Zappos.com, Inc. v. RENATA Svensdotter
Claim Number: FA0601000624407
Complainant is Zappos.com, Inc. (“Complainant”), represented by Seán F. Heneghan, 31 Reading Hill Avenue, Melrose, MA 02176. Respondent is RENATA Svensdotter (“Respondent”), 400 Ball Park Ln, Lubbock, TX 79401.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <zapposshoes.com>, registered with Enom, 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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 10, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 13, 2006.
On January 10, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <zapposshoes.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 2, 2006 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@zapposshoes.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 8, 2006, 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." 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:
Respondent Renata Svensdotter (hereinafter “Respondent”)
apparently registered
the confusingly similar domain name ZAPPOSSHOES.COM with the registrar
eNom, Inc. on January 16, 2002, more than two years after Complainant had
adopted and began using the ZAPPOS.COM trademark. Respondent is currently using the ZAPPOSSHOES.COM domain
name in connection with the website of a direct competitor of Complainant’s
services.
Specifically, ZAPPOSSHOES.COM initially
directs a consumer to Complainant’s website at Zappos.com. However, the subject domain name then
triggers a ‘popup’ browser to Shoes.com when a consumer clicks on any
link within Zappos.com or when the consumer attempts to exit from Zappos.com. The services at Shoes.com are
identical to Complainant’s services, namely it is an online retail store
specializing in footwear.
In order to increase its presence on the Internet
and its on-line sales, the Complainant, along with its partner, Commission Junction, has established and
implemented its ‘Associates
Program’ (also called an affiliate program).
In late
summer of 2005 Complainant learned that the ZAPPOSSHOES.COM domain name had been registered with
Commission Junction as an affiliate member identified as "affiliate pid
1489224" and that affiliate commissions were being paid. In general, an affiliate program is an agreement
between two e-commerce websites whereby the owner of one e-commerce site (the
“affiliate”) advertises and provides a link to another e-commerce website. The
affiliate is paid a commission for every sale that is made by someone the
affiliate refers to the other e-commerce website. The Complainant’s affiliate program permits owners of e-commerce
websites to provide a link to the Zappos.com site in the form of a banner advertisement or text
link. If a customer of the e-commerce
site were to click on the link to Zappos.com and purchase a product from the website, the affiliate will be compensated
an agreed-upon sum.
Upon the discovery of ZAPPOSSHOES.COM,
Zappos engaged the expertise of Ben Edelman, well-known Web researcher, to
investigate the usage of the subject domain name. Mr. Endelman's
research report confirmed that the subject domain name immediately
redirected a Web user to Zappos.com via a Commission Junction
tracking link and then engaged a popup Web browser launching to Shoes.com
when the user clicked on any link within Zappos.com or
attempted to exit Zappos.com.
Complainant never authorized Respondent’s use
of Complainant’s trademark in a domain name nor is Respondent a
distributor of Complainant’s services. In fact, it is a breach of Complainant’s
affiliate program agreement for an affiliate to register a domain name that is
confusingly similar to Complainant’s trademarks and use said domain in
connection with the affiliate program. Complainant communicated with Commission
Junction to remove the ZAPPOSSHOES.COM from the affiliate program
and confirmation of said removal was received on October 13, 2005.
In addition, and in accordance with Complainant's
usual practice regarding third parties it believes are attempting to trade on
the name and good will of its valuable ZAPPOS.COM trademark, Complainant’s
legal counsel sent a cease and desist letter to Respondent on September 21,
2005, 2005, giving notice that Respondent's registration and use of ZAPPOSSHOES.COM
infringed and diluted its ZAPPOS.COM mark.
Complainant requested, among other things, that Respondent immediately
cease all use of the domain name and begin an immediate transfer of the domain
names.
When the Respondent did not respond to the September
21 letter and the subject domain name remained active, Complainant sent
another communication on October 26, 2005, noting also that Respondent’s registration
and use of ZAPPOSSHOES.COM is in violation of
Complainant’s affiliate program.
Respondent
did not respond to the October 26 communication either and the infringing
domain name is still active at the time of the filing of this Complaint. Furthermore, both hard copies of the demand
letters were returned to Complainant’s counsel’s office because they were
undeliverable.
In light of the facts discussed above, it is
abundantly clear that Respondent clearly registered and has used the ZAPPOSSHOES.COM
domain name in bad faith under UDRP.
