RevZilla Motorsports LLC v. Tom D’Azevedo
Claim Number: FA1304001496506
Complainant is RevZilla Motorsports LLC (“Complainant”), represented by Sid Leach of Snell & Wilmer L.L.P., Arizona, USA. Respondent is Tom Dazevedo (“Respondent”), represented by Bryce J. Maynard of Buchanan Ingersoll & Rooney PC, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <partzilla.com>, registered with Godaddy.com, LLC (“Godaddy”).
The undersigned, David Tatham, The Honourable Neil Anthony Brown QC, and David A Einhorn, certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 25, 2013; the Forum received payment on April 25, 2013.
On April 26, 2013, Godaddy confirmed by e-mail to the Forum that the disputed domain name <partzilla.com> was registered with it and that Respondent is the current registrant of the name. Godaddy has also verified that Respondent is bound by its 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 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2013 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 email@example.com. Also on April 30, 2013, 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 determined to be complete on May 20, 2013.
An Additional Submission was submitted by Complainant and found to be complete on May 29, 2013.
A further Additional Submission was submitted by Respondent and found to be complete on June 3, 2013.
On June 4, 2013 pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed David H Tatham, The Honourable Neil A Brown QC, and David A Einhorn as Panelists.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant was founded in 2007 by a group of motorcycle riders to provide other motorcycle riders with jackets, leathers, protection and armor, helmets, boots and gear via an online website. This site is located at <revzilla.com> and Complainants believe that the name REVZILLA has become known as the source of quality goods and excellent customer service.
Complainant believes that Respondent sells identical goods via a website at the disputed domain name <partzilla.com> and that the similarity of names has created confusion. As proof thereof, Complainant related how a purchaser of some of Respondent’s goods which proved to be faulty had posted a criticism of Complainant, mistakenly believing them to be the source. However, he later apologized for having confused the two names. Complainant believes that if one customer has been confused by the similarity of the two names, it is reasonable to infer that others may also have been.
Complainant has a trademark registration for REVZILLA which was registered at the USPTO in August 2012.
Complainant also uses the mark “Teamzilla” to refer to its rewards program in which a “TeamZilla Cash” account is created for participating customers. As a result, Complainant claims to have common law rights in the service marks “TeamZilla Cash”, “Zilla Cash”, “Zilla Picks” and “TeamZilla Rewards Club”. Furthermore, the ZILLA portion of Complainant’s name and trademark REVZILLA is given emphasis on its website where the word REV is printed in white, with the word ZILLA in red.
Complainant believes that a company called Powersports Plus LLC (“Powersports”), who is one of its competitors, is actually doing business under the disputed domain name <partzilla.com> and that this name was chosen because of its similarity with its own name Revzilla. After receiving a letter from Complainant objecting to its use of the disputed domain name <partzilla.com>, Powersports changed it so that it is now the <powersportsplus.com> name that resolves to the website previously accessed through the disputed domain name <partzilla.com>. This latter name is now used to divert internet traffic to one of Respondent’s websites where goods that are similar to those offered by Complainant can be obtained.
Complainant contends that the disputed domain name <partzilla.com> is confusingly similar to its registered trademark REVZILLA. They look similar and the suffix ZILLA, which is common to both names, tends to dominate. Complainant believes that the dominant portion of a mark should be given greater weight in evaluating the possibility of confusion. The two names both consist of only one word, they both have only three syllables two of which are identical, and five of the letters in both marks are common to both. Furthermore, that common part – ZILLA – is emphasized by Complainant in use, and it has employed this name in a number of other service marks. Complainant was the first to use “zilla” in connection with the goods that are common to both companies, i.e. motorcycle apparel and accessories.
Complainant also asserts that Complainant, who is Mr. Tom D’Azvedo, is not commonly known by the disputed domain name and so has no rights or legitimate interest in it. Complainant believes that Complainant acquired the disputed domain name by transfer in October 2012. Prior to this it was simply parked. Once the disputed domain name came into the possession of Mr. D’Azvedo, he copied on to its website pages from his other website at <powersportsplus.com>. Complainant therefore believes that Respondent is attempting to profit by using the disputed domain name to redirect internet traffic to his own website. This is neither a bona fide offering of goods and services, nor a legitimate non-commercial or fair use.
