Pirelli & C. S.p.A. v.
Were,LLC
Claim Number: FA0703000938180
PARTIES
Complainant is Pirelli & C. S.p.A. (“Complainant”),
represented by Cristina Cazzetta, of Porta, Checcacci & Associati, Via
Trebbia 20,
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <zero.us>, which was
registered with Go Daddy Software, Inc. (“Go Daddy”) on June 4, 2004.
PANEL
The undersigned, David H. Tatham, Hon. Daniel B. Banks Jr., and Carol
M. Stoner Esq. certify that they have acted independently and impartially and
to the best of their knowledge have no known conflict in serving as Panelists
in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on March 16, 2007;
the Forum received a hard copy of the Complaint on March 19, 2007.
On March 16, 2007, Go Daddy confirmed by e-mail to the Forum that
the domain name <zero.us> (“the disputed domain name”) was registered
with it and that Respondent was the
current registrant of the name. Go Daddy has verified that Respondent is bound
by its registration agreement and has thereby
agreed to resolve domain-name disputes brought by third parties in accordance
with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the
“Policy”).
On March 23, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 12, 2007 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
A Response was received on April 12,
2007. However, the Response was
deemed deficient under Rule 5(a) of the Policy as the hard copy of the Response
was received after the deadline for the filing of the Response.
Both parties filed Additional Submissions. Complainant’s was received by the Forum on
April 19, 2007 and although the Forum said it was timely, payment was not
received until after the deadline set by the Forum. Respondent’s Additional Submission, including
payment, was received on April 23, 2007 and was deemed by the Forum to be
timely.
On April 24, 2007, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the Forum
appointed David H. Tatham, Hon. Daniel B. Banks Jr. Esq., and Carol
Stoner Esq. as Panelists, with David H.
Tatham as the Chair.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The following is a summary of the facts, allegations and contentions
submitted by Complainant –
·
Complainant
annexed a 29-page document which it described as a List of the trademarks with
the keywords PZERO, P ZERO, and ZERO of which it was the owner.
·
Complainant
listed at some length the history of the company, which has been in existence
since 1872, initially in
·
Complainant
claims to have invented a low-profile tire, named P7, in the mid-seventies, and
to have begun to make and sell its ultra-low profile P Zero tires in 1987. The PZero Rossi tire was launched in 2000. This was a new range of UHP technologically
advanced tires with peak performance levels for drivers and cars. The name “zero” stands for “zero limiti” (no
limits) and “rosso” stands for the red colour which symbolizes the passion for
driving. In 2004 Complainant launched an
industrial design project for making unique apparel, shoes, watches and
accessories each of which has the name PZero as its suffix.
·
Complainant
claims to enjoy extensive rights in the PZERO and ZERO marks which it has used
for many, many years in connection with the tire sector and in clothing design.
Complainant also owns and actively uses
the following domain names – <pzero.it>, <pzero.mobi>,
<pzeroweb.mobi>, <pzeroclub.com>, <pzerocollection.com>,
<pzeroweb.it>, <pirellizero.com>, <pzeronero.com>,
<pzeroassoluto.it>, <pzeroassoluto.com>, <pzeroassoluto.net>,
and <pzeroassoluto.org>.
·
Complainant
contends that the disputed domain name is confusingly similar to its PZERO and
ZERO trademarks because it is a mere misspelling of its trademarks and it does
not distinguish between them. Complainant also contends that it is well
established that a mere misspelling of a mark or the addition of a generic word
to a mark does not distinguish a domain name from a mark and Complainant
referred to four UDRP Decisions as proof thereof.
·
Complainant
further contends that Respondent has no rights or legitimate interest in the
disputed domain name because Respondent neither uses nor has made demonstrable
preparation to use it in connection with a bona
fide offering of goods or services. Internet
users who access the site at the disputed domain name are directed to <www.got.us> and
Complainant alleges that Respondent receives click-through fees for each
Internet user thus misdirected.
·
Complainant
contends that Respondent is using its ZERO trademark
for its own commercial benefit, which is neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use, and Complainant referred to two Decisions in support
of this argument.
