Zee TV USA, Inc. v. Aamir Siddiqi c/o
DotCorner.com
Claim Number: FA0605000721969
PARTIES
Complainant is Zee TV USA, Inc. (“Complainant”), represented by Kay Lyn Schwartz, of Gardere Wynne Sewell, LLP, 1601 Elm Street, Suite 3000, Dallas, TX 75201. Respondent is Aamir Siddiqi c/o DotCorner.com (“Respondent”), H-77, K.D.A Staff Flats, Near Karsaz, Karachi, SINDH 75350, PK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zeecinema.com>,
registered with Enom, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Richard DiSalle is the Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 31, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 5, 2006.
On May 31, 2006, Enom, Inc. confirmed by e-mail to the National
Arbitration Forum that the <zeecinema.com>
domain name is registered with Enom, Inc. and that the 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 June 8, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 28, 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@zeecinema.com by e-mail.
A timely Response was received and determined to be complete on June
27, 2006.
On July 5, 2006, Complainant timely submitted an Additional Submission
that complied with the Forum’s Supplemental Rule No. 7. On July 11, 2006, Respondent timely
submitted an Additional Submission, which also complied with the Forum’s
Supplemental Rule No. 7.
On July 1, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard DiSalle as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since 1995, Complainant Zee, along with its parent and affiliated
entities (collectively, the "Zee Group"), continuously have used, and
continue to use, the marks "ZEE" and "ZEE CINEMA"
(collectively, the "ZEE Marks"), in connection with television
broadcasting services. The Zee Group
also uses in connection with its services various domain names, including
<zee-cinema.com>, which is owned by an affiliate, Zee Telefilms,
Ltd. The Zee Group is one of the
world's leading television broadcasting companies, and is the largest worldwide
provider of 24/7 television programming in South Asian languages. It is estimated that the Zee Group's
television programming is viewed by over 350 million people in over 120
countries worldwide each year, including approximately 1.5 million people in
North America who view programming that Complainant distributes.
As the owner of the world's largest privately held library of movies in
South Asian languages, the Zee Group is able to offer "ZEE CINEMA"
subscribers a wide range of movie selections, as well as programming suitable
for all types of viewing audiences. Specifically, in North America, Complainant
provides its "ZEE CINEMA" subscribers with 24/7 access to multiple
movies per week by airing six films a day on the weekdays and seven films a day
on weekends.
Complainant has acquired valuable rights and substantial goodwill in
the ZEE Marks, examples of which are described and referenced on its
website. In addition, Complainant has
submitted to the United States Patent and Trademark Office various applications
for federal registration for the marks "ZEE" and "ZEE
CINEMA" and is the owner of U.S. Reg. No. 2,366,571.
Respondent's domain name, <zeecinema.com>, is identical or
confusingly similar to Complainant's ZEE and ZEE CINEMA Marks. Respondent's website is a search portal for
third party websites offering a variety of goods and services. Complainant submits that the domain name,
<zeecinema.com>, is likely to cause confusion among consumers and
internet users interested in South Asian programming and related services. When such consumers enter <zeecinema.com>
into a web browser, expecting to find information about Complainant and/or its
broadcasting services, consumers are instead brought to Respondent's site.
Complainant submits that Respondent's inclusion of these
"movie" related categories of third party web sites in connection
with the domain name, <zeecinema.com>, further creates a false
impression among, and confuses, consumers interested in South Asian programming
and related services that Respondent's site is somehow affiliated or sponsored
by Complainant, when that clearly is not the case.
Complainant also claims that Respondent, Aamir Siddiqi c/o
DotCorner.com, clearly has no rights in "ZEE" or "ZEE
CINEMA" and is not known by <zeecinema.com>. Upon information and belief, at no time
before having notice of this dispute has Respondent used or made any
demonstrable preparations to use "ZEE," "ZEE CINEMA,"
“ZEECINEMA.COM,” or any corresponding domain name in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i). In
addition, upon information and belief, Respondent is not making, and has never
made, a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii).
Complainant submits that Respondent's diversion of customers to
Respondent's website by misleading them with a domain name that is confusingly
similar to the ZEE Marks is not a legitimate use. Respondent is using the domain name, which is confusingly similar
to the ZEE Marks, solely as a vehicle to draw Internet users to its search
engine website.