Complainant further contends that Respondent has registered and used the disputed domain name in bad faith. Complainant claims to have used the name REVZILLA for five years and competed commercially with Powersports Plus LLC. However once the disputed domain name had been acquired and used, the inference can be drawn that it is being used to disrupt Complainant’s business which, in the opinion of Complainant, is an example of bad faith.
Furthermore, as pointed out above there has been actual confusion between the two similar names, and this is evidence of bad faith.
As a further example of Respondent’s bad faith, he has knowingly registered and used the domain name PARTZILLA because it is confusingly similar to Complainant’s own mark REVZILLA and he has diverted internet customers to his own websites where he sells competing goods and services.
Respondent refutes the claim that the disputed domain name PARTZILLA is confusingly similar to Complainant’s name and trademark REVZILLA.
He contends that the suffix -ZILLA, which is common to both marks is extremely weak, and Respondent exhibited an extract from Wikipedia which states that the suffix ZILLA denotes the monster-like qualities of GODZILLA, which is the name of a Japanese movie featuring a monster of that name. Furthermore, the entry states that -ZILLA is popular for the names of software and websites as well as being often found in popular culture to imply some form of excess.
Respondent also says that there are over 240 active trademark registrations and applications in the U.S. which have the suffix -ZILLA, including three registered for motorsports parts and accessories. In addition, there are, according to Respondent, a number of common law users, online retailers, blogs, discussion forums, and other websites with names concluding with, or including, the –ZILLA suffix.
Respondent dismisses Complainant’s claim to be the first to use the –ZILLA suffix in connection with motorcycle accessories and apparel as being irrelevant and unproven.
Respondent also believes that it is in fact the first syllable in a mark which is usually accorded greater weight not the last as Complainant contends and, in this case, the prefixes REV- and PART- are not at all similar in appearance, pronunciation, spelling, meaning, connotation or commercial impression.
Respondent also dismisses Complainant’s claim to have rights in ‘zilla’ because of its use of several unregistered names that contain this word, as this is backed up by only a few isolated printouts from Complainant’s website and these are insufficient to be able to make a claim for common law rights.
In short, the two names are not confusingly similar.
With regard to the second element of paragraph 4(a) of the Policy, Respondent states that he does have legitimate rights and interests in the disputed domain name because it is the name by which one of his companies is commonly known. He has used it in connection with a bona fide offering of goods and services since January 2013. This was prior to any notice of the dispute and was when Respondent started the process of changing the name of his company from Powersports Plus, LLC to the more distinctive name Partzilla. This has been a gradual process so it is therefore unsurprising that Complainant should have found some pages on the company’s website that still refer to the old name.
Contrary to Complainant’s assertions, Respondent asserts that he is not using the disputed domain name to disrupt Complainant’s business, nor is it being used
to create a likelihood of confusion with Complainant’s mark.
Respondent denies that he is a competitor of Complainant’s business. His business under the disputed domain name is as an authorized dealer representing several of the most popular brands in the motorsports industry, selling replacement parts made by the manufacturers of the original parts. Complainant, on the other hand, sells aftermarket parts and accessories which have not been made by the original manufacturer and the customers for these will be unlikely to buy original parts or accessories. There is a very minimal overlap between the products of the two companies.
Respondent contends that there is no risk of disruption to Complainant’s business by reason of the Respondent’s acquisition and use of the disputed domain name. The websites of the two parties are completely different in appearance and it is highly unlikely that anyone familiar with Complainant’s site would be confused by Respondent’s site.
Respondent contends that there is no evidence to support Complainant’s allegation that he must have been aware of Complainant’s name when purchasing the disputed domain name.
Respondent argues that the matter is, in reality, a trademark dispute and he accuses Complainant of improperly using the Policy as a means of resolving a clash between two trademarks. As an aside, he opines that it is highly unlikely that Complainant would succeed if it were to file a trademark infringement lawsuit.
C. Additional Submissions
As noted above, both parties filed an Additional Submission.
Although Respondent has argued that the suffix –ZILLA is non-distinctive and dilute, nevertheless he states that the name PARTZILLA was chosen because he was looking for a more forceful and distinctive name for his business. Complainant contends that these two statements are inconsistent agreeing with Respondent that the disputed domain name is “distinctive”, but contending that this is only because its own name REVZILLA is distinctive.