·
Complainant
also contends that there is no evidence that any website or other online
presence using the disputed domain name is in the process of being established;
there is no evidence of advertising, promotion or display of the disputed
domain name to the public; and there is no evidence that Respondent has offered
to sell, rent, or otherwise transfer the disputed domain name to anyone. Therefore, Complainant asserts, such inaction
can amount to bad faith and quotes from two Decisions to support this argument.
·
Complainant
contends that by using the disputed domain name, which is a mere misspelling of
Complainant’s famous trademarks ZERO and PZERO which are widely recognized
throughout Italy, Europe and worldwide, Respondent is unfairly and
opportunistically appropriating the goodwill associated with these marks and
this is strong evidence of Respondent’s bad faith.
·
Complainant
further contends as follows: that Respondent has no rights or legitimate
interests in the disputed domain name because there is no evidence that
Respondent is commonly known by the disputed domain name; moreover Respondent
uses it in a manner that is calculated to deceive consumers and it can be
inferred that it was registered for this purpose; and there is nothing on the
website at the disputed domain name to dispel the false impression that
Complainant has in some way authorized the setting up and the conduct of the
website.
·
Complainant
contends that its rights in its trademarks ZERO and PZERO have been harmed and
damaged by the registration of the disputed domain name.
·
Complainant
contends that there is no evidence that Respondent is commonly known by the
name <zero.us>, but he does use it in a manner calculated to deceive
consumers and it can be inferred that Complainant registered it for this
purpose, and there is nothing on the website at the disputed domain name to
dispel the false impression that there is some authorization from Complainant
for the setting up and conduct of the website.
·
Complainant
contends that Respondent has been passively holding the disputed domain name
for almost three years and it has been held that a passive holding is evidence
of a lack of legitimate interests.
B. Respondent
The following is a summary of the facts, allegations and contentions
submitted by Respondent –
·
The
controlling force behind Respondent is a Mr. Christian Zouzas. Respondent itself is
a web development company who works closely with Neustar, the “.us” Registry
operator in promoting the “.us” ccTLD. Neustar
also has a contract with the U.S. Department of Commerce to utilize “kids.us”
which was created by a law passed in 2002 by the US Congress. Respondent cooperates closely with Neustar in
promoting ‘kids.us’ and in fact Mr. Christian Zouzas, who controls Respondent,
or one of his affiliated companies, between them own eight of the only 21 “.kids.us”
domain names that have so far been registered.
·
In
addition, Respondent has developed a number of websites based upon generic
words, with the cooperation and authorization of Neustar, in order to promote
the registration of domain names in the “.us” TLD. One of these is <www.got.us> at which Respondent operates a
website containing news and information about “.us.” The website at the disputed domain name is a
‘launch-pad’ to its other websites, and all visitors to it are directed to the ‘got.us’ site, where they can find links to
other websites under domain names all of which comprise generic words. Respondent listed 45 of these in the Response,
ranging alphabetically from “Actress” to “Word.” Their content is alleged to relate to the
primary meaning of each word and contains directory information relating to
those words, as well as aggregate RSS news feeds relating to each word. They are also supported by Google Adsense
advertisements based on the semantic content of the web page itself. Respondent asserts that none of them are
click-per-view sites.
·
Respondent
notes that this is not the first time that someone owning ZERO as a trademark
has brought a domain name dispute. On
that occasion the domain name was <zero.com> and the case was Zero International Holding GmbH & Co. KG
v. Beyonet Services, D2000-0161
(WIPO May 15, 2000). The Panel in
that case held,
The
word “zero” is a common English word. Although any number of organisations
(including the Complainant) may have trade mark rights in such a word (and
indeed the Respondent has produced evidence of numerous US trade marks which
include or comprise the word “zero”) that does not preclude the Respondent
effecting registration of a common word on the “first come, first served” basis
which was available.
