Zoro Tools, Inc. v. Park KyeongSook
Claim Number: FA1406001562430
Complainant is Zoro Tools, Inc. (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is Park KyeongSook (“Respondent”), South Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zorotols.com>, registered with Threadwalker.com, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 2, 2014; the National Arbitration Forum received payment on June 4, 2014.
On Jun 2, 2014, Threadwalker.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <zorotols.com> domain name is registered with Threadwalker.com, Inc. and that Respondent is the current registrant of the name. Threadwalker.com, Inc. has verified that Respondent is bound by the Threadwalker.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 June 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2014 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@zorotols.com. Also on June 5, 2014, 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 1, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
The Complainant owns the ZORO TOOLS Trademarks and makes extensive use of them such that they have become famous.
Complainant Owns The Marks Complainant is the owner of the distinctive and well known ZORO TOOLS trademark and its corresponding logo (the “Marks”). At least as early as 1927, Complainant commenced use of the Marks in connection with the production, promotion, sale and distribution of facilities, maintenance, repair and operating supplies (including industrial sealants, and hand tools). Since that time, Complainant has continually used the Marks in commerce.
The Marks Are Extensively Used, Promoted and Protected. Complainant is a leading supplier of tools, hardware, and related supplies and accessories to building contractors, plumbers, electricians, air conditioning specialists, auto repair shops, material handlers, and others. It was launched in 2011 as a wholly-owned subsidiary of the W.W. Grainger company which itself, in 1967, became a publicly traded company whose stock is currently listed on the Chicago and New York Stock Exchanges under the ticker symbol GWW.
Complainant extensively promotes its ZORO TOOLS Marks and uses them on packaging for Complainant’s goods, on Complainant’s catalogs, on websites featuring Complainant’s goods, and in advertisement and other promotional efforts such as Complainant’s appearance at trade shows and its sponsorship of a Porsche race car team. Complainant also maintains an active social media presence with pages on sites such as YouTube.com, Facebook.com, LinkedIn.com, etc. and news stories about Complainant have been featured in outlets such as Yahoo Finance, real estate journals, employment sites, and specialty press in the tool industry.
Complainant generates significant sales revenue as a result of the advertising and marketing it conducts on its <Zoro.com> website (which may also be reached through the domain <ZoroTools.com>) and <ZoroCanada.com>. Through these sites, Complainant provides information to customers and prospective customers on its over 400,000 products and allows visitors to order products which can be shipped to small businesses, homes, or even worksites. As a result of Complainant’s efforts to promote the Marks, the Marks serve to identify and indicate the source of Complainant’s goods and services to the consuming public, and to distinguish its goods and services from those of others. The Marks have become well-known to, and widely recognized by consumers.
Complainant’s ZORO TOOLS marks are carefully protected through registration and enforcement. Amongst others, Complainant owns Trademark Registrations for the Marks in the United States and has filed applications in other countries. These include the following:
ZORO TOOLS ICs 16 and 35 (see below) 4106600 (US) 28-Feb-2012 (Filed 23-Nov-2010)
IC 016. US 002 005 022 023 029 037 038 050. G & S: Catalogs in the field of industrial, institutional, commercial, and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices. FIRST USE: 20110511. FIRST USE IN COMMERCE: 20110511
IC 035. US 100 101 102. G & S: Telephone, on-line and mail order catalog services in the field of industrial, institutional, commercial and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices; computerized on-line ordering services by means of a computer modem or other electronic link-up, in the field of industrial, institutional, commercial and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices; procurement for others of industrial, institutional, commercial and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices; automated inventory control for customers in the field of industrial, institutional, commercial and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices; and providing relevant information and consulting services in connection therewith. FIRST USE: 20110511. FIRST USE IN COMMERCE: 20110511
ZORO TOOLS Logo ICs 16 and 35 (see below) 4258443 (US) 11-Dec-2012 (Filed 25-Apr-2011)
IC 016. US 002 005 022 023 029 037 038 050. G & S: Catalogs in the field of industrial, institutional, commercial, and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices. FIRST USE: 20120200. FIRST USE IN COMMERCE: 20120200
IC 035. US 100 101 102. G & S: Telephone, on-line and mail order catalog services in the field of industrial, institutional, commercial and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices; computerized on-line ordering services by means of a computer modem or other electronic link-up, in the field of industrial, institutional, commercial and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices; procurement for others of industrial, institutional, commercial and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices; automated inventory control for customers in the field of industrial, institutional, commercial and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices; and providing relevant information and consulting services in connection therewith. FIRST USE: 20110300. FIRST USE IN COMMERCE: 20110300
