Nancy Zieman v. YY
Claim Number: FA0609000802363
Complainant is Nancy Zieman (“Complainant”), represented by Christopher J. Hussin, of Lathrop & Clark LLP, P.O. Box 1507, Madison, WI 53701-1507. Respondent is YY (“Respondent”), No. 5 Fuchenglu, Haidian Dist., Beijing 100830, CN.
The domain name at issue is <nancyzieman.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 22, 2006.
On September 21, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <nancyzieman.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 September 25, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 16, 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@nancyzieman.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 23, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <nancyzieman.com> domain name is identical to Complainant’s NANCY ZIEMAN mark.
2. Respondent does not have any rights or legitimate interests in the <nancyzieman.com> domain name.
3. Respondent registered and used the <nancyzieman.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Nancy Zieman, is a well-known author, pattern designer, and authority on sewing that has been successfully using her personal name and the NANCY ZIEMAN mark for a variety of products and services since at least as early as 1979. In particular, Complainant has operated a direct mail order company specializing in sewing and quilting notions, supplies, and accessories under the name “Nancy’s Notions” since 1979. Moreover, Complainant and the NANCY ZIEMAN mark became widely-known at least as early as 1982, when Complainant became the executive producer and host of the popular television show “Sewing with Nancy,” which appeared on at least 299 television stations across the United States and Canada. Complainant has also authored and co-authored hundreds of books about sewing, embroidery, and quilting over the past twenty years, and has released numerous videos about sewing, embroidery, quilting, and related topics. Over one million copies of Complainant’s books bearing her likeness and the NANCY ZIEMAN mark have been sold prior to the registration date of the <nancyzieman.com> domain name. Similarly, approximately 50,000 DVDs bearing the NANCY ZIEMAN mark and Complainant’s likeness have been sold on average annually since 1994.
Since at least as early as 1999, Complainant has also engaged in the production of embroidery design collection and sewing patterns, utilizing both her likeness and the NANCY ZIEMAN mark. Additionally, Complainant has used the NANCY ZIEMAN mark and Complainant’s likeness in connection with the sale of over 100 fabric lines, and with the endorsement of sewing products.
Respondent, YY, registered the <nancyzieman.com> domain name on January 3, 2005. Respondent’s disputed domain name resolves to a website featuring links to various websites related to Complainant’s sewing, embroidery, and quilting products and services, but which ultimately connect to links to unrelated third-party 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 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.
As an initial matter, Complainant is not required to establish the registration of a mark in order for Complainant to demonstrate rights in the NANCY ZIEMAN mark pursuant to Policy ¶ 4(a)(i). See 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.”); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Furthermore, the Panel finds that Complainant has established common law rights in the NANCY ZIEMAN mark in accord with Policy ¶ 4(a)(i). An individual may acquire common law trademark rights in his or her name by demonstrating secondary meaning for the name with actual evidence. See McCarthy on Trademarks and Unfair Competetition, § 13:1 “Personal Names as Mark Introduction” (4th ed. 2002) (stating that the basic rules pertaining to the protection of personal names require actual proof of secondary meaning for protection); see also Marino v. Video Images Prods., D2000-0598 (WIPO Aug. 2, 2000) (finding that evidence of Dan Marino’s NFL career, sports commentary, and movie roles was sufficient to show that Dan Marino’s name had secondary meaning and qualified as a common law trademark). Complainant submitted evidence that she has been using the NANCY ZIEMAN mark in the creation, promotion, and commercial exploitation of a variety of goods and services related to sewing, embroidery, and quilting since at least as early as 1979. Specifically, Complainant has widely used the NANCY ZIEMAN mark in connection with the sale of books and DVDs, television production, and the offering of various sewing, embroidery, and quilting products and services. Therefore, the Panel finds that Complainant has sufficiently demonstrated secondary meaning in the NANCY ZIEMAN mark, and thus has established common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning); see also 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).
Furthermore, the Panel finds that Respondent’s <nancyzieman.com> domain name is identical to Complainant’s NANCY ZIEMAN mark pursuant to Policy ¶ 4(a)(i). The disputed domain name features Complainant’s NANCY ZIEMAN mark in its entirety, with the omission of a space between the two terms that constitute the mark, and the addition of the generic top-level domain (“gTLD”) “.com.” Previous panels have held that the omission of spaces between the terms of a mark does not preclude a finding that the domain name is identical to the mark under Policy ¶ 4(a)(i). See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Moreover, prior panels have consistently held that the addition of a gTLD to a mark does not distinguish the resulting domain name from the mark pursuant to Policy ¶ 4(a)(i). See Valeant Pharms. Int’l v. Carpela, D2005-0786 (WIPO Sept. 2, 2005) (finding that the panel concluded that the <cesamet.com> domain name was identical to the complainant’s CESAMET mark because the addition of the gTLD “.com” did not sufficiently distinguish the disputed domain name from the mark); see also W. Union Holdings, Inc. v. Topiwala, D2005-0945 (WIPO Oct. 20, 2005) (finding <wuib.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name WUIB is part of the Internet address and does not add source-identifying significance). Thus, the Panel in the instant case finds that the alterations to Complainant’s NANCY ZIEMAN mark incorporated into the disputed domain name render the <nancyzieman.com> domain name identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant initially bears the burden of establishing that Respondent lacks rights and legitimate interests in the disputed domain name. Nevertheless, once Complainant sufficiently demonstrates a prima facie case, the burden then shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that 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”); 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests with regard to the <nancyzieman.com> domain name pursuant to Policy ¶ 4(c).
The Panel finds that the evidence on record fails to suggest that Respondent is commonly known by the <nancyzieman.com> domain name under Policy ¶ 4(a)(i). Respondent’s WHOIS information indicates that Respondent is known as “YY,” and the record does not contain any evidence suggesting that Respondent is commonly known by the disputed domain name. Additionally, Complainant contends that she has not licensed or otherwise permitted Respondent to register the disputed domain name featuring Complainant’s NANCY ZIEMAN mark. Therefore, the Panel finds that Respondent has not demonstrated rights or legitimate interests in the <nancyzieman.com> domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
Moreover, the Panel finds that Respondent’s disputed domain
name resolves to a website featuring links to websites related to Complainant
and Complainant’s business, but which ultimately connect to links to unrelated
third-party commercial websites.
Consequently, the evidence on record suggests that Respondent registered
the <nancyzieman.com> domain name with the intention of diverting
Internet users seeking information regarding Complainant or goods and services
offered by Complainant or her related companies to Respondent’s website. The Panel presumes that Respondent achieves
click-through revenue as a result of the operation of its website located at
the disputed domain name. Therefore,
the Panel finds that such use of the <nancyzieman.com> domain name
by Respondent constitutes neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i), nor a noncommercial or fair use under Policy ¶
4(c)(iii). See Bank of Am.
Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the
respondent’s use of a domain name to redirect Internet users to websites
unrelated to a complainant’s mark is not a bona fide use under Policy ¶
4(c)(i)); see also Summit Group, LLC v. LSO, Ltd., FA 758981
(Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the
complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s
own website for commercial gain does not constitute either 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
In light of both the identical nature of Respondent’s <nancyzieman.com> domain name and Complainant’s NANCY ZIEMAN mark and Respondent’s use of the disputed domain name to offer links to websites related to the sewing, embroidery, and quilting products and services of Complainant for Respondent’s commercial gain, Internet consumers could easily confuse Respondent’s website with a website operated by or affiliated with Complainant. Therefore, the Panel concludes that Respondent registered and is using the <nancyzieman.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
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 <nancyzieman.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: November 6, 2006
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