Zipcar, Inc. v. zang chengdu / zangchengdu
Claim Number: FA1508001635455
Complainant is Zipcar, Inc. (“Complainant”), represented by Lauren J. Arnold of Nixon Peabody LLP, District of Columbia, USA. Respondent is zang chengdu / zangchengdu (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zipcarchina.com>, registered with eName Technology Co., Ltd.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2015; the Forum received payment on August 28, 2015.
On August 30, 2015, eName Technology Co., Ltd. confirmed by e-mail to the Forum that the <zipcarchina.com> domain name is registered with eName Technology Co., Ltd. and that Respondent is the current registrant of the name. eName Technology Co., Ltd. has verified that Respondent is bound by the eName Technology Co., Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 2015 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@zipcarchina.com. Also on September 8, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On October 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant uses the ZIPCAR mark in connection with its business as a leading car sharing company. Complainant has rights in the ZIPCAR mark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,507,028, registered November 13, 2001). Respondent’s disputed domain <zipcarchina.com> is confusingly similar to Complainant’s ZIPCAR mark. Respondent’s domain merely adds the geographic term “China” and the generic top-level domain “.com,” which are not sufficient to differentiate the domain from Complainant’s mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been authorized, sponsored, or been affiliated with Complainant in anyway, and there is no indication that Respondent has been commonly known by the disputed domain name. Further, Respondent’s use of the disputed domain name, to resolve to a website that mimics Complainant’s website and prominently displays Complainant’s trademarks, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain name in bad faith. Respondent’s domain clearly evinces passing off as Complainant in a manner that confuses and attracts internet users and does so for commercial gain. In addition, Respondent had knowledge of Complainant’s ZIPCAR mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was created on November 24, 2011.
As the Complainant has failed to file a Response in this matter, the Panel shall make its determination based on the reasonable and uncontroverted allegations of the Complainant. Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s famous mark ZIPCAR, that the Respondent has no rights or legitimate interests in or to the disputed domain name, and that the Respondent has engaged in bad faith use and registration of the disputed domain name.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
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 uses the ZIPCAR mark in connection with its business as a leading car sharing company. Complainant claims to have rights in the ZIPCAR mark based on registration of the mark with the USPTO (e.g., Reg. No. 2,507,028, registered November 13, 2001). The registration of a mark with the USPTO adequately demonstrates rights in that mark. The Panel, therefore, finds under Policy ¶ 4(a)(i) that Complainant has rights in the ZIPCAR mark.
Complainant argues that Respondent’s disputed <zipcarchina.com> domain name is confusingly similar to the ZIPCAR mark. Respondent’s domain differs from the ZIPCAR mark through the addition of the geographic term “China” and the gTLD “.com.” Panels have held that adding a geographic term to a mark does not distinguish a domain name from a mark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Panels have also routinely held that the inclusion of the gTLD “.com” is irrelevant when analyzing confusing similarity under Policy ¶ 4(a)(i). See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel therefore concludes that under Policy ¶ 4(a)(i) Respondent’s <zipcarchina.com> domain name is confusingly similar to the ZIPCAR mark.
Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name. In connection with this contention, Complainant claims that Respondent has not been authorized to use the ZIPCAR mark, been affiliated with Complainant, or been commonly known by the disputed domain name. WHOIS information indicates that Respondent registered the <zipcarchina.com> domain name using the name “zang chengdu,” which does not appear to resemble the disputed domain name. See Compl., at Amended Annex 5. When a respondent is not commonly known by a disputed domain name based on WHOIS information and lacks of authorization from a complainant, it fails to establish that it is commonly known by the disputed domain name.
Therefore, the Panel determines that Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Complainant argues that Respondent is using the disputed domain name to pass itself off as Complainant which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s <zipcarchina.com> domain name resolves to a website that prominently features the ZIPCAR mark, uses a color scheme similar to Complainant’s website, and makes statements suggesting an affiliation between Respondent and Complainant. See Compl., at Amended Annexes 6 & 11. Such web site even claims, in English, that Complainant’s services may be located in North America.
The Panel concludes that Respondent’s apparent passing off behavior is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed <zipcarchina.com> domain name and, therefore, it does not have any rights or legitimate interests in or to the disputed domain name.
Complainant asserts that Respondent registered and is using the disputed <zipcarchina.com> domain name in bad faith. Complainant claims that Respondent’s use of the disputed domain name demonstrates a bad faith attempt to attract and confuse internet users for commercial profit. Respondent’s domain name prominently features the ZIPCAR logo and elements of the website that resolve from the domain are reminiscent of Complainant’s <zipcar.com> domain name. See Compl., at Amended Annexes 6 & 11. Further, Respondent’s disputed domain name purportedly offers commercial services that intersect with Complainant’s legitimate business. See Compl., at Amended Annex 11, p. 10. It is bad faith under Policy ¶ 4(b)(iv) to register a domain name that gives the impression of affiliation with a complainant for commercial gain. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
Accordingly, the Panel finds that Respondent’s use of the <zipcarchina.com> disputed domain name demonstrates bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant further argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the ZIPCAR mark. Complainant argues that Respondent's attempts to pass itself of as Complainant at the resolving website and offering of competing products indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights or it would not have so slavishly copied the Complainant’s site.
Therefore, the Panel determines that Respondent registered the disputed domain name in bad faith under 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 <zipcarchina.com> domain name transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: October 2, 2015
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