Furthermore, it is irrelevant that the trademark REVZILLA was only registered as a trademark two months prior to Respondent’s acquisition of the disputed domain name, because in fact the name REVZILLA had actually been known and in use for the previous five years. Indeed, both companies were listed as recipients of an e-mail from a third party in May 2008. Thus Respondent must have been aware of Complainant and its REVZILLA name at that time. Complainant contends that Respondent maintains hundreds of websites under his various affiliated companies and it is far-fetched to think that he could have chosen the name PARTZILLA in ignorance of Complainant’s name REVZILLA.
Respondent has referred to the many trademarks which contain the suffix –ZILLA but none of them are used in Complainant’s field of goods and services. Indeed, of the two –ZILLA names cited by Respondent as being in the business of selling motorsports accessories, neither of them do in fact do so. Any third party use of a name ending in –ZILLA in a different field would not cause a customer for Complainant’s goods or services to give any less weight to this suffix.
Complainant attempts to refute Respondent’s claim that the evidence of actual confusion submitted by Complainant is unreliable by providing detailed information about the Complainant concerned. Complainant also supplied copies of three e-mails from individuals who either thought the two companies might be related, or mistakenly sent to Complainant hyperlinks from Respondent’s website, or thought that Respondent’s choice of name was because some of Complainant’s success would rub off on Respondent. Complainant contends that these are all evidence of actual confusion, and it concludes that the names are confusingly similar and that the disputed domain name could only have been chosen by Respondent in an effort to trade off Complainant’s goodwill.
Respondent states that Complainant, in its Additional Submission has blatantly misrepresented what Respondent had said in his Declaration. His existing name – “Powersports Plus” – was both generic and non-distinctive. Hence his search for a more distinctive name. His choice of PARTZILLA did not mean that he believed all –ZILLA names were strong and distinctive, or that Complainant’s mark REVZILLA was weak or dilute, he just believed that PARTZILLA would be more distinctive and memorable than Powersports Plus. The suffix –ZILLA, because of its association with the movie ‘Godzilla’, has come to be commonly used to imply some form of excess, and Respondent annexed copies of several newspaper references to this aspect of the name.
There is no evidence that Respondent had any knowledge of Complainant’s name or mark when choosing the disputed domain name. The only ‘evidence’ is a 2008 e-mail which was allegedly sent to both parties to this dispute. In fact, there were 117 recipients of this e-mail and the e-mail address of Powersports Plus is in fact the address for the previous owner of the company before it was acquired by Respondent and before he actually began using the name. He therefore never saw or received this e-mail.
As Complainant has said, Respondent does have many affiliated companies which are in a variety of different fields, other than motorsports. It is not realistic to assume that Respondent should have actual knowledge of all of his competitors in all of those fields. Respondent also annexed evidence to show that when he acquired the disputed domain name he was considering using it in connection with automotive and boating parts, in addition to motorsports accessories.
In Respondent’s opinion the UDRP process is intended to address cybersquatting and is inappropriate to address what is, in effect, a trademark dispute. Complainant’s arguments in this case are unsubstantiated. In a U.S. District Court, Complainant would be obliged to provide positive proof of its arguments.
Respondent concludes by alleging that Complainant has –
· Made blatantly false and misleading statements;
· Ignored evidence supplied by Respondent to the effect that the suffix –ZILLA is weak and dilute;
· Failed to show any strong evidence of actual confusion;
· Failed to adequately respond to Respondent’s arguments that he has legitimate rights and interest in the disputed domain name.
Complainant was founded in 2007 when it began an online retail business selling motorcycle apparel and accessories. Its trademark REVZILLA was registered in the USA in 2012.
Respondent operates a network of over 400 companies involved in marine, power sports, and outdoor pursuits. One of his companies was originally called PowerSports Plus but this name was changed to Partzilla early in 2013.
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.
The names to be compared are REVZILLA and PARTZILLA because it is
well established that for the purposes of comparison under the Policy, a .com suffix is to be ignored. See, for example, Rollerblade, Inc, v. Chris McCrady, D2000-0429 (WIPO June 25, 2000) in which the Panel found that a top level domain name such as “net” or “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the Complainant’s trademark. See also Bank of America Corporation v. Bill McCall, FA 135012 (NAF December 31, 2002) holding that attaching a gTLD to a domain name is “unable to create a distinction capable of overcoming a finding of confusing similarity”.
