Hertza L.L.C., dba ZeroBounce v. Karen P
Claim Number: FA2101001928767
Complainant is Hertza L.L.C., dba ZeroBounce (“Complainant”), represented by Sarah R. Frankfort of de Diego Law LLC, Texas, USA. Respondent is Karen P (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zeroemailbounce.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 18, 2021; the Forum received payment on January 18, 2021.
On January 19, 2021, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <zeroemailbounce.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 January 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2021 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@zeroemailbounce.com. Also on January 19, 2021, 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.
A timely Response was received and found compliant on January 20, 2021
On January 22, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has used the trademark “ZeroBounce” in commerce in connection with its email validation services since at least as early as January of 2017. Complainant has rights in the ZEROBOUNCE mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”), the Trade Marks Registry of India, and the World Intellectual Property Organization (“WIPO”), the earliest of which is dated January 15, 2019. Respondent’s <zeroemailbounce.com> domain name, registered on November 1, 2020, is identical or confusingly similar to Complainant’s ZEROBOUNCE mark because it merely adds the descriptive term “email” and the gTLD “.com” to the mark.
Respondent lacks rights or legitimate interests in the <zeroemailbounce.com> domain name. Respondent is not authorized to use the ZEROBOUNCE mark. Furthermore, Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services nor has it made a legitimate noncommercial or fair use thereof as Respondent uses the disputed domain name to pass itself off as Complainant and compete against it in the same field of business.
Respondent registered and uses the <zeroemailbounce.com> domain name in bad faith. Respondent uses the disputed domain name to pass itself off as Complainant and compete with it for the same customers. Furthermore, Respondent registered the disputed domain name using a proxy service to hide its identity.
B. Respondent
The <zeroemailbounce.com> domain name does not violate and fully complies with Policy ¶ 4(a)(i). First, the disputed domain name is in no way equal to Complainant’s <zerobounce.net> -- Complainant’s trademark is for “zerobounce.com”, and Respondent has not used “zerobounce.net” as the domain name. Additionally, given the restriction and length of words to choose from available domain name, it is always an effort to reflect the domain name to the industry which it serves, and the disputed domain name exactly depicts that in its truth and honesty. The word “Bounce” is a term that is relevant to the Email Validation industry and hence is free to be used as other competitors do as well, for example <neverbounce.com>. Lastly, the words “zero,” “no,” “never,” “clear,” “email,” and “bounce” are relevant words to the email validation industry and hence are free to be used as long as the specific domain is available in any combination.
The <zeroemailbounce.com> domain name does not violate and fully complies with Policy ¶ 4(a)(ii). Respondent has all the rights and legitimate interests in respect of the domain name as the disputed domain name resolves to a working website which is providing a legitimate service.
The <zeroemailbounce.com> domain name has its own unique design, technology to serve the relevant industry users; it does not in any shape or form look or feel like <zerobouce.net> as Complainant states nor is it a misrepresentation of Complainant’s brand.
The <zeroemailbounce.com> domain name does not violate and fully complies with Policy ¶ 4(a)(iii). The disputed domain name has been registered and is being used in very good faith and in accordance with the service it provides, “zeroemailbounce”, and it is understandable from the words and domain name.
The <zeroemailbounce.com> website is still in development and some of the mistakes have been notified to the developers.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
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.
Complainant asserts rights in the ZEROBOUNCE mark through registration of the mark with the various national trademark offices. Registration of a mark with national trademark offices is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See Rackspace US, Inc. v. Russell Harrower, FA 1592005 (Forum Jan. 5, 2014) (“As stated above, Complainant has shown rights in the mark RACKSPACE by virtue of its registrations in the US, Europe, Mexico, Turkey, as well as in Australia, Respondent’s country of origin. All of the trademark registrations predate the registration of the disputed domain name by the Respondent and are sufficient evidence for Complainant’s rights under Policy ¶ 4(a)(i).”) Therefore, the Panel finds that Complainant has demonstrated rights in the ZEROBOUNCE mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <zeroemailbounce.com> is identical or confusingly similar to Complainant’s ZEROBOUNCE mark because it merely adds the descriptive term “email” and the gTLD “.com” to the mark. Adding a descriptive term and a gTLD to a mark typically fails to sufficiently distinguish a disputed domain name from that mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). While Respondent asserts that “it is very clear they are different names”, the UDRP precedent indicates that the level of difference in the present case is insufficient to avoid a finding of confusing similarity between the <zeroemailbounce.com> and the ZEROBOUNCE mark. Therefore, the Panel finds that Complainant has satisfied its threshold burden under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant contends that Respondent lacks rights or legitimate interests in the <zeroemailbounce.com> domain name as Respondent is not authorized or licensed to use the ZEROBOUNCE mark. Lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Complainant states that it “has not given Respondent permission to use its ZeroBounce Marks in any form or fashion” and Respondent does not contest this. Further, Respondent does not claim that it is commonly known by the <zeroemailbounce.com> domain name and Complainant does not address this point either. However, Respondent does mention that “[t]he website has NOT commenced business as of 20.01.2021” and that “the website is still in the development phase and we have no registered customers yet”. Finally, the Panel notes that Respondent is listed as “Karen P” in the WHOIS record for the disputed domain name. In view of the asserted arguments and the available evidence, the Panel finds no grounds upon