Under Section 4(a) of the UDRP, an administrative
proceeding resulting in the transfer of the domain name to the Complainant is
required where (i) the domain name is identical or confusingly similar to the
trademark in which the Complainant has rights, (ii) the domain name holder has
no rights or legitimate interests in the domain, and (iii) the domain has been
registered and is being used in bad faith.
Under Section 4(b)(iv) of the UDRP, using a
domain name to intentionally attract, for commercial gain, Internet users to a
website, by creating a likelihood of confusion with the Complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of the website, shall
be evidence of bad faith registration and use of a domain name.
The facts and evidence presented in the Complaint
will show all of these activities have occurred in the present case and that
Respondent has intentionally, and in bad faith, registered the confusingly
similar ZAPPOSSHOES.COM.
1.
The Subject Domain Name Is Confusingly Similar To Trademarks In Which
Complainant Has Senior Rights
Complainant was founded in June 1999 and has since become one of the most successful
retail services on the Internet. Complainant’s Zappos.com website features dress, casual and
athletic shoes for men and women and a wide selection of styles from each brand
of footwear in every size, width, and color.
Included among the more than 300 brands of shoes are Dr. Martens, Birkenstock, Clarks,
Steve Madden, Ecco, Timberland and New Balance. Zappos.com provides
access to millions of pairs of shoes and enjoys the highest ranking of any
'pure-play' footwear retailer online.
Complainant’s website also includes feature name brand accessories,
including
handbags, purses and wallets. Indeed,
the Zappos.com website was recently named as one of the "Top
50 Websites of 2005" by Internet Retailer magazine.
Complainant has generated over $200 million in sales
since its inception, and has shipped shoes to well over 15,000 cities across
the United States. Through the Internet and
other media, Complainant has invested substantially in advertising and
additional promotion of its services offered under the cited trademarks, which
now includes a multi-million dollar yearly budget. Complainant uses a variety of advertising methods, including ad
placement in magazines and its successful affiliate partnership with Commission
Junction.
By virtue of the quality of its services, several
years of continuous use, and extensive advertising and promotion, the
ZAPPOS.COM trademark is well known to, and well regarded by, the consuming
public. Complainant has established
clear senior common law trademark rights in ZAPPOS.COM for the purposes of the
UDRP by the continuous use of the mark in commerce since July 1999. See British Broadcasting Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) [noting that the UDRP “does not
distinguish between registered and unregistered trademarks and service marks in
the context of abusive registration of domain names” and applying the UDRP to
“unregistered trademarks and service marks”]; see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO
May 7, 2001) [finding that the UDRP does not require that the mark be
registered in the country in which a Respondent operates. It is sufficient that a Complainant can
demonstrate a mark in some jurisdiction].
Complainant has also established additional rights
in ZAPPOS.COM through its registrations on the Principal Register of the U.S.
Patent & Trademark Office that incorporate the marks, namely U.S.
Registration Nos. 2,963,312, 2,791,052, 2,691,842 and 2,747,104. This evidence of trademark registrations
proves Complainant’s rights in the cited trademarks. See The Men’s
Wearhouse, Inc. v. Brian Wick, FA 117861 (NAF Sept. 16 2002) (“Under U.S.
trademark law, registered marks hold a presumption that they are inherently
distinctive and have acquired secondary meaning”).
Finally, this Forum has recognized Complainant’s
rights in its ZAPPOS.COM trademark in four previous UDRP proceedings (Zappos.com,
Inc. v. AAA Marketing World, FA 528209 (NAF September 20, 2005); Zappos.com, Inc. v. WhoisGuard
Protected, FA 408128 (NAF March 17, 2005); Zappos.com, Inc. v.
Turvill Consultants, FA 404546 (NAF February 28, 2005); and Zappos.com,
Inc. v. Turvill Consultants Ltd., FA 227655 (NAF March 4, 2004).
Turning to the subject domain name, ZAPPOSSHOES.COM
is nearly identical - and clearly confusingly similar to - Complainant’s
ZAPPOS.COM trademark. Specifically, ZAPPOSSHOES.COM is confusingly similar because it
includes Complainant’s mark and deviates from it only with the addition of the
generic or descriptive term “SHOES”.
There is a long line of Panel decisions that have found that the mere
addition of a generic or descriptive word to a trademark does not negate the
confusing similarity of Respondent’s domain name pursuant to Policy ¶4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (NAF Sept. 14, 2000)
[finding that combining the generic word “shop” with Complainant’s registered
mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid
the confusing similarity aspect of the ICANN Policy]; see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) [finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business].
