Zoller IP Holdings, LLC v. Domain Admin
Claim
Number: FA0509000551395
Complainant is Zoller IP Holdings, LLC (“Complainant”),
represented by Joel B. Rothman of Rutherford Mulhall, P.A.,
2600 North Military Trail, Fourth Floor, Boca Raton, FL, 33431-6348. Respondent is Domain Admin (“Respondent”), 536 Leavenworth St., San Francisco,
CA, 94109.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <zantrex.org>, registered with Wild
West Domains.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically September
1, 2005; the National Arbitration Forum received a hard copy of the Complaint September
1, 2005.
On
September 1, 2005, Wild West Domains confirmed by e-mail to the National
Arbitration Forum that the <zantrex.org> domain name is registered
with Wild West Domains and that Respondent is the current registrant of the
name. Wild West Domains verified that
Respondent is bound by the Wild West Domains registration agreement and thereby
has agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
September 7, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 27, 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@zantrex.org by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
October 3, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <zantrex.org>, is confusingly similar to Complainant’s
ZANTREX-3 mark.
2. Respondent has no rights to or legitimate
interests in the <zantrex.org> domain name.
3. Respondent registered and used the <zantrex.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Zoller IP Holdings, LLC, owns and licenses the rights to the ZANTREX-3 mark for
use in connection with the marketing and sale of dietary supplements. Complainant registered the ZANTREX-3 (Reg.
No. 2,959,351 issued June 7, 2005, filed January 13, 2003) mark with the United
States Patent and Trademark Office (“USPTO”).
Respondent,
Domain Admin, registered the <zantrex.org> domain name April 11,
2005. Respondent’s domain name resolves
to a website that features links to various competing and non-competing
commercial 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 will draw such
inferences as the Panel 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.”).
Paragraph 4(a)
of the Policy requires Complainant to 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
established with extrinsic proof in this proceeding that it has rights in the
ZANTREX-3 mark through registration with the USPTO. See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb.
18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes
Complainant's rights in the mark.”); see also Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Although Complainant’s trademark was not issued until June 7, 2005, the
effective date of registration dates back to the application’s filing date of
January 13, 2003. See Planetary
Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the
effective date of Complainant’s trademark rights date back to the application’s
filing date); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum
Oct. 27, 2003) (“As Complainant’s trademark application was subsequently
approved by the U.S. Patent and Trademark Office, the relevant date for showing
‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to
Complainant’s filing date.”).
The domain name
that Respondent registered, <zantrex.org>, is confusingly similar
to Complainant’s ZANTREX-3 mark, as the domain name omits a hyphen and the
number “3” from Complainant’s mark while adding the generic top-level domain
“.org.” The Panel finds that the <zantrex.org>
domain name retains the dominant features of Complainant’s mark rendering the
disputed domain name confusingly similar for purposes of Policy ¶ 4(a)(i). See Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling,
C-SPAN, is confusingly similar to the complainant's mark); see also
Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000)
(finding that a domain name which differs by only one letter from a trademark
has a greater tendency to be confusingly similar to the trademark where the
trademark is highly distinctive); see also Pomellato S.p.A v. Tonetti,
D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the
complainant’s mark because the generic top-level domain (gTLD) “.com” after the
name POMELLATO is not relevant).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant
established that it has rights to and legitimate interests in the mark
contained within the disputed domain name and alleged that Respondent has no
such rights or legitimate interests in the <zantrex.org> domain
name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent has no rights to
or legitimate interests in the disputed domain name. See G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where
Complainant asserts that Respondent has no rights to or legitimate interests
with respect to the domain name, it is incumbent on Respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is
using the <zantrex.org> domain name to redirect Internet users to
Respondent’s commercial website featuring goods that compete with Complainant’s
business. Respondent’s use of a domain
name that is confusingly similar to Complainant’s ZANTREX mark to redirect
Internet users interested in Complainant’s products to a website that offers
similar goods in competition with Complainant’s business is not a use in
connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK
mark to market products that compete with Complainant’s goods does not
constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is
not using the disputed domain name in connection with a bona fide offering of
goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see also Or. State Bar v. A Special Day, Inc.,
FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal
services and sale of law-related books under Complainant's name is not a bona
fide offering of goods and services because Respondent is using a mark
confusingly similar to the Complainant's to sell competing goods.”).
Moreover,
Respondent offered no evidence and no proof in the record suggests that
Respondent is commonly known by the <zantrex.org> domain name.
Respondent has not established rights or legitimate interests in the <zantrex.org>
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 the respondent was not commonly known by the mark
and never applied for a license or permission from the complainant to use the
trademarked name); see also Gallup Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding
that the respondent does not have rights in a domain name when the respondent
is not known by the mark); see also
Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5,
2001) (finding no rights or legitimate interests because respondent was not
commonly known by the disputed domain name and was not using the domain name in
connection with a legitimate or fair use).
The Panel finds
that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant
alleged that Respondent acted in bad faith in registering and using the
disputed domain name that wrongfully contains Complainant’s protected
mark. Respondent is using the <zantrex.org>
domain name, which is confusingly similar to Complainant’s ZANTREX-3 mark, to
redirect Internet users to Respondent’s commercial website featuring goods that
compete with Complainant’s business.
The Panel finds that such use constitutes disruption and is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding the respondent acted in bad faith by attracting Internet users to a
website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that respondent diverted business from complainant to a competitor’s
website in violation of Policy ¶ 4(b)(iii)).
The proof
supports an inference that Respondent receives click-through fees for diverting
Internet users to a competing website.
Because Respondent’s domain name is confusingly similar to Complainant’s
ZANTREX-3 mark, Internet users accessing Respondent’s domain names may become
confused as to Complainant’s affiliation with the resulting website.
Respondent’s use of the <zantrex.org> domain name constitutes 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 the
respondent profits from its diversionary use of the complainant’s mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the 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 the respondent directed
Internet users seeking the complainant’s site to its own website for commercial
gain).
The Panel finds
that Complainant satisfied 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 <zantrex.org> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 17, 2005.
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