ZORO TOOLS Logo ICs 16 and 35 (see below) 4258444 (US) 11-Dec-2012 (Filed 25-Apr-2011)
IC 016. US 002 005 022 023 029 037 038 050. G & S: Catalogs in the field of industrial, institutional, commercial, and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices. FIRST USE: 20120200. FIRST USE IN COMMERCE: 20120200
IC 035. US 100 101 102. G & S: Telephone, on-line and mail order catalog services in the field of industrial, institutional, commercial and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices; computerized on-line ordering services by means of a computer modem or other electronic link-up, in the field of industrial, institutional, commercial and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices; procurement for others of industrial, institutional, commercial and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices; automated inventory control for customers in the field of industrial, institutional, commercial and janitorial equipment and supplies excluding pesticides, insecticides or other vermin devices; and providing relevant information and consulting services in connection therewith. FIRST USE: 20110300. FIRST USE IN COMMERCE: 20110300
ZORO TOOLS Catalogs in the field of industrial, institutional, commercial and janitorial equipment and supplies TMA876156 (Canada) 22-Apr-2014 (Filed 29-Nov-2010)
ZORO TOOLS Telephone, on-line and mail order catalog services in the field of industrial, institutional, commercial and janitorial equipment and supplies; computerized on-line ordering services by means of a computer modem or other electronic link-up, in the field of industrial, institutional, commercial and janitorial equipment and supplies; and providing relevant information in connection therewith. TMA876602 (Canada) 28-Apr-2014 (Filed 29-Nov-2010)
ZORO TOOLS ICs 9, 16, 35, and 42 (see below) Ser. No. 012696506 (CTM) Filed 14-Mar-2014 (Pending)
IC 09: Downloadable computer software and mobile application software used to browse a product catalog, review product availability and information and purchase products in the field of industrial, institutional, commercial and janitorial equipment and supplies; downloadable electronic catalogs in the field of industrial, institutional, commercial and janitorial equipment and supplies.
IC 16: Printed matter, publications, and catalogs in the field of industrial, institutional, commercial and janitorial equipment and supplies.
IC 35: Telephone ordering, on-line ordering and mail order catalog services in the field of industrial, institutional, commercial and janitorial equipment and supplies; retail and wholesale store services featuring industrial, institutional, commercial and janitorial equipment and supplies; computerized on-line ordering services in the field of industrial, institutional, commercial and janitorial equipment and supplies; automated inventory control for customers in the field of industrial, institutional, commercial and janitorial equipment and supplies; and providing relevant information and consulting services in connection with all of the foregoing.
IC 42: Providing a website featuring online non-downloadable software that enables users to browse a product catalog, review product availability and information and purchase products in the field of industrial, institutional, commercial and janitorial equipment and supplies; providing access by electronic means to catalogue and other information in the field of industrial, institutional, commercial and janitorial equipment and supplies and providing information relative to its use.
Respondent’s registration of the <ZoroTols.com> domain violates the Policy.
The <ZoroTols.com> domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s domain <ZoroTols.com> is confusingly similar, on its face, to Complainant’s registered and distinctive ZORO TOOLS trademarks. Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between Complainant and Respondent by Respondent’s use of the domain name <ZoroTols.com>.
It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name. See, W.W. Grainger, Inc. v. Private Registration (auc), NAF Claim No. FA0908001281960 (2009) (<gainger.com> held confusingly similar to ZORO TOOLS trademark). In DIRECTV, Inc v. Digi Real Estate Foundation, NAF Claim No. FA0702000914942 the Panel found that “Respondent’s <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant’s DIRECTV mark pursuant to Policy ¶4(a)(i), because Respondent’s domain names each contain Complainant’s mark in its entirety or are simply a misspelled variation of the DIRECTV mark.” In relation to a different domain owned by respondent, the Panel went on to hold that “Respondent’s <dishdirectv.com> domain name contains Complainant’s mark in its entirety and adds the generic word ‘dish.’ Prefixing ‘directv’ with the generic word ‘dish’ does not prevent a finding of confusingly similarity under Policy ¶4(a)(i).” The Panel held that all of the domains at issue are “likely to cause confusion among customers searching for Complainant’s goods and services.” Similarly, in Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211, the respondent used a minor misspelling of the complainant’s trademark leading the panel to find that “Respondent has chosen the Domain Name precisely to attract users who mistype the name of the complainant’s website.” Id. See also, Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., WIPO Case No. D2001-0075 (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
Similarly to the above-cited decisions, the Respondent in the present dispute initially attracts searchers to its website by using a nearly identical copy of Complainant’s Marks (merely omitting a letter “o” from the word “tools”) thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. This confusion is made all the worse by the fact that Complainant does, in fact, use the WebEx online meeting services of a company called Cisco Systems, Inc. Thus, the <ZoroTols.com> domain is clearly intended to cause confusion with Complainant’s use of the <Grainger.WebEx.com> website since it merely omits the dot between the words Grainger and Webex.