Furthermore, when used in the context of virtually
identical services, ZAPPOSSHOES.COM is clearly confusingly similar to
Complainant’s
ZAPPOS.COM mark. Respondent is currently using ZAPPOSSHOES.COM
in connection with Zappos.com as well as with a website that offers
services that directly compete with Complainant, namely Shoes.com. There is, in fact, a substantial likelihood
that Complainant’s trademark ZAPPOS.COM, and the goodwill associated therewith,
was the reason Respondent registered ZAPPOSSHOES.COM. Sizeable traffic is generated from sites
associated with widely known marks, and it appears that Respondent sought to
take advantage of this circumstance.
Misguided consumers seeking Complainant’s website may be confronted
with Shoes.com, which offer services virtually identical as
those offered by Complainant. In
addition, the disputed domain name is so confusingly similar that a reasonable
Internet user would assume that ZAPPOSSHOES.COM is somehow connected to
Complainant’s well-established mark. See Treeforms, Inc. v. Cayne Indus.
Sales Corp., FA 95856 (NAF Dec. 18, 2000) [finding that confusion would
result when Web users, intending to access Complainant’s website, think that an
affiliation of some sort exists between the Complainant and Respondent, when in
fact, no such relationship would exist].
Clearly, the obvious similarity of the subject
domain name with Complainant’s senior trademark make it evident that ZAPPOSSHOES.COM
is confusingly similar to the long used ZAPPOS.COM mark and that is precisely
the intent of the Respondent.
Thus, Section 4(a)(i) of the UDRP is satisfied.
2. Respondent Has No Rights Or Legitimate Interests In the
Subject Domain Name
Respondent has no legitimate rights or interests in ZAPPOSSHOES.COM
because Respondent has neither used, nor has made any demonstrable preparations
to use, the subject domain name or corresponding name in connection with any
bona fide offering of goods or services or in a legitimate, non-commercial,
fair use manner.
On the contrary, Respondent is currently using ZAPPOSSHOES.COM
to direct Internet users to Zappos.com but also using the domain name to
trigger another Web browser opening to Shoes.com, the website of one of
Complainant’s competitors.
Respondent’s attempt to profit from the goodwill
Complainant has built up around ZAPPOS.COM mark does not evidence a bona fide
offering of goods or services pursuant to Policy ¶4(c)(i), and cannot be
considered to be a legitimate noncommerical or fair use of the domains pursuant
to Policy ¶4(c)(iii). The use of
confusingly similar domain names in order to divert Internet users interested
in Complainant’s services to a direct competitor’s website is not a use 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). See N. Coast Med., Inc. v. Allegro Med.,
FA 95541 (NAF Oct. 2, 2000) [finding no bona fide use where Respondent used the
domain name to divert Internet users to its competing website]; see also
Ticketmaster Corp. v. DiscoverNet, Inc., Case No. D2001-0252 (WIPO Apr. 9,
2001) [finding no rights or legitimate interests where Respondent generated
commercial gain by intentionally and misleadingly diverting users away from the
Complainant's site to a competing website].
Respondent is not commonly known, either as an
individual, business or organization, by the names ZAPPOS SHOES and/or
ZAPPOSSHOES.COM. See Broadcomm
Corp. v. Intellifone Corp., FA 96356 (NAF February 5, 2001) [finding no
rights or legitimate interests because Respondent is not commonly known as the
disputed domain name or is using the domain name in connection with a
legitimate or fair use]. Complainant
notes that Respondent’s WHOIS
information lists itself as “Renata Svensdotter” and nowhere in the contact information is there any other
reference to any of the name or domain, other than for the domain name itself. See
Tercent Inc. v. Lee Yi, FA 139720 (NAF Feb. 10, 2003) [stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶4(c)(ii)
does not apply].
Finally, other than Respondent’s misuse of
Complainant’s affiliate program, Complainant states that it has no known proper
affiliation, association, or business relationship of any kind with Respondent
and Complainant has not licensed or authorized Respondent to use the ZAPPOS.COM
mark in connection with a domain name. See Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) [finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name].
In fact, it is a breach of Complainant’s affiliate
program agreement for an affiliate to register a domain name that is
confusingly similar to Complainant’s trademarks and use said domain in
connection with the affiliate program.
