DECISION

 

zulily, llc v. Domain Customer 28253 / Whois Protection Service LTD

Claim Number: FA1708001744296

PARTIES

Complainant is zulily, llc (“Complainant”), represented by Aaron E. Millstein of K&L Gates LLP, Mass., USA.  Respondent is Domain Customer 28253 / Whois Protection Service LTD (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zulily.net> (‘the Domain Name’), registered with PSI-USA, Inc. dba Domain Robot.

 

PANEL

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.

 

Dawn Osborne of Palmer Biggs IP  as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 11, 2017; the Forum received payment on August 11, 2017.

 

On August 16, 2017, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <zulily.net> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name.  PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 August 18, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2017 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@zulily.net.  Also on August 18, 2017, 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 September 12, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

 Complainant’s contentions can be summarised as follows:

 

Complainant is a leading on line international retailer. Complainant announced its business in December 2009 and since January 2010 Complainant has continuously used the ZULILY trade mark in relation to its services and uses zulily.com as the primary way it sells to consumers.

 

Complainant owns, inter alia, US registered trade marks, including the ZULILY word mark registered for clothing and retail services related to the same, registered since 2010.

 

The Domain Name is identical to Complainant’s well known ZULILY mark and is substantially identical to and/or confusingly similar to Complainant’s domain name.

 

Respondent is not affiliated with and has not been granted any licence or permission to use Complainant’s ZULILY mark.

 

Respondent has no rights or legitimate interests in the Domain Name. Respondent has not been known by the Domain Name.

 

The Domain Name resolves to a web site that contains a hyperlink list featuring links to competitors of Complainant and other unrelated third parties.

 

The Domain Name was registered and is used in bad faith. While the Domain Name was registered originally in 2009 by Dan Goldstein it was transferred twice in 2015. By October 2015 when the Domain Name was acquired by the current registrant Complainant had already established clear rights in ZULILY through extensive use and registration. (In any event while not strictly relevant to this dispute the Domain Name was registered initially by a third party in 2009 after Complainant announced its name.)

 

Operating the Domain Name to host pay per click sponsored links that profit Respondent is bad faith under Policy 4 (b)(iv) as designed to capitalise on customer confusion on the Internet.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant owns, inter alia, US registered trade marks including ZULILY,  that includes the ZULILY word mark registered for clothing and retail services related to the same, registered since 2010.

 

The Domain Name transferred to the current registrant in 2015 resolves to a web site that contains a hyperlink list featuring links to competitors of Complainant and other unrelated third parties. The page attached to the Domain Name contains the statement ‘Buy this Domain’.

 

DISCUSSION

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:

 

 

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(f), 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 (Forum July 31, 2000) (holding that 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 and/or Similar

 

Complainant is a provider of on line retail services and is the owner of the ZULILY trademark in the United States, with first use in commerce recorded as 2010.

 

The Domain Name consists of a name identical to Complainant's ZULILY registered mark and the gTLD.net.  The gTLD .net when it does not form part of Complainant’s trade mark and is merely there as a generic and functional element of a domain name does not serve to distinguish the domain name from Complainant’s mark. See Textron Innovations Inc. v Textron Sistemi di Fisaggio SRL, FA 1732602 (Forum July 6, 2017).

 

As such the Panel finds that the Domain Name is confusingly similar to Complainant’s mark and Complainant has satisfied the first limb of the Policy. 

 

Rights or Legitimate Interests

 

Respondent does not appear to be commonly known by the Domain Name and Complainant has not licensed or authorised Respondent to use the ZULILY mark. 

 

It is clear from the evidence that Respondent has used the sites attached to the Domain Name to promote goods and services in competition with those of Complainant. The content of the sites attached to the Domain Name indicates that Respondent was aware of the significance of the name "ZULILY" at the time of registration. Respondent’s usage is not fair as the site offering links to competing services does not make it clear that there is no commercial connection with Complainant. The Panel finds this use confusing. As such it cannot amount to the bona fide offering of goods and services.

 

Respondent has not answered this Complaint substantively and has not provided any explanation why they have used Complainant’s name to promote competing goods and services. Use for hyperlinks is commonly held not to amount to a bona fide offering of goods and services. See Danbyg Ejendomme A/S v lb Hansen/guercotti, FA 1504001613867 (Forum June 2, 2015). As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

 

The content of Respondents’ web page suggests that they were aware of Complainant’s rights at all relevant times. The Domain Name was transferred to the existing registrant in 2015, five years after first use by Complainant of its distinctive ZULILY mark.  Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to their website by creating a likelihood of confusion with Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site sufficient to satisfy paragraph 4 (b)(iv) of the Policy. See AltaVista Co. v Krotons, D2000-1091 (WIPO Oct 25, 2000).This would also appear to be disruptive in a competitive way sufficient to satisfy 4 (b) (iii) of the Policy. See St Lawrence Univ. v Nextnet Tech, FA 881234 (Forum Feb 21, 2007). As such, there is no need to consider any additional possible grounds for bad faith.

 

As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <zulily.net> domain name be TRANSFERRED from Respondent to Complainant.

 

Dawn Osborne, Panelist

Dated:  September 25, 2017