·
Respondent
challenges the authenticity of Complainant’s alleged trademark rights,
describing the list provided by Complainant as “self compiled,” as
“fundamentally dishonest,” and “which does not distinguish among pending
applications, figurative or graphic logos and which does not distinguish among
documents filed or granted before or after the registration date of the domain
name at issue.” Respondent also alleges
that as the “.us” TLD has a specific restriction on being used in connection
with activities conducted in the
·
Respondent
stated that, nevertheless, it was prepared to accept that Complainant may have
obtained a trade or service mark registration at a relevant time for “ZERO” as
a brand of tires, but this term is not, apart from Complainant’s claims in
connection with tires, immediately and exclusively associated with Complainant.
Indeed, Respondent annexed a list of 965
live pending or registered US trademarks which incorporate or consist of the
word “zero,” in every class of goods or services.
·
Respondent
points out that as the disputed domain name was registered in June 2004, then
irrelevant to the proceedings are whatever Complainant may have done after that
date, and whatever documents it filed that are later than that date.
·
Respondent
denies Complainant’s claim that it is using the disputed domain name in
connection with “pay per click” advertising and refers to the above description
of its activities as proof that it is acting legitimately. Indeed, it claims that the only illegitimate
use of the disputed domain name would be if it was in connection with the sale,
promotion, manufacture, or advertising of vehicle tires. Respondent denies engaging in any of these
activities. The disputed domain name is
just one of a number of other common English dictionary words which it
registered for the purpose of providing useful information in connection with
those generic words. Respondent referred
to several Decisions under the Uniform Domain Name Dispute Resolution Policy
(“UDRP”) relating to domain names consisting of generic words as proof that “even
a speculative interest in a
word-as-domain-name, apart from any action or intent relating to a trade or
service mark interest, is a legitimate interest.”
·
Respondent
also annexed copies of the first six pages of a Google® search for the word “zero”
that indicated more than 253 million records for this word.
·
Respondent
denies that it has acted in bad faith in registering and using the disputed
domain name. This name is neither a “passive
holding” of a domain name, nor is it a misspelling, nor has it been offered for
sale, and nor are any of Complainant’s customers or potential customers being
diverted. In this context Respondent points
out that the following domain names are all still registered – <zero.com>
(owned by a domain speculator), <zero.net> (owned by a pay-per-click
traffic aggregator), <zero.org> (owned by a speculator),
<zero.info> and <zero.biz> both owned by a retail business trading
under the ZERO name, and even <zero.it> in its own Italian backyard which
is owned by Zero Computing S.r.l in Milano. Thus Responjdent states that there is no
evidence to believe that any visitor to the disputed domain name is being diverted
from anything.
·
Respondent
believes that the disputed domain name has a value, but this belief has nothing
to do with any alleged association between the word “zero” and tires
manufactured by Complainant, and Respondent expressly denies any knowledge of a
“zero” brand of tires until it was in receipt of the Complaint.
·
Respondent
alleges that in order to establish that the disputed domain name was registered
in bad faith, Complainant must show that the registration was motivated by, or
directed towards, exploitation of the limited claim of goodwill which the
Complainant alleges in connection with the sale of tires. However as Complainant has not proffered a
single piece of evidence demonstrating Respondent’s predatory intent relating
to its trademark for tires, and Respondent dismisses the idea that it acted in
bad faith as being absurd.
C. Additional Submissions
Both parties submitted Additional Submissions, which are summarised
hereunder.
Complainant
Complainant firstly points out that, contrary to Respondent’s
assertions, the list of trademark registration for ZERO and PZERO filed with
the Complaint is quite clear. Any
scrupulous observer can distinguish between pending and registered trademarks, can see all the application and registration
numbers and dates, can distinguish what is a design mark and what is a word
mark, and can identify International Registrations filed with WIPO. However, to satisfy Respondent’s objections in
this regard, Complainant annexed to its Additional Submission copies of several
ZERO and PZERO trademark registrations in, among other countries, the
With regard to Respondent’s assertion that there are many other
registrations for ZERO, Complainant points out that its registration for this
mark covers tires and fashion products,
so it is not important if someone should file, register or use this mark for
other goods or services.
