Zimmer Holdings, Inc. v. Hevin Nunez / Domain Privacy Service / IPOWER / ReadyHosting
Claim Number: FA1309001520986
Complainant is Zimmer Holdings, Inc. (“Complainant”), represented by Douglas A. Rettew of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is Hevin Nunez / Domain Privacy Service / IPOWER / ReadyHosting (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <hr-zimmer.co>, registered with Tucows.com Co.
The domain names at issue are <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com>, registered with Domain.com, LLC.
The domain name at issue is <hr-zimmer.com>, registered with FastDomain, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2013; the National Arbitration Forum received payment on September 23, 2013.
On September 24, 2013, Tucows.com Co. confirmed by e-mail to the National Arbitration Forum that the <hr-zimmer.co> domain name is registered with Tucows.com Co. and that Respondent is the current registrant of the name. Tucows.com Co. has verified that Respondent is bound by the Tucows.com Co. 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 September 24, 2013, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names are registered with Domain.com, LLC and that Respondent is the current registrant of the names. Domain.com, LLC has verified that Respondent is bound by the Domain.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 September 25, 2013, FastDomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <hr-zimmer.com> domain name is registered with FastDomain, Inc. and that Respondent is the current registrant of the name. FastDomain, Inc. has verified that Respondent is bound by the FastDomain, 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 October 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 22, 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@hr-zimmer.co, postmaster@hr-zimmer.com, postmaster@contact2-zimmer.com, postmaster@mail-zimmer.com, and postmaster@zimmer-hr.com. Also on October 2, 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 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <hr-zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com>, domain names, the domain names at issue, are confusingly similar to Complainant’s ZIMMER mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and used the domain names at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” It appears that the registrant of each of the domain names is the same entity because all five domain names have been used in connection with the same Internet “phishing” scam intended to recruit “money mules” to launder money under the guise of offering employment with Complainant.
Complainant, Zimmer Holdings, Inc., is a global leader in musculoskeletal care and designs, develops, manufactures, and markets orthopedic reconstructive, spinal and trauma devices, biologics, dental implants, and related surgical products. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ZIMMER mark (e.g., Reg. No. 3,303,411, registered October 2, 2007). The registrants of each of the domain names are the same entity because all five domain names have been used in connection with the same Internet “phishing” scam intended to recruit “money mules” to launder money under the guise of offering employment with Complainant. The domain names are confusingly similar to Complainant’s ZIMMER mark because they each comprise that mark in its entirety, along with generic terms such as “mail” or “hr”, and the non-distinguishing top-level domains (“TLD”) “.com” or “co.”
Respondent is not, and has not been, commonly known by the domain names. Respondent’s e-mails fraudulently claim and appear to be from Complainant’s human resources personnel. The registration and use of the domain names to contact and recruit individuals for a money-laundering scam does not, and cannot, constitute a bona fide offering of goods or services.
Respondent is unfairly disrupting Complainant’s business, tarnishing the ZIMMER mark and duping consumers into parting with their hard-earned money. Respondent uses the domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its ZIMMER mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s e-mails that fraudulently claim and appear to be from Complainant’s human resources personnel in order to further Respondent’s scam. Respondent registered and is using the <zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names to contact and recruit individuals for a money-laundering scam. Respondent had knowledge of Complainant’s rights in the ZIMMER marks when it registered and used the domain names on various dates between October, 2012, and February, 2013.
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 is a global leader is musculoskeletal care and designs, develops, manufactures, and markets orthopedic reconstructive, spinal and trauma devices, biologics, dental implants, and related surgical products. Complainant is the owner of trademark registrations with the USPTO for the ZIMMER mark (e.g., Reg. No. 3,303,411, registered October 2, 2007). See Exhibit 7. Respondent appears to reside within the United States or Canada. However, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent operates, so long as it establishes rights 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). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), the panel held that “As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).” Therefore, the Panel determins that Complainant’s registration of the ZIMMER mark with the USPTO sufficiently evidences its rights in the mark under Policy ¶ 4(a)(i).