As reasoned in Athanasios, supra, even if searchers discover they are not at Complainant’s site, searchers may be led to believe that one of the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the <ZoroTols.com> website. As in Athanasios, Respondent here uses the Marks in its site’s domain name as well as in the title and body of its website. It only makes sense that if searchers see the Marks listed in the body of the <ZoroTols.com> web page and numerous links to other goods and services are also listed on that page, searchers will be confused and led to believe that, even if the goods and services are not those of Complainant, they are at least affiliated with, endorsed or sponsored by Complainant. This is apparent because the Marks are clearly used on the web page.
(b) Respondent has no rights or legitimate interest in the domain name <ZoroTols.com> Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <ZoroTols.com> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Through the use of a classic pay-per-click website, Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s pay-per-click website and then to other websites which are not associated with Complainant and, in some cases, are associated with Complainant’s competitors. ICANN panels have found that leading consumers who are searching for a particular business, to a site where the same or similar services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
Respondent is not commonly known by the name <ZoroTols.com> and so its actions do not fall within Policy ¶4(c)(ii). Upon information and belief, Respondent is not commonly known by the names ZORO or ZORO TOOLS nor does Respondent operate a business or other organization under this mark or name and does not own any trademark or service mark rights in the ZORO TOOLS name. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <ZoroTols.com> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the domain name to confuse and misleadingly divert consumers, or to tarnish the Marks. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Focus Do It All Group v. Athanasios Sermbizis, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s ZORO TOOLS goods and services, who used the domain name <ZoroTols.com>, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were in a directory of links to competitors and other goods and services. Such use cannot be considered fair. See, Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (“While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use. See for instance L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623.”)
Lastly, Respondent’s use has tarnished and diluted the Marks. Respondent has diminished consumers’ capacity to associate the Marks with the quality products offered under the Marks by Complainant by using the Marks in association with a directory site which provides links to numerous products and services not associated with or related to Complainant’s quality branded products. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded products, but also to products and services linked to a directory site over which Complainant has no quality control.
(c) Respondent Registered The Domain In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the Marks without consent from Complainant. Respondent was put on actual and constructive notice of Complainant’s rights in the Marks through Complainant’s longstanding and widespread use of its Marks and by the above-referenced Trademark Registrations which predate the creation date of <ZoroTols.com>. See, American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950 (“the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights….”). Therefore, Respondent knowingly and intentionally used the Marks in violation of Complainant’s rights in the Marks. Moreover, the content on Respondent’s website at <ZoroTols.com> reveals that Respondent has actual knowledge of the Marks and Complainant’s goods associated with the mark and is purposefully trading on the Marks.
Further, after Complainant sent a demand letter to Respondent on April 25, 2014, Respondent replied with an offer to sell the <ZoroTols.com> domain for US$3,000 claiming “If the dispute. Your clients will be more expensive.” Then, after this Complaint was served on Respondent, it replied to Complainant’s counsel with a reduced offer of US$1,300 (the exact amount of the NAF filing fee) stating “As you know, If we have a dispute. Yours will pay $ 1,300 to UDRP. I can not understand why the dispute.” It is axiomatic that offering to sell an infringing domain to a brand owner for a price far in excess of the registration cost, and particularly at a price specifically designed to avoid an enforcement action, is an obvious display of the Respondent’s bad faith. See, e.g., Bank of Ireland Securities Services Limited v. David Boissonnault, WIPO Case No. D2004-0352 (Respondent offered to sell the domain to complainant and “is apparently aware that the domain name is or would be valuable to Complainant.”); Martha Stewart Living Omnimedia. Inc. v. Josh Gorton, WIPO Case No. D2005-1109 “Respondent registered the disputed domain names primarily for the purpose of selling them to the Complainant for an amount greatly in excess of any documented out-of-pocket costs incurred by the Respondent and directly related to the domain names.”).
