Zimmermann Wear Pty Ltd v. Joe Zimmermann / zimmermannDresses
Claim Number: FA1808001800908
Complainant is Zimmermann Wear Pty Ltd (“Complainant”), represented by Elizabeth A Jaffe of Golenbock, Eiseman, Assor, Bell & Peskoe, LLP, New York, USA. Respondent is Joe Zimmermann / zimmermannDresses (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zimmermanndresses.com>, registered with Tucows Domains 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 10, 2018; the Forum received payment on August 10, 2018.
On August 13, 2018, Tucows Domains Inc. confirmed by e-mail to the Forum that the <zimmermanndresses.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 August 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 10, 2018 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@zimmermanndresses.com. Also on August 20, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant contends as follows:
Complainant, Zimmermann Wear Pty Ltd., is an Australian proprietary company engaged in the creation, sale and marketing of high-end and distinctive women’s clothing, including swimwear and resort wear.
Complainant has rights in the ZIMMERMANN mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <zimmermanndresses.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s ZIMMERMANN mark, adds the descriptive term “dresses,” and incorporates the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <zimmermanndresses.com> domain name. Respondent is not authorized to use Complainant’s ZIMMERMANN mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the at-issue domain to pass itself off as Complainant in connection with the sale of counterfeit versions of Complainant’s products. The <zimmermanndresses.com> website is believed to be operated by “Jie Zhang” who previously operated a website exploiting and infringing upon Complainant’s proprietary intellectual property.
Respondent registered and uses the <zimmermanndresses.com> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name’s resolving website where Respondent attempts to pass off as Complainant to sell counterfeit versions of Complainant’s products. Finally, Respondent failed to respond to Complainant’s cease and desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the ZIMMERMANN mark as demonstrated by its registration of such mark with the USPTO.
Complainant’s rights in the ZIMMERMANN mark existed prior to Respondent’s registration of the at-issue domain name.
Respondent uses the <zimmermanndresses.com> domain name to pass itself off as Complainant so that it may divert internet traffic intended for Complainant to Respondent’s website where it offers counterfeit ZIMMERMANN products for sale.
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(f), 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 (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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the ZIMMERMANN trademark evidences its rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, the at-issue domain name contains Complainant’s ZIMMERMANN trademark followed by the descriptive term “dresses,” all followed by the top level domain name “.com.” Importantly, the differences between the at-issue <zimmermanndresses.com> domain name and Complainant’s ZIMMERMANN trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. In fact the inclusion of the term “dresses” only adds to any confusion between the two since the term is suggestive of Complainant’s apparel related products. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s <zimmermanndresses.com> domain name is confusingly similar to Complainant’s ZIMMERMANN trademark. See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also, Longo Brothers Fruit Markets Inc. v. John Obeye / DOMAIN MAY BE FOR SALE, CHECK AFTERNIC.COM, FA 1734634 (Forum July 17, 2017) (“[O]f course it is well established in prior UDRP cases that the addition of a ‘.com’ suffix is irrelevant when determining if a disputed domain name is identical or confusingly similar to a trademark.”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the <zimmermanndresses.com> domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
WHOIS information identifies the at-issue domain name’s registrant as “Joe Zimmermann / zimmerman/Dresses.” However, although WHOIS data may suggest Respondent is commonly known by the at-issue domain name, Respondent fails to provide affirmative evidence corroborating the WHOIS record. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). Since the record before the Panel contains no evidence showing that Respondent is commonly known by the <zimmermanndresses.com> domain name the Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel notes that Complainant asserts that the true owner of the <zimmermanndresses.com> website is “Jie Zhang.” “Jie Zhang” is believed to be the owner of a website which, under another domain name, also infringed Complainant’s copyrighted photographs and designs.
Additionally, Respondent uses the at-issue domain name to divert internet traffic to Respondent’s website where Complainant’s ZIMMERMANN mark is prominently displayed along with counterfeit versions of Complainant’s products. There, Respondent offers counterfeit ZIMMERMAN products for sale. Respondent’s use of the at-issue domain name in this manner constitutes neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a non-commercial or fair use under Policy ¶4(c)(iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
Respondent’s <zimmermanndresses.com> domain name was registered and used in bad faith. As discussed below without limitation, Policy ¶ 4(b) specific bad faith circumstances, as well as other bad faith circumstances, compel the Panel to conclude that Respondent acted in bad faith regarding the at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
Respondent uses its confusingly similar <zimmermanndresses.com> domain name to divert internet users seeking ZIMMERMANN products to Respondent’s <zimmermanndresses.com> website where Respondent may profit from the resulting misguided traffic and sale of counterfeit products. In addition to displaying Complainant’s trademark on its fraudulent website Respondent also misappropriated copyrighted material from Complainant to include in its <zimmermanndresses.com> website. Such use of the confusingly similar domain name disrupts Complainant’s business and trades on the goodwill associated with Complainant’s ZIMMERMANN trademark. Using the domain name in this manner demonstrates Respondent’s bad faith registration and use of <zimmermanndresses.com> under both Policy ¶ 4(b)(iii) & (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Furthermore, Respondent registered <zimmermanndresses.com> knowing that Complainant had trademark rights in ZIMMERMANN. Respondent’s prior knowledge is evident given the notoriety of Complainant’s trademark, from Respondent’s inclusion of the ZIMMERMANN trademark in the at-issue domain name and on its associated website, and from Respondent’s offering of counterfeit ZIMMERMANN products for sale via such website. It follows that Respondent intentionally registered the at-issue domain name to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <zimmermanndresses.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zimmermanndresses.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 13, 2018
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