Complainant’s rights in its trademark ZERO are not – as Respondent
asserts – limited to tires but are also protected in many different classes belonging
to the fashion field, and furthermore, Complainant’s notoriety in its mark
gives it the opportunity to do business in other fields. Complainant annexed to its Additional
Submission a substantial number of pages of advertising and other material in
order to give some idea of the market extension of the ZERO and PZERO brands.
Complainant also annexed copies of the first 200 entries (out of a
total of 93,200) from a Google® search for PZERO and the first 200 entries (out
of a total of 427,000) from a Google® search for ZERO + PIRELLI. The number of entries that have nothing to do
with Complainant may be counted on the fingers of one hand.
With regard to Respondent’s contention that ZERO is a common English
word, Complainant points out that, by virtue of its US Federal registrations of
ZERO and P ZERO, the USPTO has recognized that these marks have acquired
appropriate secondary meaning in the marketplace and, in support thereof,
Complainant cites the Lanham Act, and the U.S. Trademark Manual of Examining
Procedure. Complainant also refers to
several
Complainant asserts that the word “zero” is in a different category to
the other common or generic words which Respondent has registered as domain
names. “Generic” generally means pertaining or appropriate to “large classes or
groups as opposed to specific” and so
it is the name of something big. But “zero”
is a number and so cannot be classified as being generic. Also, as it means “void” or “empty;” it cannot
act as a “launch pad;” it is not generic; and it does not identify a category
as do the other words which Respondent has registered as domain names. Respondent issued an invitation to surf these
domain names as proof that they resolve to his website at <got.us>, but
Complainant asserts that in fact all they reveal are empty pages.
Respondent’s use of the disputed domain name to direct users to a website
of an affiliate who has no connection with Complainant is not a bona fide commercial offering of goods
or services and Complainant referred to a number of UDRP decisions all relating
to the bona fide use of a domain
name.
Respondent’s claim that Complainant has ignored or taken no action
against other domain name registrations is not at issue, and Complainant
alleges that it has either started or is going to start Complaints against the
following: <pzero.org>, <pzero.com>, <pzero.net>,
<zero.us>, <zero.org>, <p-zero.net>, <pzero.biz>,
<pzero.info>, <p-zero.org>, <p-zero.info>, and
<pzero.us>. Filing dates and Forum
numbers for each of these Complaints were also supplied. Complainant states that it is free to decide
when and against who it files a Complaint.
Complainant alleges that the disputed domain name is confusingly
similar to its marks, such that Internet users seeking Complainant’s genuine
website may instead find themselves misdirected to Respondent’s website, or
rather to that of a different entity. Complainant
asserts that it is incontrovertible that Respondent is profiting from this
diversion and that it has been held in numerous decisions that the registration
and use of a domain name that incorporates another’s mark with intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.
Respondent
Respondent’s Additional Submission commences with a lengthy argument
that Complainant’s Additional Submission was not timely because payment therefor
was not received within the five days laid down in the Forum’s Supplemental
Rule 7, and that it should therefore not be admitted. Respondent referred to two decisions under the
Policy in support of this proposition. Respondent
also contends, furthermore, that Complainant’s Additional Submission contains
no facts or evidence which could not have been filed in the Complaint.
In response to Complainant’s arguments regarding its trademark rights,
Respondent states its willingness to accept, for the sake of argument that
Complainant owns a trade or service mark for ZERO in connection with tires. However Respondent claims not to have found
any use of the word ZERO in Complainant’s additionally filed advertising
material apart from designations such as “PZERO” or “Pirelli ZERO.” Respondent stresses that Complainant’s rights
in the trademark ZERO are limited to its use as a trademark in connection with
tires and Complainant has not shown one single piece of evidence suggesting
that Respondent’s registration of the domain name was motivated in bad faith
arising from a predatory intent concerning Complainant’s mark.
Respondent dismisses as “an absurd argument” Complainant’s claim that
“zero” is not a generic word. The mere
registration of a generic term as a trademark does not remove the generic
nature of the word in question.
