National Arbitration Forum

DECISION

Z Gallerie, Inc. v. Texas International Property Associates

Claim Number: FA0702000917209

PARTIES

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 Texas International Property Associates (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker P.O. Box 703431, Dallas, TX 75370.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zeegallerie.com>, registered with Compana, LLC.

PANEL

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. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2007.

On February 21, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <zeegallerie.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, 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 February 22, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 14, 2007 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@zeegallerie.com by e-mail.

A timely Response was received and determined to be complete on March 14, 2007.

Both parties filed Additional Submissions which were accepted by the Panel.

On March 21, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

1. Respondent’s <zeegallerie.com> domain name at issue is confusingly similar to Complainant’s Z GALLERIE mark.

2. Respondent does not have any rights or legitimate interests in the <zeegallerie.com> domain name.

3. Respondent registered and used the <zeegallerie.com> domain name in bad faith.

B. Respondent denies that the domain name at issue is identical or confusingly similar to Complainant’s Z GALLERIE mark, and that any similarity is due only to a generic interpretation of the domain name. Further Respondent asserts that it is using the domain name at issue for legitimate purposes and did not register and has not used it in bad faith.

FINDINGS

Complainant’s Z GALLERIE service marks are registered with the U.S. Patent and Trademark Office under Registration Numbers: (1) 1,618,180 for a term of 10 years from October 16, 1990, and renewed for 10 years on January 25, 2001, (2) 1,779,881 for a term of 10 years from June 29, 1993, and renewed for 10 years on October 2, 2002, (3) 1,897,134 for a term of 10 years from May 30, 1995, and renewed for 10 years on September 19, 2004, and (4) 2,747,220 for a term of 10 years from August 5, 2003. Complainant has used the Z GALLERIE service marks in connection with the following goods and services: (1) under Reg. No. 1,618,180, with retail store services featuring artwork, gift items, and home and office accessories; (2) under Reg. No. 1,779,881, with retail store services featuring artwork, picture framing, decorator accessories, office accessories, home accessories including furniture, houseware and bath and kitchen products, lighting, toys and gift items, time pieces and travel accessories including luggage; (3) under Reg. No. 1,897,134, with retail store services featuring artwork, picture framing, decorator accessories, office accessories, home accessories including furniture, bath and kitchen products, lighting, toys and gift items, time pieces, and travel accessories including luggage, and housewares excluding crystal and table top glassware; and (4) under Reg. No. 2,747,220, with on-line retail services featuring home accessories, furniture, lights, housewares and bath and kitchen products, tableware, artwork, lighting, toys and gift items, time pieces, phones, picture frames and albums, potpourri, vases, bags, window coverings, drapes, rods and holdbacks, bedding, duvets, shams, pillows and throws, bean bags, books, candles, candle holders, fountains, decorator accessories and office accessories.

The Respondent, Texas International Property Associates, maintains an active web site at the domain <zeegallerie.com>, and this site, according to Complainant, diverts consumers for Z Gallerie, Inc. merchandise to various third-party websites including websites for artwork, photography, and handicrafts.

Complainant has not licensed or otherwise permitted Respondent to use the Z GALLERIE service marks or any of its other service marks or to register or use the <zeegallerie.com> domain name or any other domain names incorporating any of its marks.

Respondent has provided authority for the proposition that, outside of America, there is no phonetic equivalency between “z” and the term “zee.” Absent such equivalency there can be no confusion. Further, Respondent asserts that, while the U.S.P.T.O. obviously found Complainant’s Z GALLERIE mark to be worthy of registration, to the extent that “zee gallerie” is any degree confusingly similar to that mark, it is by virtue of a “faux French” slang meaning “the gallery”, not Z Gallerie.

Moreover, Respondent points out that Complainant’s <zgallerie.com> site shows glasses, dishes, a lamp, a throw, and two vases with the exhortation to “Uncover your style.” Respondent’s domain provides links to photos and royalty free images -- no glasses, no dishes, no lamps, no throws, and no vases. Respondent is using the site associated with the domain name at issue as an advertising portal that provides access to a broad range of services. The fact that advertising revenues may be generated by Respondent’s activity demonstrates a legitimate interest.

Finally, Respondent rebuts the claim that it registered the <zeegallerie.com> domain in bad faith with the uncontroverted statement that the domain was purchased in a bulk asset sale of many domains.

For the reasons set out below, I find that the Complainant has failed to make its case against this Respondent.

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:

(1) the domain name registered by the Respondent is identical or confusingly similar 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.

Identical and/or Confusingly Similar

The <zeegallerie.com> domain name is not confusingly similar to Complainant’s Z GALLERIE mark under Policy ¶ 4(a)(i). The disputed domain name’s use of the word “zee” is phonetically identical only in the English language, and in all other languages, it is pronounced differently. The term “gallerie” in the disputed domain name is a French word, and thus the pronunciation of the term “zee” which precedes the “gallerie” term would not be phonetically identical in the French language. Accordingly there is no legitimate confusion between the <zeegallerie.com> domain name and Complainant’s Z GALLERIE mark. Any confusion could only be attributable to a generic use and the assumption that “zee gallerie” means “the gallery,” a mark which is not claimed by the Complainant. The disputed domain name is sufficiently distinct from Complainant’s mark, and Complainant has not satisfied its burden under Policy ¶ 4(a)(i). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter."); see also Google, Inc. v. Wolfe, FA 275419 (Nat. Arb. Forum July 18, 2004) (“The <froogles.com> domain name is not confusingly similar to Complainant's GOOGLE mark. The dissimilar letters in the domain name are sufficiently different to make it distinguishable from Complainant's mark because the domain name creates an entirely new word and conveys an entirely singular meaning from the mark.”).

The Panel finds that Policy ¶ 4(a)(i) has not been satisfied.

Since the first element of the Policy has not been satisfied, it is not necessary to discuss the remaining two elements.

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

James A. Carmody, Esq., Panelist
Dated: April 5, 2007

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