It is also claimed that Respondent has registered and is using the
domain name, <zeecinema.com>, in bad faith. Respondent is capitalizing on the goodwill
of the "ZEE" and "ZEE CINEMA" marks by diverting Internet
users to a website that essentially is a generic directory of unrelated web
sites offering a variety of third party goods and services. Respondent's website offers links to third
party web sites
offering goods/services related to movies (e.g., "Indian
Movies," "Indian Actress," "Movie Download,"
"Movie Tickets,"), which are not affiliated with or sponsored by
Complainant or by any other Zee Group entity.
In addition, Respondent's website also links to third party sites
offering goods and services wholly unrelated to Complainant's business, ranging
from used car parts, casino and gambling sites to sites offering sexually
explicit photographs and related services.
Respondent's use of the "ZEE" and "ZEE CINEMA"
marks in association with these services creates a false association or
perception that Complainant is related to Respondent, Respondent's website, or
the third parties referenced on the website, when, in fact, no such association
exists. In addition, the association of
these third party sites with Complainant and the ZEE Marks tarnishes the ZEE
Marks and their associated goodwill.
Complainant adds that Respondent was on notice as to the existence of
Complainant and its marks when it registered <zeecinema.com> on
February 8, 2002, and that, if Respondent had performed a rudimentary trademark
investigation at the time of registration of the <zeecinema.com>
domain name, Respondent would have been alerted as to Complainant and to the
existence of the ZEE Marks.
B. Respondent
Respondent claims that Complainant cannot say that it has a right to
the “ZEE CINEMA” service mark, and asks, if it has been using it since 1995,
why did it opt for registering “Z CINEMA” in September 2005 instead of “ZEE
CINEMA”? It is clear that it does not
have a service mark on “ZEE CINEMA.”
It is clear that the subject domain name <zeecinema.com>
is not identical to Complainant service marks, i.e. “Z CINEMA.” Respondent agrees that <zeecinema.com>
is identical to Complainant’s domain name <zee-cinema.com>. However, the
domain name <zeecinema.com> was registered long before the
Complainant’s registration of domain name.
Also, there was no active/non-active trademark relating to “ZEE CINEMA”
or even “Z CINEMA” at the time of registering <zeecinema.com>.
With respect to the issue of a legitimate interest in the domain name,
Respondent states that it is in the business of providing search results and
free email services on vanity domain names.
The services offered by its company are purely legal and do not “indulge”
with any other businesses. As with any
search engine, the website always shows the links relating to typed search
term. The same algorithm is followed at
<zeecinema.com>. If a user
types “Movies” in the search bar, the website will display results relating to
movies. This is a normal behavior of
Search Engine. Complainant has waited
four years to “realize” that Respondent has no legitimate interest in the
Domain Name.
On the issue of Bad Faith, Respondent says that the domain name <zeecinema.com>
was registered in February 2002, and that it is clear that at the time of
registering the domain name, Complainant only had one active trademark, “Z ZEE
TV,” having Registration Number 2,366,571.
This trademark in no case is identical to Respondent’s domain name <zeecinema.com>.
Since registering the domain name in 2002, Respondent has never
contacted Complainant or put any information on its website, which suggests
that Respondent is a part of Complainant’s group of companies.
C. Additional Submissions
(1) By Complainant:
In Complainant’s Additional Submission in reply to Respondent’s
Response, Complainant claims that it is the owner of various “ZEE” and “Z”
formative marks, including “ZEE” and “ZEE CINEMA,” which are used in connection
with television broadcasting services (the “Marks”'). Complainant's Marks are protected under United States “common
law” as well as under the federal trademark laws of the United States. In addition, Complainant is the owner of
several federal trademark registrations for its Marks. Respondent does not deny that·Complainant
possesses rights in “ZEE” or “ZEECINEMA” but instead objects to the way
Complainant referenced its federal trademark applications/registrations in its
Complaint.
Complainant is not relying solely on its federal
applications/registrations in support of its contentions under the UDRP. Complainant also relies on its common law
rights in ZEE and ZEE CINEMA, as well its family of "ZEE" marks, in
support of its Complaint against Respondent under the UDRP. Even if Complainant had rights only in
"Z" (as opposed to just "ZEE") and "Z CINEMA" (as
opposed to just "ZEE CINEMA"), as Respondent alleges, Complainant
submits that "Z" is phonetically similar to "ZEE" and
provides further support for Complainant's position that the domain name at
issue, <zeecinema.com>, is identical or confusingly similar to
Complainant’s service marks in accordance with the Policy.
Respondent does not deny the allegations that Complainant raises in its
Complaint, and in fact, admits that its use of the <zeecinema.com>
domain name is not in connection with a bona fide offering of
goods/services pursuant to Policy ¶ 4(c)(i) or that it constitutes a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Also, Respondent admits that it is in the
"business of providing search results and free email services on [a]
vanity [sic] [of] domain names," and that <zeecinema.com> is
one of many of Respondent's domain names that are associated with one of these
“search result” websites.
