Zora Labs, Inc. v. Leonard James / Zoracles Group / Rasheed Richmond / Content
Claim Number: FA2304002040179
Complainant is Zora Labs, Inc. (“Complainant”), represented by Merri C. Moken of Paul Hastings, LLP, New York, USA. Respondent is Leonard James / Zoracles Group / Rasheed Richmond / Content (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zoralabs.com>, <zoralabsnda.com>, and <zoracles.com> (“Domain Names”), registered with GoDaddy.com, 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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to Forum electronically on April 14, 2023; Forum received payment on April 14, 2023.
On April 17, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <zoralabs.com>, <zoralabsnda.com>, and <zoracles.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 April 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 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@zoralabs.com, postmaster@zoralabsnda.com, postmaster@zoracles.com. Also on April 20, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith 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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entity that controls the <zoracles.com> domain name, Leonard James / Zoracles Group, is the same entity that controls the <zoralabs.com>, <zoralabsnda.com> domain names being Rasheed Richmond / Content. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant contends that the registrants are are related because: 1) the disputed domain names share the same registrar (GoDaddy.com LLC) and the same privacy service 2) Each of the Domain Names has resolved to websites purporting to offer NFT marketplaces and cryptocurrency-related goods 3) the address provided in the registration details for Leonard James is incorrect but this address corresponds to an address registrant Rasheed Richmond lived at for a number of years. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that two unconnected entities would register 3 similar domain names targeted at the same entity with the same registrar, with one entity using, as an address, the address that the other entity lived in for several years.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” in this Decision.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Zora Labs, Inc., operates as a prominent non-fungible taken marketplace platform. Complainant claims common law rights to the ZORA mark based on use and reputation since 2020. Respondent’s <zoralabs.com>, <zoralabsnda.com> and <zoracles.com> domain names are identical or confusingly similar to Complainant’s ZORA mark as each wholly incorporate the ZORA mark and appends the terms “nda” and suffixes “cles” or “labs”, as well as the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names and Complainant has not authorized or licensed Respondent any rights in the ZORA mark. Additionally, Respondent does not use the Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the Domain Names resolve to pages offering competing services.
Respondent registered and uses the Domain Names in bad faith. Respondent has demonstrated a pattern of bad faith registrations of Complainant’s mark. Respondent registered the Domain Names in order to disrupt Complainant’s business and divert customers for commercial gain. Respondent uses all three of the Domain Names to impersonate Complainant to provide competing goods and services. The <zoracles.com> domain name presently resolves to an inactive webpage which further demonstrates Respondent’s bad faith registration and use. Moreover, Respondent provided fictitious and misleading WHOIS information for the Domain Names. Finally, Respondent registered the Domain Names with actual knowledge of Complainant’s rights in the ZORA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the ZORA mark. Each of the Domain Names is confusingly similar to Complainant’s ZORA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Names and that Respondent registered and uses each of the Domain Names 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.
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”).
As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the ZORA mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017).
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 has operated a NFT (non-fungible token) marketplace under the ZORA mark from the website www.zora.co since 2020. While Complainant has only been founded relatively recently, the Panel is satisfied from Complainant’s evidence (including evidence of the number of significant, record-breaking NFT transactions which have been assembled and sold over the Zora platform, and its reputation in the NFT community evidenced by its community fundraising and number of social media followers) that Complainant’s use of the ZORA mark for its NFT marketplace is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the ZORA mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that each of the Domain Names are confusingly similar to the ZORA mark. Each of the Domain Names wholly incorporates the ZORA Mark adding certain suffixes or generic terms (such as “nda” and “labs”) and the gTLD “.com.” Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names 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 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (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 holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the ZORA mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Leonard James / Zoracles Group / Rasheed Richmond / Content” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
Each of the Domain Names resolves or has resolved to a website purporting to offer NFTs and/or crypto products in direct competition with Complainant. The use of a confusingly similar domain name to divert internet users to a website offering services in competition with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Although Complainant had only started using the ZORA mark in February 2020 The Panel finds on the balance of probabilities that at the time of registration of the Domain Names, March-May 2020, Respondent had actual knowledge of Complainant’s ZORA since there is no obvious explanation, nor has one been provided, for an entity to register a series of domain names that wholly incorporated the coined ZORA mark and use them to offer services in direct competition with the services offered by Complainant under the ZORA Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith under Policy ¶ 4(b)(iv) to create confusion with Complainant’s ZORA Mark for commercial gain by using the confusingly similar Domain Names to resolve to websites offering NFT marketplace services in direct competition with Complainant. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website can show bad faith registration and use per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (finding bad faith where the respondent used the infringing domain name to disrupt the complainant’s business by diverting Internet users from the complainant’s website to the respondent’s website where it offered competing printer products). Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶ 4(b)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zoralabs.com>, <zoralabsnda.com>, and <zoracles.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May 17, 2023
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