Z Gallerie, Inc. v. Cayman Trademark Trust c/o Domain Administrator c/o Generic Search Terms
Claim Number: FA0604000692118
Complainant is Z Gallerie, Inc. (“Complainant”), represented by Darin J. Glasser, of O'Melveny & Myers LLP, 610 Newport Center Drive, Newport Beach, CA 92660. Respondent is Cayman Trademark Trust c/o Domain Administrator c/o Generic Search Terms (“Respondent”), PO Box 533 WB, West Bay, Georgetown, Grand Caym, GT, KY.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <zgalleries.com>, registered with Bulkregister, Llc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 26, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 28, 2006.
On April 27, 2006, Bulkregister, Llc. confirmed by e-mail to the National Arbitration Forum that the <zgalleries.com> domain name is registered with Bulkregister, Llc. and that Respondent is the current registrant of the name. Bulkregister, Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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 May 2, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 22, 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@zgalleries.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 24, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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 <zgalleries.com> domain name is confusingly similar to Complainant’s Z GALLERIE mark.
2. Respondent does not have any rights or legitimate interests in the <zgalleries.com> domain name.
3. Respondent registered and used the <zgalleries.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Z Gallerie, Inc., is a unique lifestyle retailer that offers products for the home, including furniture, artwork, lighting, tabletop items, textiles and decorative accessories from around the world. In connection with the sale of these products, Complainant holds a registration with the Unites States Patent and Trademark Office (“USPTO”) for the Z GALLERIE mark (Reg. No. 1,618,180 issued October 16, 1990).
Respondent registered the <zgalleries.com> domain name on February 23, 2000. Respondent is using the disputed domain name to redirect Internet users to a website that displays sponsored links to various competing and non-competing 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 established rights in the Z GALLERIE mark through
registration with the United States Patent and Trademark Office (“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.”).
The disputed domain name registered by Respondent, <zgalleries.com>, is confusingly similar to Complainant’s Z GALLERIE mark pursuant to Policy ¶ 4(a)(i) because it incorporates Complainant’s mark in its entirety, adding only the letter “s” and the generic top-level domain “.com.” See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also 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 Complainant satisfied Policy ¶ 4(a)(i).
Complainant established that it has rights and legitimate interests in the mark contained in its entirety within the disputed domain name. Under Policy ¶ 4(a)(ii), the burden rests with Complainant to prove Respondent does not have rights or legitimate interest in the disputed domain name. Complainant, through assertions contained in the Complaint, has established a prima facie case that Respondent lacks rights or interests in the disputed domain name. Therefore, the burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the 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 G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”)
Complainant asserts that Respondent is using the <zgalleries.com> domain name to
display sponsored links to various competing and non-competing websites. Respondent’s use of the confusingly similar <zgalleries.com> domain name to
display sponsored links to competing and non-competing websites is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Wells Fargo
& Co. v. Lin Shun Shing, FA 205699
(Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct
Internet traffic to a website featuring pop-up advertisements and links to
various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user); see also 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).
Additionally, Complainant asserts that Respondent is neither commonly known by the <zgalleries.com> domain name nor authorized to use a domain name featuring Complainant’s mark. Because Respondent’s contact information in the WHOIS database is listed as “Cayman Trademark Trust,” and Respondent has failed to come forward with any evidence to contest Complainant’s assertions, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); 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.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent is using the confusingly
similar domain name to operate a website that displays sponsored links to
various competing and non-competing websites.
The Panel finds that such use evidences bad faith 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, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding
that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
Furthermore, based on the uncontested evidence
submitted by Complainant, the Panel presumes that Respondent uses the disputed
domain name to earn click-through fees for referring Internet users to
competing and non-competing websites with sponsored links. Additionally, the panel finds that
Respondent’s registration and use of the <zgalleries.com> domain name will likely cause confusion among
Internet users as to Complainant’s sponsorship of or affiliation with the
disputed domain name. See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); 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); See also Luck's Music Library v. Stellar Artist Mgmt., FA 95650
(Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad
faith use and registration by using domain names that were identical or
confusingly similar to the complainant’s mark to redirect users to a website
that offered services similar to those offered by the complainant). Thus, the Panel finds that Respondent’s use
of the confusingly similar <zgalleries.com>
domain name for commercial gain evidences bad faith pursuant to Policy ¶
4(b)(iv).
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 <zgalleries.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: June 6, 2006
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