TM Web Properties, Ltd. v. WEBZILLA / WEBZILLA LTD
Claim Number: FA1402001544534
Complainant is TM Web Properties, Ltd. (“Complainant”), represented by Matthew Shayefar of Boston Law Group, PC, Massachusetts, USA. Respondent is WEBZILLA / WEBZILLA LTD (“Respondent”), Ghana.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <webzilla4u.com> and <webzilla4u.net>, registered with OnlineNIC, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2014; the National Arbitration Forum received payment on February 19, 2014.
On February 20, 2014, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <webzilla4u.com> and <webzilla4u.net> domain names are registered with OnlineNIC, Inc. and that Respondent is the current registrant of the names. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@webzilla4u.com, postmaster@webzilla4u.net. Also on February 25, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
i. Complainant, TM Web Properties, Ltd., uses the WEBZILLA mark in connection with Internet and hosting services, namely computer software design, computer programming, or maintenance of computer software, and more.
ii. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the WEBZILLA mark (Reg. No. 3,563,190, registered January 20, 2009).
iii. The <webzilla4u.com> and <webzilla4u.net> domain names are both confusingly similar to Complainant’s WEBZILLA mark.
i. Respondent has no legitimate interest or rights in the disputed domain names.
ii. Respondent is not commonly known by the disputed domain names.
iii. Respondent has used the disputed domain names to promote and market web hosting, web design, and marketing services in direct competition with Complainant.
i. Respondent’s registration and use of the disputed domain names was in bad faith.
ii. Respondent has used the disputed domain names to promote and market web hosting, web design, and marketing services in direct competition with Complainant.
iii. It is clear that Respondent had actual knowledge of Complainant’s rights in the WEBZILLA mark when it registered the disputed domain names.
4. Respondent registered the <webzilla4u.com> and <webzilla4u.net> domain names on January 30, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company engaged in the provision of Internet and hosting services, namely computer software design, computer programming, or maintenance of computer software, and related services.
2.Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the WEBZILLA mark (Reg. No. 3,563,190, registered January 20, 2009).
3.Respondent registered the <webzilla4u.com> and <webzilla4u.net> domain names on January 30, 2012.
4. Respondent has used the disputed domain names to promote and market web hosting, web design, and marketing services in direct competition with Complainant.
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; 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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it uses the WEBZILLA mark in connection with Internet and hosting services, namely computer software design, computer programming, or maintenance of computer software, and more. Complainant alleges that it owns a trademark registration with the USPTO for the WEBZILLA mark (Reg. No. 3,563,190, registered January 20, 2009). See Complainant’s Annex 4. The Panel finds that although Respondent does not appear to reside in the United States, Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant’s registration of the WEBZILLA mark with the USPTO sufficiently proves that it has rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s WEBZILLA mark. Complainant argues that Respondent’s <webzilla4u.com> and <webzilla4u.net> domain names are both confusingly similar to Complainant’s WEBZILLA mark. Complainant asserts that both of the domain names begin with the WEBZILLA mark, followed by “4u,” and the generic top-level domain (“gTLD”) “.com” or “.net.” The Panel holds that Respondent’s inclusion of a generic phrase does not differentiate the domain name from Complainant’s mark according to Policy ¶ 4(a)(i). See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). The Panel also determines that Respondent’s addition of a gTLD to Complainant’s mark is inconsequential to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Accordingly, the Panel finds that Respondent’s <webzilla4u.com> and <webzilla4u.net> domain names are both confusingly similar to Complainant’s WEBZILLA mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s WEBZILLA trademark and to use it in its domain names, adding only the expression “4u”;
(b) Respondent has then used the disputed domain names to promote and market web hosting, web design, and marketing services in direct competition with Complainant;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant alleges that Respondent is not commonly known by the <webzilla4u.com> and <webzilla4u.net> domain names. The Panel notes that the WHOIS record lists “WEBZILLA / WEBZILLA LTD” as the registrant of the disputed domain names. See Complainant’s Annex 1. However, the Panel notes that Respondent fails to provide evidence in the record showing that it is known by the disputed domain names. In Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003), the panel found that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name.” Accordingly, the Panel holds that Respondent is not commonly known by the <webzilla4u.com> and <webzilla4u.net> domain names pursuant to Policy ¶ 4(c)(ii);
(e) Complainant argues that Respondent has used the <webzilla4u.com> and <webzilla4u.net> domain names to promote and market web hosting, web design, and marketing services in direct competition with Complainant. The Panel notes that Respondent’s <webzilla4u.net> domain name resolves to a website that states “Web Hosting, Domain Name Registration Services by WEBZILLA.” See Complainant’s Annex 3. The Panel observes that Complainant claims that the <webzilla4u.com> domain name resolves to the competing <luminweb.com> domain name’s website. See Complainant’s Annex 2. Therefore, the Panel finds that Respondent is using both the <webzilla4u.com> and <webzilla4u.net> domain names to promote a service that competes with Complainant’s own services, which is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent has used the <webzilla4u.com> and <webzilla4u.net> domain names to promote and market web hosting, web design, and marketing services in direct competition with Complainant. The Panel notes that Respondent’s <webzilla4u.net> domain name resolves to a website that states “Web Hosting, Domain Name Registration Services by WEBZILLA.” See Complainant’s Annex 3. The Panel observes that Complainant claims that the <webzilla4u.com> domain name resolves to the competing <luminweb.com> domain name’s website. See Complainant’s Annex 2. Complainant also argues that Respondent’s use of the infringing domain names is strictly for commercial gain with the intent to divert consumers. Therefore, the Panel agrees that Respondent is using both <webzilla4u.com> and <webzilla4u.net> domain names to promote a competing service, showing bad faith use and registration of the domain names under Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”).
Secondly, Complainant claims that it is clear that Respondent had actual knowledge of Complainant’s rights in the WEBZILLA mark when it registered the <webzilla4u.com> and <webzilla4u.net> domain names. Complainant asserts that Respondent’s knowledge of Complainant’s rights in the WEBZILLA mark is shown by the vast and well-known use of the registered WEBZILLA mark. Complainant also argues that it is clear that Respondent knew about Complainant’s website because of the high Google ranking that Complainant’s <webzilla.com> website has gained. Although panels have not generally found constructive notice on its own to support a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights, based on the fame of the WEBZILLA mark, and therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the WEBZILLA mark and in view of the conduct that Respondent has engaged in when using the disputed domain nmes, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webzilla4u.com> and <webzilla4u.net> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 25, 2014
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