Complainant’s Google® searches relate to PIRELLI and ZERO or PZERO, but
Respondent’s own search for ZERO by itself clearly show that it is most
commonly used and recognized as a generic word. Respondent states that in the vast majority of
instances where the word “zero” is used on the Internet, including as part of
domain names, such use has absolutely nothing to do with Complainant.
Respondent points out that paragraph 4(b)(iv)
of the Policy, which was quoted by Complainant, is directed towards an
intentional creation of confusion. But
in this case there is no evidence to suggest that Respondent intended that its
network of websites are, or should be, sponsored or affiliated with Complainant,
or that it has offered for sale any product or service relating to automotive
tires.
Respondent stresses yet again
that it is NOT dealing in tires, but in fact has been developing an
interconnected network of websites relating to generic words in the “.us” TLD. They all relate to the generic meanings of
such words as words, and Complainant has utterly failed to demonstrate how this
obvious and apparent intent has any relation to Complainant’s limited rights in
the trademark ZERO for tires. Complainant’s
claim that Respondent is using its reputation and fame in bad faith is absurd
and without any explanation as to how Respondent’s use of the disputed domain
name trespasses on any way upon Complainant’s rights.
Respondent attempts to explain away Complainant’s reference to finding
blank pages by stating that the sites are “being updated during this
Proceeding.”
Respondent states that Complainant’s references to various UDRP
Decisions is irrelevant in the present case involving, as it does, a word that
is not only generic in English but in other languages as well. In a case involving a domain name consisting
of a generic word, a complainant must demonstrate that it was registered with a bad faith intent.
Respondent continues to argue that despite Complainant’s lengthy
explanation of trademark law, there is nothing in this law that negates the
fact that generic words, even when registered as
trademarks, retain their primary meaning and remain free for use provided they
do not infringe. In this case, there is
no infringement, there are no competing goods being offered, and there is no
diversion to any product or service competing with Complainant. There is no basis for finding that the
disputed domain name was any more abusive than Respondent’s other domain name
registrations of generic words. In the
case of ZERO there are no doubt thousands of concurrent uses of this term, and
indeed Complainant admits as much.
Respondent casts doubt about whether Complainant would be able to
prevail over the software firm who owns the <zero.it>, while the list of
domain names against which Complainant claims to have filed Complaints all
appear to consist of variants of PZERO. Unlike
the word “zero” this is not a generic word and it is highly relevant to
Complainant’s claim of intentional creation of confusion that Complainant is
not associated with a single domain name consisting of the word ZERO alone in
any TLD.
FINDINGS
1.
Respondent’s
<zero.us> domain name is identical to or confusingly similar to
Complainant’s trademarks ZERO and PZERO.
2.
Respondent
has rights or legitimate interests in the domain name <zero.us>.
3.
The
Panel makes no finding as to registration in bad faith.
DISCUSSION
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.”
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;
(2) Respondent has no rights or legitimate interests in respect of the
domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the UDRP and the usTLD Policy, the Panel
has drawn upon UDRP precedents as applicable in rendering its decision, as well
as considering relevant usTLD decisions.
The Panel must first consider whether or not to accept Complainant’s
Additional Submission. Rule 10(d) of the
Rules for the usTLD Dispute Resolution Policy (“the Rules”) makes it quite
clear that a Panel has absolute discretion to determine the admissibility of
the evidence and there have been many UDRP decisions supporting this Rule.
Respondent has argued that the Additional Submission should not be
admitted because the Forum has ruled it to be not timely since the requisite
payment for it of $400 was not received within the 5 days for doing so
stipulated in the Forum’s Supplemental Rule 7. Respondent also says that the Additional
Submission contains no facts or evidence which could not have been filed in the
Complaint. However there is nothing in
the Rules or the Supplemental Rules to say what an Additional Submission must
or must not consist of, and that is no reason for rejecting an Additional
submission
Having considered the matter, the Panel has concluded that it would be
inequitable to deny Complainant’s Additional Submission because of a mere
technicality, i.e. the late filing of a check, bearing in mind that
Respondent’s own hard copy of its Response was also received after the date for
filing it, though the electronic copy was timely received.