which to find that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <zeroemailbounce.com> domain name in connection with a bona fide offering of goods or services and that it fails to make a legitimate noncommercial or fair use thereof as Respondent uses the domain name to pass itself off as and compete with Complainant. Using a confusingly similar domain name to compete with and pass oneself off as a complainant is not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”) Here, Complainant argues that the disputed domain name resolves to an active website that replicates certain elements of Complainant’s own website, www.zerobounce.net. With reference to the submitted screenshots of each party’s website, both Complainant’s and Respondent’s sites incorporate the mark “Zero Bounce” accompanied by a graphic logo in the top-left of the homepage, both offer email validation services, and both sell credits based on the number of email addresses a customer wishes to validate. Further, each uses an overall color scheme of yellow and black and Respondent’s website displays a number of yellow oval-shaped buttons under its offering of credits titled “Create Account” whereas Complainant’s site uses yellow oval buttons under its own offering of credits variously titled “Subscribe Now”, “Buy Now”, or “Activate Plan”. In its defense, Respondent states that its website “has its own unique design, technology” and “IT DOES NOT IN ANY SHAPE OR FORM LOOK OR FEEL LIKE www.zerobounce.net as the complainant states.” However, Respondent does not address the specific similarities noted above nor the possibility that its use of the phrase “Zero Bounce” on its website may infringe on Complainant’s above-mentioned trademark registrations, all of which predate the disputed domain name (although Respondent appears to be located in India the prices on its website are all stated in “USD” thus suggesting that it may be subject to the jurisdiction of multiple countries). Upon its review, the Panel concludes that Respondent’s website is, in fact, rather similar in design to the Complainant’s site. In view of the evidence and arguments presented by both parties, the Panel finds that Complainant has made a prima facie case that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name per Policy ¶¶ 4(c)(i). This case has not been sufficiently rebutted by Respondent.
Further, Respondent asserts that it chose the disputed domain name because its email validation services are “understandable from the word and domain name.” It goes on to claim that “[t]he word zero, no, never, clear, email, bounce are relevant words to the email validation industry” and, hence, are “free to be used as other competitors”. However, as noted above, Complainant owns prior trademark registrations for the ZEROBOUNCE mark in both the United States and India, the two most likely countries of Respondent’s operation. It is not the place of this Panel to supplant its own judgement over that of the USPTO or the Trade Marks Registry of India regarding the distinctiveness or registrability of Complainant’s mark. While the <zeroemailbounce.com> domain name inserts the intervening word “email” into Complainant’s mark, Respondent’s website itself displays the phrase “Zero Bounce” along with a graphic logo in the upper-left corner of its home page. This identity with Complainant’s registered mark undercuts Respondent’s claim that it is free to use words that it claims relate to email validation services. On balance, the Panel cannot find that the disputed domain name is a fair use per Policy ¶ 4(c)(iii).
Complainant contends that Respondent registered and uses the <zeroemailbounce.com> domain name in bad faith as Respondent uses the disputed domain name to disrupt Complainant’s business and to pass itself off as and compete with Complainant. Using a confusingly similar domain name to pass oneself off as and compete with a complainant can evidence bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes itself off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Here, Complainant notes that Respondent uses the disputed domain name to operate a website that purports to offer email verification/validation services in competition with Complainant’s own services and which may violate one or more of Complainant’s prior trademark registrations. It goes on to claim that the site attempts to passes itself off as originating with Complainant based upon submitted screenshots showing that Respondent uses the phrase “Zero Bounce” in the upper left-hand side of its home page, a similar black-and-yellow color scheme, the sale of “credits” to customers, and the appearance of similar yellow oval-shaped buttons under such credit offerings inviting users to take steps toward making such purchases. It also seems highly unlikely that Respondent was unaware of Complainant, at the time the disputed domain name was registered, given the very specific and technical nature of the email validation field of business. For its part, Respondent claims that “[t]he domain name has been registered and is being used in very good faith and in accordance with the service it provides…” It also claims that it “does not intend to use any of the ‘zerobounce’ marks…” This appears to be in contradiction to the evidence presented by Complainant showing that Respondent’s website does use the phrase “Zero Bounce” on its homepage. Respondent then makes the statement “[i]f it was a dispute about www.zerobounce.io or www.zerobounce.net then it would have been a legitimate claim.” This appears to be an admission by Respondent that its use of the “Zero Bounce” phrase on its website (absent the intervening word “email”) is not in good faith. After carefully considering the cases presented by both parties, and by a preponderance of the available evidence, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant contends that Respondent registered and uses the <zeroemailbounce.com> domain name in bad faith based upon its employing a WHOIS proxy service to hide its identity. Registering a disputed domain name with a privacy shield can further evidence bad faith per Policy ¶ 4(a)(iii). See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent's use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”) Here, Complainant argues that Respondent has utilized a proxy/privacy service to conceal its identity although it does not elaborate or specify how or why this benefits Respondent. As bad faith has already been found on other grounds, the Panel will not further consider its existence under this prong of Complainant’s argument.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zeroemailbounce.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: January 28, 2021
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