Zappos.com, Inc. v. Zappos.com Inc
Claim Number: FA0706000999674
PARTIES
Complainant is Zappos.com, Inc. (“Complainant”), represented by Sean
F. Heneghan, 31 Reading Hill Avenue, Melrose, MA 02176. Respondent is Zappos.com Inc (“Respondent”), represented by Sean
F. Heneghan,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zappos-shoes.com>, registered with Niuedomains.
PANEL
The undersigned, Daniel B. Banks, Jr., as panelist, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 5, 2007; the
National Arbitration Forum received a hard copy of the Complaint on June 11, 2007.
On June 6, 2007, Niuedomains confirmed by e-mail to
the National Arbitration Forum that the <zappos-shoes.com> domain
name is registered with Niuedomains and
that Respondent is the current registrant of the name. Niuedomains
has verified that Respondent is bound by the Niuedomains
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 19, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 9, 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@zappos-shoes.com by e-mail.
A timely Response was received and determined to be complete on July 6, 2007.
On July 12, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the owner of the trademarks ZAPPOS and ZAPPOS.COM which
are used in connection with its popular online retail store for footwear and
assorted accessories. Complainant’s
ZAPPOS.COM trademark has been used in connection with these services since as
early as 1999. The ZAPPOS mark has been
used since 2003.
Complainant filed a Complaint on June 5, 2007 against The Tidewinds
Group, Inc. for Tidewinds’s registration and use of the subject domain name <zappos-shoes.com>. Tidewinds registered that domain name more
than seven years after Complainant had adopted and began using the ZAPPOS.COM
trademark and more than three years after Complainant adopted and began using
the ZAPPOS mark.
Shortly after receipt of the Complaint, Tidewinds edited the WHOIS
information for the disputed domain name to reflect “Zappos.com Inc.” as the registrant. As a result of these edits, it appears that
Complainant and registrant are the same entity, however, the <zappos-shoes.com>
domain name is password protected at the current registrar, and, as
such, Complainant is unable to access the domain name and assert control of
it.
Tidewinds activities in updating the WHOIS information should be
classified as “cyberflying,” a practice of changing the registrant of a domain
name before or during a UDRP proceeding in an attempt to disrupt the
proceedings and circumvent the Policy.
Tidewinds was using the <zappos-shoes.com> domain name in
connection with a search website that features links to services that compete
with Complainant’s services. Specifically, it directed Web users to a pay-per-click search page
that includes listings under the prominent heading “Sponsored Listings.” These listings featured links to online
retail services for footwear and accessories that are virtually identical to
and compete with Complainant.
Upon the discovery of <zappos-shoes.com> and in accordance with Complainant's usual practice for dealing with third parties it believes are attempting to trade on the name and good will of the valuable trademarks, Complainant’s legal counsel sent a cease and desist letter to Tidewinds on February 2, 2007. The letter gave notice to Tidewinds that the registration and use of <zappos-shoes.com> infringed and diluted the ZAPPOS.COM and ZAPPOS trademarks. Complainant requested, among other things, that Tidewinds immediately cease all use of <zappos-shoes.com> and prepare to transfer the domain name to Complainant. Complainant also offered to compensate the Tidewinds $50 USD for the transfer of the subject domain name.
When Tidewinds did not respond to the February 2 letter and the subject domain name remained active, Complainant sent another communication on March 9, 2007, reiterating the demand to cease use of <zappos-shoes.com>.
Tidewinds finally responded by e-mail on March 12 to confirm receipt of the demand letters but did not address the merits of dispute.
On March 16, Complainant’s counsel sent an e-mail to Tidewinds requesting a substantive response to its previous communications.
On March 23, Tidewinds replied via e-mail, claiming it had registered the domain name for a “customer” and was willing to transfer <zappos-shoes.com> for the $50 offered by Complainant if a check was forwarded to Tidewinds.
On March 27, Complainant responded that it was agreeable to the proposal with the caveat that the proposed compensation transaction would be made through PayPal.