Respondent is obtaining commercial gain from its use of the <ZoroTols.com> website. This is a directory or “pay-per-click” website. When a searcher reaches the <ZoroTols.com> site, he or she is provided with a list of links to other websites, some of which lead to Complainant’s competitors. Upon information and belief, each time a searcher clicks on one of these search links, Respondent receives compensation from the various website owners who are linked through the <ZoroTols.com> website. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the directory site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, supra, (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein, the respondent registered the domain name <allaincebernstein.com>, which was almost identical to complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of Complainant. Id. The Panel inferred that the respondent received click-thru fees by directing users to various commercial websites through these links and found that the respondent’s use was for commercial gain and was a bad faith use of the domain name under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, supra. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from its operation of a pay-per-click site under the <ZoroTols.com> domain alone constitutes commercial gain. See AllianceBernstein, supra. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain name and website results in a commercial gain for others by placing links to competitors of Complainant and other individuals, groups or entities on its website. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were linked to the <ZoroTols.com> web page. Respondent’s use of the domain name is commercial because the various companies linked to the <ZoroTols.com> directory site benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, supra (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the <ZoroTols.com> domain, Respondent is entirely and solely responsible for the content of its website. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.”
Further evidence of Respondent’s bad faith in the present case is provided by the pattern of conduct in which Respondent has engaged involving cybersquatted domain names. In Clarins v. Park Kyeong Sook, WIPO Case No. D2014-0360, involving the same Respondent as in the present case, the Panelist found that “the Disputed Domain Name resolves to a website that contains hyperlinks to products and services, some of which compete with those of the Complainant.”. Id. It then went on to characterize this case as one of typosquatting and held that “domain names which resolve to landing pages containing pay-per-click links and generate revenue is in the appropriate circumstances further evidence of bad faith.” Id. The very similar circumstances of the present case (i.e., typosquatted domain resolving to a pay-per-click page with competitive links) shows that this is not the first time the Respondent has engaged in this sort of activity and that it’s pattern of such activity clearly shows its bad faith intent in registering and using the <Zorotols.com> domain.
Next, it must be noted that Respondent is a well-known cybersquatter and is engaged in a longstanding pattern of bad faith registration of domain names that are confusingly similar to trademarks in which the Respondent has no rights. At least 3 prior UDRP cases have been successfully brought against Respondent:
Case No. Domain(s) Case Name Status Decision Date
D2014-0360 WIPO carins.net Clarins v. Park Kyeong Sook Transferred 07-May-2014
D2014-0223 WIPO garantum.com Garantum Fondkommission Aktiebolag v. Park KyoungSook Transferred 10-Apr-2014
99700 NAF musicmatch.net Musicmatch, Inc. v. KyongSook Park Transferred 15-Nov-2001
These prior decisions against Respondent are highly relevant to the consideration of bad faith in the present case since they show the Respondent has engaged in a pattern of conduct designed to infringe upon the trademarks of others. In particular, in Clarins v. Park Kyeong Sook, the Panel found that “the Disputed Domain Name resolves to a website that contains hyperlinks to products and services, some of which compete with those of the Complainant.”. Id. It then went on to characterize this case as one of typosquatting and held that “domain names which resolve to landing pages containing pay-per-click links and generate revenue is in the appropriate circumstances further evidence of bad faith.” Id. See also, Target Brands, Inc. v. Guowei Hai Gui, NAF Claim No. FA1102001371811 (2011) wherein it was held that “Respondent has been a party to [and lost] previous UDRP decisions … [and] [t]his is evidence that Respondent is a serial cyber-squatter, which in turn demonstrates that Respondent registered and uses the <directtvrebates.com> domain name in bad faith and thus violated the Policy; Time Warner Inc. v. mga enterprises limited, NAF Case No. 1426479 (2012) (Based on prior adverse UDRP decisions against respondent, “[t]he Panel finds that Respondent has engaged in a pattern of infringing domain name registrations indicating bad faith registration and use of the disputed domain names under Policy ¶4(b)(ii).”).
Finally, as more fully set forth above, Respondent uses the Marks intentionally in its domain name to attract Internet searchers by creating a likelihood of confusion with Complainant’s ZORO TOOLS Marks and such intentional action, alone, is strong evidence of its bad faith. See, e.g., DIRECTV, Inc v. Digi Real Estate Foundation. Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <iredale.com> domain in bad faith..
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 rights in the ZORO TOOLS mark, used in connection with the production, promotion, sale and distribution of facilities, maintenance, repair and operating supplies. Complainant owns registrations for the ZORO TOOLS mark with the United States Patent & Trademark Office (“USPTO”) (e.g., Reg. No. 4,106,600 registered February 28, 2012). Respondent resides or operates in a different country than where Complainant holds its trademark registrations. However, all a complainant need do is show it has SOME rights, not that complainant has superior rights to the respondent. See 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). Based upon this evidence, Complainant has rights in the ZORO TOOLS mark within the meaning of Policy ¶4(a)(i) because Complainant holds valid registrations for the mark with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶4(a)(i)).