Both parties agree that the only element that is common to both is the suffix ZILLA. In the opinion of Complainant, this suffix is sufficient to make the two names confusingly similar. It has a U.S. trademark registration of REVZILLA No. 4,186,105 in respect of “Online retail store services featuring motorcycle apparel and accessories” in Class 35. The registration is dated August 7, 2012, claiming October 1, 2007 as its date of first use.
The disputed domain name <partzilla.com> was first registered in February 2003 but it was acquired by Respondent in October 2012. It seems that the PARTZILLA is a rather good choice for a company selling a quantity of spare parts.
Complainant maintains that the common suffix is sufficient to make the two names confusingly similar, particularly as both parties are trading in similar goods, i.e. motorcycle apparel and accessories on the part of Complainant, and OEM powersports accessories on the part of Respondent.
However, Respondent argues that the word ZILLA has several meanings, and that it is commonly used by other companies, usually as a suffix. He also argues that there are numerous trademark registrations having the same suffix and that it is in fact dilute. For example, Respondent filed an extract from the online encyclopedia Wikipedia which referred to the suffix –ZILLA as being derived from the fictional monster GODZILLA. As a result, -Zilla has been added to many names and trademarks to denote something which is extravagantly large or imposing. The suffix might also have some resonance with the word ‘zillion’ meaning and extremely large but unspecified number, quantity, or amount.
Respondent also drew attention to six U.S. trademark registrations among the allegedly 240 active registrations or pending applications with the suffix -ZILLA namely: SHOPZILLA, DISCZILLA, SYNZILLA, AGRIZILLA, YARNZILLA, and OFFICEZILLA. There are also registrations of QUADZILLA, SPORTZILLA, and RACKZILLA all of which cover Complainant’s goods of motorsports parts and accessories.
The case of HomeVestors of America, Inc. v. Cristino Chico FA904273 (NAF April 2, 2007) was one in which the Complainant owned the name WE BUY UGLY HOUSES and the disputed domain name was I SELL UGLY HOUSES. The Panel held that the common part of both names, namely “ugly houses”, was generic and similarity was denied.
Also, it was said in Tire Discounters, Inc. v. Tirediscounter.com FA 679485 (NAF 14,2006) that “because the mark is merely descriptive, small differences matter. In the Internet context, consumers are aware that domain names for different websites are often quite similar and that small differences matter.”
The Panel believes that both of these decisions are relevant to the present case.
However it was said in American Airlines, Inc. v. MegaWeb.com Inc. (NAF April 13, 2010) that the argument that a disputed domain name may be comprised of common or generic terms is not applicable under paragraph 4(a)(i) of the Policy.
The Panel believes it is not unreasonable to hold that there is no confusing similarity where, as in this case, the two names have a suffix in common and one moreover that is also a dictionary word, but no similarity between their prefixes. There needs to be much more similarity between the prefixes than there is between REV- and PART for there to be a finding of overall confusing similarity. That is because, in the final analysis, the meaning of Paragraph 4(a)(i) of the Policy is that a Panel must decide if there is, at the time of the Complaint, confusing similarity between the disputed domain name and Complainant’s trademark, i.e. making a straight comparison between the two without having regard to any extraneous factors that are, for the purposes of this paragraph, irrelevant.
In view of the above findings, The Panel has no need to make any finding under paragraphs 4(a)(ii) or 4(a)(iii) of the Policy, Rights or Legitimate Interests or Registration and Use in Bad Faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED. Accordingly, it is ordered that the <partzilla.com> domain name REMAIN WITH Respondent.
However this finding does not preclude a filing in Federal Court if Complainant were to choose to bring one. As was said in Rigidized Metals Corporation v. Rimex Metals (UK) Ltd. D2006-0662 (WIPO July 13, 2006) “A domain name dispute proceeding generally is not an appropriate forum to resolve questions involving the legitimacy of trademark registrations or infringement”.
David H Tatham (Chairman), and The Honourable Neil Anthony Brown QC,
David A Einhorn, Panelists
Dated: June 25, 2013
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