment on June 7, 2012.
On June 8, 2012, GoDaddy.com LLC confirmed by e-mail to the National Arbitration Forum that the <sandiegozoo.info> domain name is registered with GoDaddy.com LLC and that Respondent is the current registrant of the name. GoDaddy.com LLC has verified that Respondent is bound by the GoDaddy.com LLC 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 June 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@sandiegozoo.info. Also on June 14, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 name be transferred from Respondent to Complainant.
A. Complainant
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Zoological Society of San Diego, is a California Not-for-Profit Corporation dedicated to the conservation of animals and plants, and provides educational and entertainment services involving the exhibition of wild animals and their habitats. Complainant owns United States Patent and Trademark Office (“USPTO”) trademark registrations for the SAN DIEGO ZOO mark (e.g., Reg. No. 1,804,440 registered November 16, 1993).
On January 31, 2011 Respondent, DN Media / DN Media, Inc, registered the <sandiegozoo.info> domain name. The <sandiegozoo.info> domain name currently resolves to an inactive 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."
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 owns USPTO trademark registrations for the SAN DIEGO ZOO mark (e.g., Reg. No. 1,804,440 registered November 16, 1993). Panels have found that registration of a mark is sufficient evidence of rights no matter where the mark is registered in relation to where the parties operate. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). The Panel finds that Complainant has rights in the SAN DIEGO ZOO mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <sandiegozoo.info> domain name is identical to the SAN DIEGO ZOO mark. Respondent’s deletion of the spaces in Complainant’s mark and the addition of the generic top-level domain (“gTLD”) “.info” are irrelevant to a Policy ¶ 4(a)(i) analysis as these are changes required of every domain name. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, the Panel finds that Respondent’s <sandiegozoo.info> domain name is identical to the SAN DIEGO ZOO mark under Policy ¶ 4(a)(i).
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).
Respondent is not commonly known by the <sandiegozoo.info> domain name. Respondent is not authorized to use the SAN DIEGO ZOO mark. Additionally, the WHOIS record for the <sandiegozoo.info> domain name lists “DN Media / DN Media, Inc.” as the domain name registrant and that this does not resemble the disputed domain name. The panels in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), and Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), held that the information available pertaining to authorization of use of a mark and the WHOIS record are strong evidence of whether or not a respondent is commonly known by a disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <sandiegozoo.info> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent’s non-use of the <sandiegozoo.info> domain name indicates that Respondent lacks rights and legitimate interests in the disputed domain name. The <sandiegozoo.info> domain name resolves to an inactive website and Respondent has not demonstrated any preparations to use the domain name. Panels have held there to be no rights or legitimate interests in a domain name where a respondent registered a disputed domain name and subsequently failed to use the domain name. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question). Therefore, the Panel finds that Respondent’s non-use of the <sandiegozoo.info> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent’s registration and non-use of the disputed domain name are a product of bad faith. Respondent attempted to prevent Complainant from registering the SAN DIEGO ZOO mark in a domain name, as evidenced by Respondent’s disinterest in associating any content with the <sandiegozoo.info> domain name. Therefore, the Panel finds that Respondent registered and is holding the <sandiegozoo.info> domain name in bad faith to prevent Complainant from registering its mark in a domain name under Policy ¶ 4(b)(ii).
Respondent registered and failed to use the disputed domain name. Registration and non-use of a domain name is evidence of bad faith. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). Therefore, the Panel finds that Respondent registered and uses the <sandiegozoo.info> domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent’s incorporation of Complainant’s entire SAN DIEGO ZOO mark in the <sandiegozoo.info> domain name indicates that Respondent had actual knowledge of Complainant's mark and rights. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
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 <sandiegozoo.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 24, 2012
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