Complainant’s affiliate program only allows a member to use a hyperlink
on a website to direct Web users to Complainant’s Zappos.com website. Hence, when it learned of ZAPPOSSHOES.COM
being enrolled in its affiliate program, Complainant terminated the
membership.
Respondent took advantage of this fact with its
membership in Complainant’s affiliates program, receiving a commission from
Complainant each time an Internet user purchased a product via ZAPPOSSHOES.COM.
Such use is not 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 Deluxe Corp. v. Dallas Internet,
FA 105216 (NAF April 10, 2002) [finding Respondent had no rights or legitimate
interests pursuant to Policy ¶4(a)(ii)
where it used the domain name <deluxeform.com> to redirect users to
Complainant’s <deluxeforms.com> domain name and to receive a commission
from Complainant through its affiliate program]; see also Gorstew Ltd. v.
Carribean Tours & Cruises, FA 94927 (NAF July 28, 2000) [finding that
Respondent’s use of the disputed domain name to sell
the services of Complainant or to attract customers to Complainant,
presumably for which Respondents would be paid a fee, is classic trademark
infringement, even if the result of same is that some revenue flows to
Complainant, the owner of the marks].
Therefore, ZAPPOSSHOES.COM, because it was
registered and is used to misdirect Internet users to a third party commercial
website that features competing services and not in connection with any bona
fide business, is not legitimately used for the provision of any goods and
services.
Thus, Respondent has no legitimate interests in ZAPPOSSHOES.COM,
as legitimate interests are defined in Section 4(c)(i)-(iii) of the UDRP, and
therefore the second element of Zappos’ Complaint under Section 4(a)(ii) of the
UDRP is also satisfied.
3.
The Subject Domain Name Have Been Registered And Is Being
Used In
Bad Faith
a.
The Respondent’s Registration of the Domain Name was in Bad Faith
Respondent has registered the ZAPPOSSHOES.COM domain name in bad faith because the
domain name’s purpose is to intercept Internet users intending to access
Complainant’s Zappos.com website and attempt to divert such traffic to a
third party commercial website that is operated by a competing services, namely
Shoes.com.
These users may have engaged Shoes.com via ZAPPOSSHOES.COM
on the mistaken belief that the domain name was connected to Complainant. Such use is evidence of bad faith under
Section 4(b)(iv) under the UDRP. See Perot
Sys. Corp. v. Perot.net, FA 95312 (NAF Aug. 29, 2000) [finding bad faith
where the domain name in question is obviously connected with Complainant’s
well-known marks, thus creating a likelihood of confusion strictly for
commercial gain]; see also G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (NAF Nov. 21, 2002) [finding that Respondent registered and used the
domain name in bad faith pursuant to Section 4(b)(iv) under the UDRP because
Respondent was using the confusingly similar domain to attract Internet users
to its commercial website]; see also
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (NAF June 23, 2003) [finding
that Respondent’s use of the <saflock.com> domain name to offer goods
competing with Complainant’s illustrates Respondent’s bad faith registration
and use of the domain name pursuant to Section 4(b)(iv)].
Respondent appears to have registered ZAPPOSSHOES.COM
on January 16, 2002, more than two years after Complainant had adopted and
began using the ZAPPOS.COM trademark. Moreover,
when registering the subject domain name, Respondent was clearly aware of the
existence of the Complainant and its trademark rights, given that the only
difference between the subject domain names and Complainant’s trademark is the
addition of the generic or descriptive term “SHOES”.
Respondent is using the ZAPPOSSHOES.COM
domain name to direct Web users to Zappos.com and then uses HTML code to
instruct a Shoes.com popup page to appear when a user clicks anywhere
within the Zappos.com page. This
usage fosters a likelihood of confusion as to the source of sponsorship of
Respondent’s ZAPPOSSHOES.COM and/or
the Shoes.com website. In using this likelihood of confusion to
earn a commission from Complainant’s affiliates program, Respondent registered
and used the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv). See Deluxe Corp. v.
Dallas Internet, FA 105216 (NAF April 10,
2002) [finding Respondent registered and used the <deluxeform.com> domain
name in bad faith pursuant to Policy ¶4(b)(iv) by redirecting its users to
Complainant’s <deluxeforms.com> domain name, thus receiving a commission
from Complainant through its affiliate program]; see also The
Sports Auth. Mich., Inc. v. Internet Hosting, FA 124516 (NAF Nov. 4, 2002)
[stating that, “Redirecting Internet users attempting to reach a complainant’s
website in order to gain a profit off of a complainant is one example of bad
faith use and registration under the Policy”].