When the Tidewinds did not reply to the March 27 e-mail, Complainant sent another communication on April 3, 2007, requesting that Tidewinds confirm that it was agreeable to the March 27 proposal. At the time of the filing of the original Complaint, Tidewinds had not replied to Complainant’s last two communications.
On April 9, Complainant noted that <zappos-shoes.com> was apparently reactivated and again directing Web users to a pay-per-click search page that features links to online retail services that are virtually identical to, and that directly compete with, Complainant.
Complainant’s investigations
have found that Tidewinds has a history of acquiring domain names that
incorporate third-party trademarks and using said domains to misdirect Internet
traffic to commercial websites. This
activity includes registering and using domains that are similar to well-known
third party English-language trademarks, including
Furthermore, Complainant’s research also indicates that Tidewinds has been found to have registered and used a domain name in bad faith in a recent Panel decision under the UDRP on activity virtually identical to those in the case at hand (see Skyhawke Techs., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007)).
In light of the facts discussed above, it is abundantly clear that Tidewinds had clearly registered and is using the <zappos-shoes.com> domain name in bad faith under the UDRP. Tidewinds’s “cyberflying” activity after the filing of the original Complaint is also a violation of Paragraph 8(a) of the Policy and is evidence of bad faith.
B. Respondent
This Response specifically responds to the statements and allegations contained in the Complaint, as per ICANN Rule 5(b)(i).
First, the Panel should note that Respondent Zappos.com, Inc. does not contest any of the factual and legal allegations made in the Complaint filed on June 5, 2007 or the Amended Complaint that was accepted by NAF on June 19, 2007.
In particular, Complainant, Zappos.com, Inc. (hereinafter “Zappos”) has been forced to name itself as both Complainant and Respondent in this proceeding due to the change of registration information for subject domain name in this action by the domain’s original registrant, The Tidewinds Group Inc. (hereinafter “Tidewinds”). Tidewinds likely copied the Zappos contact information in the current WHOIS record for <zappos-shoes.com> from another WHOIS record of Complainant's domain names. In fact, the information was not provided by Complainant to Tidewinds and includes an outdated mailing address of Zappos. Tidewinds never provided information to Zappos by which it could access and modify the WHOIS record of the disputed domain name. The <zappos-shoes.com> domain name is currently disabled and is password protected, and, as such, Zappos is unable to access <zappos-shoes.com> and assert control of the domain name at the time of the filing of this Response. Indeed, a representative of the Registrar, Niuedomains LLC c/o Dotster, Inc., confirmed that it has since assigned the subject domain name to a “neutral holding account on June 6. 2007.” As a consequence of the change of the listed registrant, NAF required Zappos to amend the Complaint to name Zappos as Respondent as well, as per the applicable Rules, and invited Zappos to present a Response.
Despite the fact that Zappos is now both Complainant and listed Respondent in this proceeding, it is nonetheless critical for the Panel to render a decision ordering the transfer of <zappos-shoes.com> to be transferred to Zappos.
First, Zappos is not in control of the <zappos-shoes.com> domain name, despite the fact that the domain name is listed as registered to Zappos. Without access information or privileges, Zappos cannot change the DNS server to redirect Web users to its <zappos.com> website or transfer the domain name to its registrar of choice.
Second, Zappos is a victim of the tactic “cyberflying” by the domain name’s original registrant, Tidewinds. Cyberflying is the practice of changing the registrant of a domain name before or during a UDRP proceeding in an attempt to disrupt the proceeding and to circumvent Paragraph 8(a) of the Policy. It is instructive to cite here from Group Kaitu, LLC, Darkside Productions, Inc. v. Group Kaitu LLC, D2005-1087 (WIPO Jan. 6, 2006):
The record before this Panel presents a virtual textbook case of “cyberflying” with a disingenuous twist. Manila Industries, Inc., being named as the Respondent in this case – and with knowledge of its obligations under Paragraph 8(a) – proceeded without notification to either the Complainants or to the Center to change the contact details of the registrations to one of the Complainant’s contact details.