The Panel, in full utilization of its discretion, has ruled to admit
Respondent’s late Response. The basis of
the Panel’s decision is in its onus to prevent a default judgement; to decide
the matter on its merits; and upon its belief that Complainant has not been
prejudiced thereby. See
Gaiam, Inc. v. Nielsen, FA 112469 (Nat. Arb. Forum
July 2, 2002).
Respondent has criticized Complainant’s
evidence relating to its trademarks, but if a complainant is relying on a
quantity of trademark rights, it is by no means unusual in UDRP Complaints for
him to file a printout listing the bare details of those rights. It is true that a complainant will usually
supplement this list with copies of some of the more relevant registrations and
indeed Complainant did just that with its Additional Submission. Furthermore Respondent conceded (albeit only
by way of argument) that Complainant might have trademark rights in the word
ZERO.
However, from a closer examination of the
copies of the 40 trademarks which Complainant filed with its Additional
Submission, it can be seen that not all of them are registered and that 29 of
them belong not to Complainant, but to either Pirelli Pneumatici S.p.A or
Pirelli Tyre S.p.A. These are, possibly,
subsidiaries or associates of Complainant, but the Policy is clear that it is
Complainant who must own the trademark rights relied upon. The Panel has therefore, in coming to its
conclusion, discounted these 29 marks, and has taken into account only the
following, all of which are registered and in the name of Complainant and
dated prior to June 4, 2004 which is the date of the disputed domain name,
whilst noting that there may be others in Complainant’s 29 page list of marks
that also fall into the same category –
ZERO
– CTM registration 2,900,801
ZERO
– International Registration 799,458, (not
extended to the
P
ZERO – International Registration 817,072, (not extended to the
PZERO
– International Registration 823,765, (not
extended to the
P
ZEROACQUA – International Registration 791,119, (not extended to the
P
ZEROARIA – International Registration 799,457, (not extended to the
P
ZERONERO – International Registration 805,126, (extended to the
P
ZERO ROSSO – Canadian registration 548,737.
It will be seen from the above list that
Complainant has a single CTM registration for the identical trademark ZERO,
while also having two International Registrations for the confusingly similar
trademarks P ZERO and PZERO. The Panel
therefore finds that Complainant has established trademark rights in ZERO,
PZERO and P ZERO. In Mothers Against
Drunk Driving v. phix, FA
174052 (Nat. Arb. Forum May 27, 2003) it was found that Complainant’s
registration of the trademark MADD with the USPTO establishes the Complainant’s
rights for the purposes of the UDRP; and in American
International Group, Inc. v. Morris FA 569033 (Nat. Arb. Forum Dec. 6,
2005) it was held that “Complainant
has established rights in the AIG mark through registration of the mark with
several trademark authorities throughout the world, including the United States
Patent and Trademark Office . . . .”
When comparing a trademark and a domain name
for the purposes of the Policy it is customary to disregard generic suffixes
such as “.us” or “.com” because these suffixes fail to distinguish the domain
name. In Tropar Manufacturing Co. v. TSB,
FA 127701 (Nat. Arb. Forum Dec. 4, 2002) it was found that since the
addition of the country-code “.us” fails to add any distinguishing
characteristic to the domain name, <tropar.us> is identical to the
Complainant’s TROPAR mark. Similarly in
the present case, the comparison is between ZERO and PZERO on the one hand and
ZERO on the other. It is clear that,
absent the suffixes, there is identicality and the Panel finds that paragraph
4(a)(i) of the Policy has been satisfied.
Where a complainant has made a prima facie case in support of its allegations, the burden of production shifts to the respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. In Document Technologies, Inc. v. International Electronic Communications Inc., D2000-0270 (WIPO June 6, 2000) it was said:
This “burden shifting” is appropriate given that Paragraph 4(c) of the
Policy, which is entitled “How to Demonstrate Your Rights to and Legitimate
Interests in the Domain Name in Responding to a Complaint,” discusses the kind
of evidence a Respondent
should provide to show that it has rights to or legitimate interests in the
domain name. The burden of proof, however, does not shift as the Policy makes
clear that “the complainant must prove that each of these three elements are [sic] present.”