Respondent’s <hr-zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names are confusingly similar to Complainant’s ZIMMER mark because they each comprise the ZIMMER mark in its entirety, along with generic terms such as “mail” or “hr.” In addition to adding the generic terms “mail” or “hr” to the <hr-zimmer.co>, <hr-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names, Respondent adds the generic term “contact” and the number “2” to the <contact2-zimmer.com> domain name. Nonetheless, Respondent’s addition of a generic term or number to Complainant’s mark does not distinguish the domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark). Respondent adds a hyphen to Complainant’s ZIMMER mark in the <hr-zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names. The addition of a hyphen is inconsequential to a Policy ¶ 4(a)(i) analysis. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Lastly, Respondent adds the non-distinguishing top-level domains (“TLD”) “.com” or “.co” to its ZIMMER mark in the domain names. The Panel notes that “.com” is a generic top-level domain (“gTLD”) while “.co” is a country-code top-level domain (“ccTLD”) and determines that Respondent’s addition of a gTLD or ccTLD to Complainant’s mark in its domain names does not negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Thus, Respondent’s <hr-zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names are confusingly similar to Complainant’s ZIMMER mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Nothing in the WHOIS information or the records demonstrates that Respondent is commonly known by any of the <hr-zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names. The WHOIS information indicates that “Hevin Nunez / Domain Privacy Service / IPOWER / ReadyHosting” is the registrant of the disputed domain names. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as respondent was not authorized to register domain names featuring complainant’s mark and failed to submit evidence that it is commonly known by the domain name. Accordingly, Respondent is not commonly known by the <zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names under Policy ¶ 4(c)(ii).
Respondent’s e-mails fraudulently claim and appear to be from Complainant’s human resources personnel. The <zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names provide employment applications, job descriptions, and labor agreements for Internet users to apply to jobs for Complainant’s business. Prior panels have held that a respondent’s use of a domain name to pass itself off as the complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Accordingly, Respondent’s attempt to pass itself off as the human resources department for Complainant does not constitute a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Respondent’s registration and use of the <zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names to contact and recruit individuals for a money-laundering scam does not, and cannot, constitute a bona fide offering of goods or services. Respondent’s disputed domain names resolve to employment applications asking for Internet users’ personal information. In Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010), the panel found that “Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).” Accordingly, Respondent’s use of the disputed domain names to phish for personal information 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).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is unfairly disrupting Complainant’s business, tarnishing the ZIMMER mark and duping consumers into parting with their hard-earned money. The <zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names are used by Respondent to pass itself off as Complainant so it may phish for personal information from Internet users through employment applications, job descriptions, and labor agreements. The Panel finds that this passing off is essentially competitive because it is founded on the intent to convince Internet users that Respondent is associated with Complainant and this inevitably pulls consumers of Complainant’s away from Complainant’s business and to Respondent’s offerings for purportedly-branded-ZIMMER jobs. Therefore, the Panel finds disruption pursuant to Policy ¶ 4(b)(iii).
Respondent uses the <zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant and its ZIMMER mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s e-mails that fraudulently claim and appear to be from Complainant’s human resources personnel in order to further Respondents’ scam. Respondent’s <zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names provide employment applications, job descriptions, and labor agreements for Internet users to apply to jobs for Complainant’s business. Complainant asserts that several individuals throughout Europe have contacted Complainant, forwarding falsified e-mails they received from Respondent, showing that Respondent impersonated Complainant’s human resources personnel. The Panel finds that Respondent is using the disputed domain names to attempt to pass itself off as Complainant and holds that Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Further, prior panels have held that a respondent’s use of a domain name to phish for personal or financial information demonstrates bad faith use and registration. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining 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). Therefore, Respondent’s use of the <zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names to phish for personal or financial information evidences bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Respondent had knowledge of Complainant’s rights in the ZIMMER marks when the disputed domain names were registered, because Respondent uses the domain names to forward fake pre-employment documents with graphics that copy Complainant’s distinctive “Z” logo. Accordingly, Respondent’s use of Complainant's “Z” logo on its domain names, clearly indicates that Respondent had actual knowledge of the mark and Complainant's rights. Thus, 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).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hr-zimmer.co>, <hr-zimmer.com>, <contact2-zimmer.com>, <mail-zimmer.com>, and <zimmer-hr.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 3, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page