Zappos.com, Inc. v. MEI Gagne
Claim Number: FA0601000624408
Complainant is Zappos.com, Inc. (“Complainant”), represented by Seán F. Heneghan, 31 Reading Hill Avenue, Melrose, MA 02176. Respondent is MEI Gagne (“Respondent”), 468 Nickerson Ave, Russellville, AR 72801.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <zapposs.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.
Tyrus R. Atkinson, 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 <zapposs.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@zapposs.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 9, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, 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 <zapposs.com> domain name is confusingly similar to Complainant’s ZAPPOS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <zapposs.com> domain name.
3. Respondent registered and used the <zapposs.com> domain name in bad faith.
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 <zapposs.com> domain name on January 16, 2002. 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 <zapposs.com> domain name is confusingly similar to Complainant’s ZAPPOS.COM mark pursuant to Policy ¶ 4(a)(i), because it merely adds an additional “s” to and is a common misspelling of Complainant’s mark. See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar); Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> to be confusingly similar to the complainant’s trademark, VICTORIA’S SECRET); Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <zapposs.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 that Respondent has no rights or legitimate interests in the <zapposs.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 that Respondent is
commonly known by the <zapposs.com> domain name. Therefore, Respondent has not established
rights or legitimate interests in the <zapposs.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.”).
Furthermore, Respondent is using the <zapposs.com>
domain name, which is confusingly similar to Complainant’s ZAPPOS.COM mark, to
direct 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 that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <zapposs.com> domain
name, which is confusingly similar to Complainant’s ZAPPOS.COM mark, to divert
Internet users who misspell Complainant’s domain name to third-party websites
selling similar goods. Therefore,
Respondent is taking advantage of consumers’ typographical errors and
capitalizing on the goodwill of Complainant’s ZAPPOS.COM mark. The Panel finds that such use constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding
bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved
to a website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent
and the complainant were in the same line of business and the respondent was
using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE
mark to attract Internet users to its <efitnesswarehouse.com> 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 <zapposs.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Panelist
Dated: February 23, 2006
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