In the present instance, the Panel initially had some doubts as to whether Complainant has indeed made out a prima facie case but was finally persuaded that it had. In Lush LTD v. Lush Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) it was found 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; also, in Graman USA Inc. v. Shenzhen Graman Industries Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) it was found that absent a showing of any facts by the complainant that establish the respondent lacks rights or legitimate interests in the disputed domain name, the Panel may decline to transfer the disputed domain name.
The disputed domain
name is comprised of a common, generic term. According to the Oxford English Dictionary the
word “zero” has been a part of the English language since the 17th
Century and is probably derived from the French “zéro.” We note that the word
also appears in Italian (the language of Complainant). Respondent drew the Panel’s attention to the
case of Zero International Holding GmbH & Co. Kommanditgesellschaft v.
Beyonet Services, D2000-0161
(WIPO May 12, 2000) in which it was held that the respondent in that matter had rights and
legitimate interests in the <zero.com> domain name as “the word ‘zero’ is
a common English word.” Other decisions
relating to the acceptable use of generic words in domain names include CRS Technology
Corporation v. CondeNet, Inc., FA 93547 (Nat. Arb. Forum Mar. 28, 2000) in
which it was held that “CONCIERGE is
not so associated with just one source that only that source could claim a
legitimate use of the mark in connection with a website;” and The
Landmark Group v. Digimedia.com L. P.,
FA 285459 (Nat. Arb. Forum Aug. 6, 2004) in which it was held that “as long as the domain names have been
registered because of their attraction as dictionary words, and not because of
their value as trademarks, this business model is permitted under the Policy;”
and HP Hood LLC v. hood.com, FA 313566 (Nat. Arb. Forum Nov. 9,
2004) which agreed with this adding “an
established domain name resale enterprise that restricts its portfolio in a
good faith effort to avoid misleading the public qualifies as a legitimate
interest;” and General Machine
Products Company, Inc. v. Prime Domains, FA 92531 (Nat. Arb. Forum Mar. 16,
2000) in which it was held that the complainant’s trademark CRAFTWORK was not
fanciful or arbitrary, that it had submitted no evidence to establish fame or
secondary meaning, and that as the respondent had demonstrated that the term
was in widespread use in a descriptive sense, it did have a legitimate interest
in the domain name.
Respondent asserts that the disputed domain name is not being used as a website that displays hyperlinks to earn click-through fees as Complainant alleges, but rather to promote the “.us” top-level domain. Respondent asserts that it is a web development company that works with Neustar, the “.us” Registry operator to promote this country-code top-level domain and that the disputed domain name resolves to the website at the <got.us> domain name which displays information on the “.us” top-level domain. The disputed domain name was chosen and developed in this way as “zero” can be a concept of a starting point. The Panel rules that this is a bona fide offering of goods or services under paragraph 4(c)(ii) of the Policy as well as being a legitimate noncommercial or fair use under paragraph 4(c)(iv) of the Policy, and finds support for that view in Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug. 17, 2000) where it was found that the use of the <stmoritz.com> domain name where it resolved it to a website that provided information about the city of St. Moritz, as well as other countries, general news, and net cafes was bona fide. Also, in Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) it was found that the Respondent used the <bettendorfnews.com> domain name in connection with a bona fide offering of goods or services by hosting “interactive Internet newspapers that allow[ed] the public to post articles, stories and comments directly to its site.”
Therefore the Panel finds that Respondent had rights and
legitimate interests in the disputed domain name and that Complainant has
failed to prove paragraph 4(a)(ii) of the Policy.
Having found that Respondent does have rights or legitimate interests in the disputed domain name, the Panel has no need to make any finding regarding bad faith under paragraph 4(a)(iii) of the Policy as was found in Pensacola Christian College. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001).
DECISION
Having established only one of the three elements required under the U. S. Department of Commerce’s usTLD Dispute Resolution Policy, the Panel concludes that relief shall be DENIED.
David H. Tatham
(Chair)
Hon. Daniel B. Banks Jr.
,Carol M. Stoner, Esq.
Dated: May 18, 2007
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