Zappos.com, Inc v. Turvill Consultants
Claim
Number: FA0501000404546
Complainant is Zappos.com, Inc. (“Complainant”), represented
by Seán F. Heneghan, Esq., 31 Reading Hill Avenue, Melrose, MA
02176. Respondent is Turvill Consultants (“Respondent”), 265
Port Union Rd., 15525, Scarborough, ONT M1C4Z7, Canada.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwzappos.com>, registered with Moniker
Online Services, 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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
14, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 18, 2005.
On
January 17, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <wwwzappos.com> is
registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services, Inc. has verified that
Respondent is bound by the Moniker Online Services, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
January 19, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 8, 2005 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@wwwzappos.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 12, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Honorable Paul A. Dorf (Ret.) 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." 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 makes the following assertions:
1. Respondent’s <wwwzappos.com>
domain name is confusingly similar to Complainant’s ZAPPOS.COM mark.
2. Respondent does not have any rights or legitimate
interests in the <wwwzappos.com> domain name.
3. Respondent registered and used the <wwwzappos.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Zappos.com, Inc., has operated a popular online shoe store since 1999. Complainant has registered the ZAPPOS.COM
mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No.
2,791,052 issued December 9, 2003).
Complainant
initiated a UDRP proceeding against Respondent in January 2004 and the Panel
decided in Complainant’s favor. See
Zappos.com, Inc. v Turvill Consultants Ltd., FA 227655 (Nat. Arb. Forum
Mar. 4, 2004).
Soon after the
decision was issued, the <wwwzappos.com> domain name was
transferred to Complainant. However, in
August 2004, Complainant unknowingly allowed the <wwwzappos.com>
domain name registration to expire.
Several days after the domain name registration expired, Respondent once
again registered the <wwwzappos.com> domain name. Respondent’s domain name resolves to a
website that features pornographic material as well as links and pop-up
advertisements for various commercial pornographic websites.
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."
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.
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.
Complainant has
established rights in the ZAPPOS.COM mark through registration of the mark with
the USPTO. See Men’s Wearhouse, Inc.
v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark
law, registered marks hold a presumption that they are inherently distinctive
and have acquired secondary meaning.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Domain
names that contain third-party marks in their entirety and merely affix the
prefix “www” to the marks have consistently been found to be confusingly
similar to the marks under the Policy.
In this case, the disputed domain name contains Complainant’s ZAPPOS.COM
mark in its entirety, along with the prefix “www.” Consequently, the disputed
domain name is confusingly similar to Complainant’s mark under Policy ¶
4(a)(i). See Marie Claire Album v.
Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters
"www" are not distinct in the "Internet world" and thus
Respondent 's <wwwmarieclaire.com> domain name is confusingly similar to
Complainant's MARIE CLAIRE trademark); see also Dana Corp. v. $$$ This
Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002)
(finding Respondent's <wwwdana.com> domain name confusingly similar to
Complainant's registered DANA mark because Complainant's mark remains the
dominant feature).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830
(Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the
Panel is free to make inferences from the very failure to respond and assign
greater weight to certain circumstances than it might otherwise do); 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 has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <wwwzappos.com> domain name
pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
not using the disputed domain name in connection with 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 Respondent’s domain name is
confusingly similar to Complainant’s mark and diverts Internet users to a
commercial website featuring explicit and pornographic material. See ABB Asea Brown Boveri Ltd. v. Quicknet,
D2003-0215 (WIPO May 26, 2003) (stating that the fact that the “use of the
disputed domain name in connection with pornographic images and links tarnishes
and dilutes [Complainant’s mark]” was evidence that Respondent had no rights or
legitimate interests in the disputed domain name); see also Target Brands, Inc.
v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002)
(“Misdirecting Internet traffic by utilizing Complainant’s registered mark [in
order to direct Internet users to an adult-oriented website] does not equate to
a bona fide offering of goods or services . . . nor is it an example of
legitimate noncommercial or fair use of a domain name . . . Respondent was
merely attempting to capitalize on a close similarity between its domain name
and the registered mark of Complainant, presumably to gain revenue from each
Internet user redirected to the pornographic website.”).
Furthermore,
there is nothing in the record to indicate that Respondent is commonly known by
the <wwwzappos.com> domain name or is otherwise authorized to
register domain names featuring Complainant’s ZAPPOS.COM mark. Thus, the Panel concludes that Respondent
lacks rights and legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name); see
also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail").
Moreover, the
fact that Complainant had previously held the <wwwzappos.com> domain
name registration and has mistakenly allowed it to expire is further evidence
that Respondent lacks rights and legitimate interests in the domain name under
Policy ¶ 4(a)(ii). See Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that Complainant’s prior registration of the same domain name is a
factor in considering Respondent’s rights or legitimate interest in the domain
name); see also Edmunds.com, Inc. v. Ult. Search Inc.,
D2001-1319 (WIPO Feb. 1, 2002) (finding that Respondent could not rely on
equitable doctrines under the Policy to defend its registration of the disputed
domain name after the registration was inadvertently permitted to lapse by
Complainant, noting that “Respondent was aware of the Complainant’s well-known
business and its mark and intended to exploit the mark”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is capitalizing on the goodwill of the ZAPPOS.COM mark by using the disputed
domain name to divert Internet users to a commercial pornographic website. Since the disputed domain name contains
Complainant’s mark, a consumer searching for Complainant could become confused
as to Complainant’s affiliation with the resulting website. Therefore, Respondent’s opportunistic use of
the disputed domain name represents bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site to its own
website for commercial gain).
Additionally,
Respondent’s tarnishing use of the <wwwzappos.com>
domain name to redirect Internet
users to an adult-oriented website is further evidence of bad faith pursuant to
Policy ¶ 4(a)(iii). See MatchNet
plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the
association of a confusingly similar domain name with a pornographic website
can constitute bad faith); see also
Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that
absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith).
Furthermore, the
fact that Respondent’s <wwwzappos.com> domain name is merely a
typosquatted variation of Complainant’s ZAPPOS.COM mark is evidence that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(a)(iii). See Black &
Decker Corp. v. Khan, FA 137223
(Nat. Arb. Forum Feb. 3, 2003) (finding the <wwwdewalt.com> domain name
was registered to “ensnare those individuals who forget to type the period
after the “www” portion of [a] web-address,” evidence that the domain name was
registered and used in bad faith); see also Canadian Tire Corp., Ltd. v.
domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May
22, 2003) (“The absence of a dot between the ‘www’ and ‘canadiantire.com’ [in
the <wwwcanadiantire.com> domain name is] likely to confuse Internet
users, encourage them to access Respondent’s site” and evidenced bad faith
registration and use of the domain name).
Moreover, the
fact that Complainant previously held the domain name registration but
mistakenly allowed the registration to expire is evidence that Respondent
registered and used the <wwwzappos.com> domain name in bad faith
pursuant to Policy ¶ 4(a)(iii). See InTest Corp. v. Servicepoint, FA 95291
(Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been
previously used by Complainant, subsequent registration of the domain name by
anyone else indicates bad faith, absent evidence to the contrary); see also BAA plc v. Spektrum Media Inc., D2000-1179
(WIPO Oct. 17, 2000) (finding bad faith where Respondent took advantage of
Complainant’s failure to renew a domain name).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <wwwzappos.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
February 28, 2005
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