…
The Respondent [
In the instant case, Tidewinds “cyberflying” activities appear to be an abuse of UDRP procedure in an attempt to avoid being found to have registered and used the <zappos-shoes.com> in bad faith, especially since Tidewinds lost another UDRP proceeding recently. An order by the Panel directing the Registrar to transfer the <zappos-shoes.com> domain name to Zappos will allow Zappos to rightfully gain control of the subject domain name and rectify the unauthorized actions of Tidewinds.
To assist the Panel in its analysis, Zappos cites three previous UDRP proceedings that include essentially the same fact pattern as the case at hand. See KSL Recreation Mgmt. Operations, LLC v. KSL Recreation Mgmt. Operations LLC, FA 876390 (Nat. Arb. Forum Feb. 20, 2007); see also High Point Bank & Trust Co. v. High Point Bank & Trust, FA 632711 (Nat. Arb. Forum Feb. 22, 2006); see also PSC Mgmt. Ltd. P’ship v. PSC Mgmt. Ltd. P’ship, FA 467747 (Nat. Arb. Forum June 6, 2005). In these three proceedings, each complainant was forced to amend the respective complaints filed in the proceedings due to “cyberflying” tactics by the original domain name registrants and in each of the proceedings the panels ordered the respective domains at issue to be transferred to the complainant.
Furthermore, previous panels have foregone the traditional UDRP analysis and have ordered the immediate transfer of a domain name at issue where the respondent stipulated to the transfer of a domain name or where there is an agreement between the parties to do so. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”).
As was done by the Panel in KSL Recreation Mgmt. Operations, LLC proceeding, Zappos requests that the Panel assigned in the instant case interpret Zappos’s submissions, both as Complainant and Respondent, as a request for a declaratory judgment that (1) Zappos is the rightful owner of the domain name <zappos-shoes.com> and that (2) the Panel order the Registrar to grant full control and ownership of <zappos-shoes.com> to Zappos.
While Zappos argues that it is not necessary to reach and evaluate the three elements of a UDRP claim, it notes that it believes it has set forth sufficient factual and legal arguments in the original Complaint to support the contention that the prior owner of <zappos-shoes.com>, namely Tidewinds, registered and used the domain name in bad faith under the UDRP.
In light of the facts discussed above and the cited UDRP precedent, Respondent Zappos consents to and authorizes the transfer of the <zappos-shoes.com> domain name to Complainant Zappos.
FINDINGS
When Complainant initially filed its Complaint on June 5, 2007, Respondent’s WHOIS information for the <zappos-shoes.com> domain name identified Respondent as “The Tidewinds Group Inc.” Shortly thereafter, the WHOIS information was updated to reflect “Zappos.com Inc” as the registrant of the disputed domain name. As a result, it appears that Complainant and Respondent are the same entity. The WHOIS registrant contact information for the disputed domain name is identical to formerly correct information for Complainant, and is further evidence that Complainant and Respondent are one and the same. However, Complainant still does not have access to the <zappos-shoes.com> domain name. In light of the circumstances, Complainant, acting as Respondent, chose to submit a Response to the Complaint agreeing to transfer the disputed domain name.
The Panel finds that the disputed domain name <zappos-shoes.com>
should
be transferred to Complainant without analyzing the elements of the Policy.
DISCUSSION
Respondent’s activities may be classified as “cyberflying,” a practice of changing the registrant of a domain name before or during a UDRP proceeding in an attempt to disrupt the proceeding and circumvent the Policy.
In cases in which the respondent purports to transfer the contested domain name to the complainant, previous panels have ordered the immediate transfer of the disputed domain name without analyzing the elements of the Policy. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat. Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names”).
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.”
Accordingly, this Panel finds that the original
registrant, The Tidewinds Group, Inc., engaged in “cyberflying” in order to
disrupt these proceedings and circumvent the Policy.
DECISION
The Panel concludes that relief requested by Complainant should be GRANTED.
Accordingly, it is Ordered that the <zappos-shoes.com> domain name be TRANSFERRED
from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: July 18, 2007
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