Through its unauthorized association with the
Complainant as an affiliate, the Respondent clearly was aware of the
Complainant’s mark and business.
Respondent registered a domain name that use the Complainant’s mark and
differs from it only through including the word “SHOES”. Therefore, Respondent’s registration and use of ZAPPOSSHOES.COM is in violation of
Complainant’s affiliate program, which has been found by Panelists to be
evidence of bad faith registration and use. See The Sportsman’s
Guide, Inc. v. JoyRide, Case No. D2003-0153 (WIPO May 19, 2003)
[Respondent’s bad faith in registering the disputed domain names is also
evidenced by its apparent breach of the agreement with Commission Junction by
adopting domains which were unquestionably
confusingly similar to the Complainant’s mark]
Furthermore, Complainant notes that the hard copies of the September 21 and October 26
demand letters mailed to the Respondent were returned to counsel for Complainant. The mailings were returned because the
addressee, namely Respondent, was designated as “Undeliverable”. It is readily apparent that Respondent has
included false information in its registration information for ZAPPOSSHOES.COM. This activity has been found in previous Panel decisions, to be
additional evidence of bad faith domain name registration. See Mars, Incorporated v. RaveClub Berlin, FA 97361 (NAF July 16,
2001) [Bad faith is further evidenced by the fact that Respondent provided
false registration and contact information for infringing domains]; see
also Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000)
[finding that providing false or misleading information in connection with the
registration of the domain name is evidence of bad faith]. Here, Respondent’s false information not
only shows bad faith, it also shows a disregards for the UDRP and the entire
domain name registration system.
b. Respondent’s Use Of The Domain Name Is In Bad Faith
Respondent is using the subject domain name in bad
faith, as defined under Section 4(b)(iv) of the UDRP, as it attempts to
attract, for commercial gain, Internet users to a competitor of
Complainant. Respondent’s ZAPPOSSHOES.COM
initially directs a consumer to Complainant’s website at Zappos.com. However, the subject domain name then
triggers a ‘popup’ to the website Shoes.com when a consumer clicks on
any link within Zappos.com or when the consumer attempts to exit from Zappos.com. The services at Shoes.com are
identical to, and directly compete with, Complainant’s services in that it is
an online retail
store specializing in footwear.
Respondent’s actions in connection with ZAPPOSSHOES.COM
attempt to divert traffic from the Complainant, thereby providing commercial
gain to the Respondent through the assumed commissions the Respondent derives
from the competitors. Furthermore, Respondent’s actions in the present case
clearly indicate a profit motive as all the content provided under the subject
domain name is of a commercial nature.
By selecting and using a domain name that is confusingly similar to the
ZAPPOS.COM trademark, Respondent has acted in bad faith under the UDRP. See
ESPN, Inc. v. Ballerini, FA 95410 (NAF Sept. 15, 2000) [finding bad faith
where the Respondent linked the domain to another website and, presumably,
Respondent received a portion of the advertising revenue from site by directing
Internet traffic to the site, thus using a domain to attract Internet users for
commercial gain].
Moreover, by selecting and using a domain name that
is confusingly similar to Complainant's mark to direct users to a website that
offers competing online shoe sales services, Respondent has acted
in bad faith well within the meaning of Policy ¶4(b)(iv). See TM Acquisition Corp. v. Carrol,
FA 97035 (NAF May 14, 2001) [finding bad faith where Respondent used the
disputed domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant]; see also Identigene, Inc. v. Genetest
Lab., D2000-1100 (WIPO Nov. 30, 2000) [finding bad faith where Respondent's
use of the disputed domain to resolve to a website where similar services are
offered is likely to confuse the user into believing that Complainant is the
source of or is sponsoring the services offered at the site].
B. Respondent failed to submit a Response in this proceeding.
Complainant, Zappos.com, Inc., has operated an online shoe store since 1999. Complainant uses its <zappos.com> domain name to sell a wide variety of dress, casual, and athletic shoes for men and women, including the New Balance, Ecco, Steve Madden, and Timberland brands. Internet Retailer magazine named Complainant’s website one of the “Top 50 Websites of 2005.”
