Zora Labs, Inc. v. Egor Antonov
Claim Number: FA2303002034980
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoratech.site>, registered with Registrar of Domain Names REG.RU LLC.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to Forum electronically on March 8, 2023; Forum received payment on March 8, 2023.
On March 10, 2023, Registrar of Domain Names REG.RU LLC confirmed by e-mail to Forum that the <zoratech.site> domain name is registered with Registrar of Domain Names REG.RU LLC and that Respondent is the current registrant of the name. Registrar of Domain Names REG.RU LLC has verified that Respondent is bound by the Registrar of Domain Names REG.RU LLC 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 March 14, 2023, Forum served the Complaint and all Annexes, including a Russian and English language Written Notice of the Complaint, setting a deadline of April 3, 2023, 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@zoratech.site. Also on March 14, 2023, the Russian and English language 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 claims common law rights in the ZORA mark. Respondent’s <zoratech.site> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the ZORA mark in its entirety and merely adds the term “tech” and adds the “.site” generic top-level domain (“gTLD”)
Respondent has no legitimate interests in the <zoratech.site> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the ZORA mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves a page offering competing goods and services.
Respondent registered and uses the <zoratech.site> domain name in bad faith. Respondent registered the disputed domain name in order to disrupt Complainant’s business and divert customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ZORA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Zora Labs, Inc. (“Complainant”), of San Francisco, CA,USA. Complainant is the owner of common law rights in the mark ZORA, which it has used continuously since at least as early as 2020 in relation to its non-fungible token (NFT) marketplace platforms which facilitate the sale of NFT goods and services.
Respondent is Egor Antonov (“Respondent”), of Kazan, Tatarsan, Russia. Respondent’s registrar’s address appears to be Russia as well. The Panel notes that the <zoratech.site> domain name was registered on or about February 18, 2023.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
PANEL NOTE: SUPPORTED LANGUAGE REQUEST
The Panel notes that Complainant request that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Russian language Registration Agreement. Pursuant to UDRP Rule 11(a), and in light of the language of the resolving website, the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Complainant claims it holds common law rights in the ZORA mark and does not currently hold a trademark registration. Policy ¶ 4(a)(i) does not require a complainant to own a trademark registration prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant argues that it has acquired common law rights in the mark based on its use of the mark since February 2020. Complainant additionally provides evidence that it began using its mark via registered domain names in 2020 and also filed for trademark registration with the USPTO that year, with the decision on that application currently pending. Further, Complainant indicates its presence on social media and its position in the exchange of millions of dollars for NFT transactions using its platform(s). The Panel here finds that Complainant holds common law rights in the ZORA mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues Respondent’s <zoratech.site> domain name is identical or confusingly similar to Complainant’s ZORA mark as it contains the ZORA mark in its entirety and merely adds the term “tech” and the “.site” gTLD. The addition of a generic or descriptive phrase and gTLD fails to sufficiently distinguish a disputed domain name from a 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). The Panel here finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes 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), then the burden shifts to Respondent to show 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”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant contends Respondent lacks rights or legitimate interests in the <zoratech.site> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the ZORA mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, 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)”). The WHOIS information for the disputed domain name lists the registrant as “Egor Antonov”, and there is no evidence to suggest that Respondent was authorized to use the ZORA mark. The Panel here finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the <zoratech.site> domain name redirects to another site offering competing goods and services. Where the respondent uses a disputed domain name to redirect users to another site offering competing goods and services, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Here, Complainant provides screenshots of the disputed domain name offering competing goods. Thus, the Panel here finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <zoratech.site> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Where the respondent uses a disputed domain name to pass themselves off as a complainant, the Panel may find evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”) Here, Complainant provides screenshots of the disputed domain’s resolving page and Complainant’s own resolving page. The Panel here finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii) or (iv).
Complainant argues that Respondent had knowledge of Complainant’s rights in the ZORA mark at the time of registering the <zoratech.site> domain name. To support this assertion, Complainant points to its commercial presence and reputation, as well Respondent’s use of the mark on its website in directing users to Complainant’s competitors. The Panel here finds that Respondent did have actual knowledge of Complainant’s right in its mark, which further supports a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <zoratech.site> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 25, 2023
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