Complainant claims Respondent’s <zorotols.com> domain name is confusingly similar to Complainant’s ZORO TOOLS mark. The disputed domain merely removes the letter “o” from the world “tools” in Complainant’s mark. The disputed domain name also removes the space between the words in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.” First, having the disputed domain name differ from a trademark by a single letter is not normally sufficient to adequately distinguish the disputed domain name from the mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). Next, removing a space and adding a gTLD does not prevent a finding of confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). A space is a prohibited character in a domain name. Every domain name also requires a TLD (either a gTLD or a ccTLD). To hold otherwise would eviscerate the UDRP. Therefore, Respondent’s <zorotols.com> domain name is confusingly similar to Complainant’s ZORO TOOLS mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 Respondent does not have any rights or legitimate interests in the <zorotols.com> domain name. Respondent is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use its ZORO TOOLS mark in any way. The WHOIS record for the disputed domain name lists “Park KyeongSook” as the domain name registrant. Respondent does not contend otherwise. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the 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). Based upon this evidence, this Panel concludes Respondent is not commonly known by the <zorotols.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent is using the <zorotols.com> domain name to operate a pay-per-click website featuring links of Complainant’s competitors. The links include “Piezo Actuators & Valves,” “Howard Marten Fluid Tech,” and “Multiple Spindle heads.” In prior cases, panels have held that using a confusingly similar domain name to operate a pay-per-click website does not indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)). This Panel concurs. Therefore, Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii) because the disputed domain name resolves to a pay-per-click website featuring links of Complainant’s competitors.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent offered to sell the disputed domain name to Complainant for a price in excess of the registration cost, thus indicating bad faith under Policy ¶4(b)(i). Respondent initially offered to sell the disputed domain name to Complainant for $3,000. After the complaint was served on Respondent, Respondent lowered its offering price to $1,300, the exact amount of the NAF filing fee. All the while Respondent continued to point out settling was the cheaper and more certain alternative than a UDRP proceeding (which also happens to be true). In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) the panel concluded the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name. In this proceeding, Respondent has not explained its actions nor rebutted Complainant’s contentions. It seems clear Respondent’s offer to sell the disputed domain name, first for $3,000 and then for $1,300, both of which indicate bad faith pursuant to Policy ¶4(b)(i).
Complainant claims Respondent registered and is using the <zorotols.com> domain name in bad faith under Policy ¶4(b)(ii). Respondent has been ordered to transfer a disputed domain name in at least one other UDRP proceeding. See Clarins v. Park Kyeong Sook, D2014-0360 (WIPO May 7, 2014). This Panel does not believe defending prior proceedings should prejudice Respondent’s right to defend this proceeding (or to demand a decision on the merits of this case). To hold otherwise would encourage meritless cases being filed and settled to prevent a decision form being issued. This Panel declines to find bad faith under Policy ¶4(b)(ii), especially since Respondent has not prevented Complainant from reflecting its mark in a domain name.
Complainant claims Respondent is intentionally attempting to attract Internet users to the <zorotols.com> domain name by creating a likelihood of initial confusion with Complainant’s ZORO TOOLS mark. The <zorotols.com> domain name resolves to a pay-per-click website displaying links of Complainant’s competitors. The links include “Piezo Actuators & Valves,” “Howard Marten Fluid Tech,” and “Multiple Spindle heads.” In similar cases, panels have found the respondent to have violated Policy ¶4(b)(iv) regarding bad faith via attraction for commercial gain because the respondent used a confusingly similar domain name to attract Internet users and obtain revenue through click-through links. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”). This Panel concurs with that reasoning and finds Respondent registered and is using the <zorotols.com> domain name in bad faith under Policy ¶4(b)(iv) because Respondent is using the disputed domain name to operate pay-per-click website from which Respondent is presumed to derive some commercial benefit (even if only free website parking).
Complainant claims Respondent’s conduct constitutes typosquatting. In Liberty Mut. Ins. Co. v. Domain Park Ltd., FA 1189049 (Nat. Arb. Forum June 23, 2008), the panel defined typosquatting as the “registration of a disputed domain name that capitalizes on Internet users’ typographical errors.” The disputed domain name merely removes the letter “o” from the world “tools” in Complainant’s mark while leaving the rest of the mark intact. Past panels have found that typosquatting is evidence of bad faith under Policy ¶4(a)(iii). See Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶4(a)(iii).”). While typosquatting may be shorthand way to referring to the UDRP, the UDRP provides standards the parties must meet if they want to prove their case. Policy ¶4(a)(iii) requires the parties to be competitors. There has been no such showing here. Therefore, this Panel will not find bad faith registration and use on those grounds.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <zorotols.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, July 7, 2014
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