With respect to bad faith, Complainant argues that if Respondent had
performed a rudimentary trademark investigation at the time of registration of
the <zeecinema.com> domain name, Respondent would have been
alerted as to Complainant and to the existence of the ZEE Marks. For example, Complainant’s U.S. federal
registration No. 2,366,571 for the mark, Z ZEE TV, was filed in 1995, and was
registered in 2000, two (2) years prior to when Respondent registered the
domain name at issue. In addition, upon
information and belief, at the time Respondent registered the domain name at
issue, a search of the Internet would have revealed information concerning
Complainant and "ZEE CINEMA" as the ZEE CINEMA mark was first used in
1995, seven (7) years prior to when Respondent registered the domain name at
issue.
In addition, upon information and belief, Complainant avers that
Respondent had actual knowledge of Complainant and its Marks. In fact, it points out that Respondent
admits in its response that it was at least aware of Complainant (or its group
of companies) when it registered the domain name <zeecinema.com>
in 2002.
(2) By Respondent:
In its Additional Submission, Respondent claims that at the time of registering the domain name there was no trademark for “ZEE” or “ZEE CINEMA.” The trademarks were filed in 2005, which is three years after the registration of domain name. Respondent agrees that phonetically “Z” is pronounced as “ZEE” or may be “ZE” or maybe “ZED” depending on which part of the world one lives.
Respondent claims that it has been maintaining the website since 2002 and providing personal private email and search facilities. These services do not interfere in any case with services offered by Complainant. Spending money on domain name renewals, web hosting and web site running expenses shows that Respondent is serious with its business and will want to continue it.
Respondent also claims that it has never contacted complainant or any of its affiliates at any point in time since registering the domain name. It is offering legitimate services and is not involved in any illegal act.
FINDINGS
(1)
the domain name
registered by the Respondent is identical to a trademark or service mark in
which the Complainant has rights;
(2)
the 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.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(2)
the 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.
The domain
name registered by the Respondent is identical to a trademark or service mark
in which the Complainant has rights.
Complainant is not required to own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
The ZEE CINEMA mark has acquired
secondary meaning sufficient for Complainant to establish common law rights in
the mark pursuant to Policy ¶ 4(a)(i). See
Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided
evidence that it had valuable goodwill in the <minorleaguebaseball.com>
domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).
In addition, Complainant argues that Respondent’s <zeecinema.com> domain name is identical to Complainant’s ZEE CINEMA mark because the domain name wholly incorporates the mark and merely adds the generic top-level domain “.com.” We agree. The mere addition of a gTLD to Complainant’s mark is not sufficient for Respondent to differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
Respondent has no rights or legitimate
interests with respect to the domain name.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the <zeecinema.com> domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).
Complainant
maintains that Respondent is not commonly known by the <zeecinema.com>
domain name, because the WHOIS information lists the registrant of the domain
name as “Aamir Siddiqi c/o DotCorner.com,” and there is no other evidence in
the record indicating that Respondent is commonly known by the <zeecinema.com>
domain name. Complainant also asserts
that it has not authorized or licensed Respondent to register a domain name
incorporating Complainant’s ZEE CINEMA mark or any variation. Respondent is not commonly known by the <zeecinema.com>
domain name, and has no rights or legitimate interests in the <zeecinema.com>
domain name under Policy ¶ 4(c)(ii). See
Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003); see also Great S.
Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000).
The domain
name has been registered and is being used in bad faith.
Complainant claims that
Respondent’s <zeecinema.com> domain name resolves to a commercial
search engine page that displays links to various third-party websites, some of
which resolve to the websites of Complainant’s competitors in the film
business. Complainant also claims that
Respondent is earning “click-through fees” for each consumer that follows the
links on Respondent’s website.
Respondent is profiting from the goodwill associated with Complainant’s
ZEE CINEMA mark by redirecting Internet users seeking Complainant’s goods and
services to Respondent’s own website for commercial gain. Therefore, Respondent has registered and is
using the <zeecinema.com> domain name in bad faith pursuant to
Policy ¶ 4(b)(iv). 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 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).
By using the
<zeecinema.com> domain name to provide links to Complainant’s
competitors, Respondent has registered and is using the disputed domain name to
disrupt Complainant’s business in violation of Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000); see
also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003).
DECISION
The Complainant having established all three elements required under
the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zeecinema.com>
domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: July 18, 2006
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