Complaint has registered its ZAPPOS.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,691,842; issued March 4, 2003, filed October 29, 1999). Complainant also holds three other trademark registrations on the ZAPPOS.COM mark (U.S. Reg. No. 2,747,104; issued August 5, 2003, filed November 20, 2001; U.S. Reg. No. 2,791,052; issued December 9, 2003, filed November 19, 2001; U.S. Reg. No. 2,963,312, issued June 21, 2005, filed February 24, 2004).
Respondent registered the <zapposshoes.com> domain name on January 16, 2002, more than two years after Complainant registered and began using the ZAPPOS.COM mark. Respondent is using the domain name to redirect Internet users to competing shoe-related 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. 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 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 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.”); see
also 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 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 Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (“As
Complainant's filing date for its valid registration of the NAF NATIONAL
ABORTION FEDERATION mark on the Principal Register of the U.S. Patent and
Trademark Office predates Respondent's registration of the disputed domain name
by over a year, this registration is additional evidence of Complainant's
rights in the mark.”).
Respondent’s <zapposshoes.com> domain name is
confusingly similar to Complainant’s ZAPPOS.COM mark pursuant to Policy
¶4(a)(i), because it includes Complainant’s entire mark and merely adds the
word “shoes,” which relates to Complainant’s business. See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also
Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13,
2000) (finding that the respondent’s domain name <marriott-hotel.com> is
confusingly similar to the complainant’s MARRIOTT mark).
The Panel finds that Policy ¶4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <zapposshoes.com> domain name. Complainant has the initial burden of proof in asserting that Respondent has no rights or legitimate interests in the domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶4(a)(ii). See Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when the respondent does file a response, the complainant must allege facts, which if true, would establish that the respondent does not have any rights or legitimate interests in the disputed domain name); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s failure to answer the Complaint raises a presumption Respondent has no rights or legitimate interests in the <zapposshoes.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
There is also no evidence in the record Respondent is
commonly known by the <zapposshoes.com> domain name. Therefore, Respondent has not established
rights or legitimate interests in the <zapposshoes.com> domain
name pursuant to Policy ¶4(c)(ii). See 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 Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
Respondent is using the <zapposshoes.com>
domain name (which is confusingly similar to Complainant’s ZAPPOS.COM mark) to
misdirect Internet users to the websites of Complainant’s competitors. Such use of the disputed domain name for
commercial gain does not constitute a bona fide offering of goods or
services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use
of the domain name pursuant to Policy ¶4(c)(iii). See Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec.
5, 2003) (finding that the respondent was not using the domain names for a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb.
Forum Dec. 1, 2003) (finding that the respondent was not using the domain name
within the parameters of Policy ¶¶4(c)(i) or (iii) because the respondent used
the domain name to take advantage of the complainant's mark by diverting
Internet users to a competing commercial site).
The Panel finds Policy ¶4(a)(ii) satisfied.
Respondent is using the <zapposshoes.com>
domain name, which is confusingly similar to Complainant’s ZAPPOS.COM mark, to
redirect Internet users seeking Complainant’s website to competing websites
selling similar goods. Trying to contact Complainant’s web site via a link
results in a pop-up window involuntarily directing the visitor to a
competitor’s web site. Therefore,
Respondent is taking advantage of the likelihood of confusion between
Respondent’s domain name and Complainant’s mark and capitalizing on the
goodwill associated with the mark through an electronic implementation of the
old “bait and switch” tactic. The Panel
finds such use constitutes bad faith registration and use pursuant to Policy
¶4(b)(iv). See Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that
the respondent’s use of the <saflock.com> domain name to offer goods
competing with the complainant’s illustrates the respondent’s bad faith
registration and use of the domain name, evidence of bad faith registration and
use pursuant to Policy ¶4(b)(iv)); see also
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).”).
Respondent’s whois contact
information is false. The address does
not exist (according to the United States Post Office, who returned two
certified letters with the notation “no such address” and “no such post office
in state named”). Providing false or
misleading whois contact information creates a presumption of bad faith, Agent
Host v. Host Dot Com Investments, AF-0343 (October 16, 2000), The
Procter & Gamble Company v. Hong Gil Dong, FA572962 (Nat. Arb. Forum
November 16, 2005), Mattel, Inc. v. RanComp Ltd., FA579563 (Nat. Arb.
Forum November 29, 2005) and Delta Corporate Identity, Inc. and Delta
Air Lines, Inc. v. Yong Li, FA576550 (Nat. Arb. Forum November 28, 2005). This Panel elects
to draw that conclusion.
The Panel finds Policy ¶4(a)(iii) 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 <zapposshoes.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: February 22, 2006
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