Zee Creative, Inc. v. Jake MacDougall / Toast Innovation
Claim Number: FA1309001518599
Complainant is Zee Creative, Inc. (“Complainant”), represented by Antoinette M. Tease, Montana, USA. Respondent is Jake MacDougall / Toast Innovation (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zcreativegroup.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 9, 2013; the National Arbitration Forum received payment September 9, 2013.
On September 9, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <zcreativegroup.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 1, 2013, 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@zcreativegroup.com. Also on September 11, 2013, 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 October 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. Respondent has not been commonly known by the <zcreativegroup.com> domain name.
ii. Respondent is using the domain name <zcreativegroup.com> to direct consumers to its website for brand development and services, creative services, digital strategy and production, social media strategy and content creation, and digital and traditional media.
i. Respondent intentionally attempts to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks.
ii. Respondent was aware of Complainant when it registered the domain name less than three months ago.
Complainant established that it has rights to and legitimate interests in the mark contained within the disputed domain name.
Respondent has no such rights to or legitimate interests in the disputed domain name that contains Complainant’s protected mark.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant asserts that it is the owner of the ZEE CREATIVE mark, which is used for brand development and services, creative services, digital strategy and production, social media strategy and content creation, and digital and traditional media. Complainant argues that it is the owner of trademark registrations with the USPTO for the ZEE CREATIVE mark (e.g., Reg. No. 3,057,632, registered February 7, 2006) and for the ZCREATIVE.COM mark (e.g., Reg. No. 3,060,230, registered February 21, 2006). See Complainant’s Annex. The Panel finds that although Respondent appears to reside in Canada, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides, so long as Complainant establishes recognized rights in the mark in some jurisdiction. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Thus, this Panel finds that Complainant sufficiently proved rights in its ZEE CREATIVE and ZCREATIVE.COM marks under Policy ¶ 4(a)(i) through its registrations with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <zcreativegroup.com> domain name is phonetically identical to Complainant’s ZCREATIVE.COM mark, except for the inclusion of the word “group.” The Panel finds that Respondent’s addition of a generic term does not differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Accordingly, this Panel finds that Respondent’s <zcreativegroup.com> domain name is confusingly similar to Complainant’s ZCREATIVE.COM mark pursuant to Policy ¶ 4(a)(i). See Barnes & Noble College Bookstores, Inc. v. Leasure Interactive, D2001-1216 (WIPO Mar. 25, 2002) (“The Panel further finds that the domain name <bunsandnoble.com> is confusingly similar to the BARNES & NOBLE marks in so far as the domain name is similar in sound to Complainant’s marks.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 claims that Respondent has not been commonly known by the <zcreativegroup.com> domain name. The Panel observes that the registrant of the disputed domain name is identified as “Jake MacDougall / Toast Innovation” in the WHOIS information. See Complainant’s Annex. The Panel also notes that Respondent provides no additional evidence that it is known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <zcreativegroup.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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 that it is commonly known by the domain name).
Complainant alleges that Respondent is using the domain name <zcreativegroup.com> to direct consumers to Respondent’s website for brand development and services, creative services, digital strategy and production, social media strategy and content creation, and digital and traditional media. The Panel notes that Respondent’s domain name resolves to a website featuring brand development services, stating: “We do awesome work that gets your brand talked about, mostly on the Internet.” See Complainant’s Annex. Complainant asserts that Respondent’s site and services are in direct competition with Complainant’s website and services. In Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010), the panel found “that capitalizing on the well-known marks of Complainant by attracting Internet users to its disputed domain names where Respondent sells products in competition of Complainant, is not a bona fide offering of goods or services pursuant to a Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Consequently, this Panel finds that Respondent is not using the <zcreativegroup.com> domain name in connection with a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent has intentionally attempted to attract Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks. The Panel notes that Respondent’s <zcreativegroup.com> domain name resolves to a webpage featuring brand development services, stating: “We do awesome work that gets your brand talked about, mostly on the internet.” See Complainant’s Annex. Complainant asserts that Respondent’s use of the domain name suggests to consumers that the website is sponsored or endorsed by Complainant. Prior panels have held that a respondent’s use of a domain name to offer similar and competing services, which are likely to confuse consumers into believing that the complainant is affiliated with the website, shows bad faith use and registration. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). This Panel therefore finds that Respondent is using the <zcreativegroup.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent was aware of Complainant when Respondent registered the disputed domain name less than three months ago. Complainant asserts that its brand is well known throughout the United States in the field of creative design, website development, branding, and multimedia services. Complainant alleges that its own website comes up first in a Google search for “ZCreative.” See Complainant’s Annex. Therefore, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of Complainant’s marks and Complainant's rights therein. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zcreativegroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 17, 2013.
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