Zimmermann Wear Pty Ltd v. Sam Dumond
Claim Number: FA1808001802176
Complainant is Zimmermann Wear Pty Ltd ("Complainant"), represented by Elizabeth A. Jaffe of Golenbock, Eiseman, Assor, Bell & Peskoe, LLP, New York, USA. Respondent is Sam Dumond ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zimoutlet.com>, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 20, 2018; the Forum received payment on August 20, 2018.
On August 20, 2018, GoDaddy.com, LLC confirmed by email to the Forum that the <zimoutlet.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 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 email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on August 20, 2018, the Written Notice of the Complaint, notifying Respondent of the email 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 David E. Sorkin 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.
Complainant is an Australian company that creates and sells high-end and distinctive women's clothing. Complainant has showrooms or stand-alone retail stores in Australia, the United States, and elsewhere, and since 2008 has operated an online boutique at <www.zimmermannwear.com>. Complainant has used the ZIMMERMANN mark in connection with its products since 1991, and owns trademark registrations for the mark in Australia, the United States, China, and other jurisdictions.
Respondent registered the disputed domain name <zimoutlet.com> in January 2018 and is using it for a website that displays the ZIMMERMANN mark and contains a photograph of Complainant's store in Beverly Hills, California. The site offers for sale merchandise similar to that offered by Complainant, and that Complainant states is likely to be counterfeit versions of Complainant's products. Complainant states that it has received a complaint from a consumer who placed an order from Respondent's website believing that it was legitimate, but received a pair of sunglasses shipped from China instead of the item that she had ordered.
Complainant asserts that Respondent is an alias for the true registrant of the disputed domain name, and that the true registrant is likely to be the same as the respondent in a similar proceeding under the Policy, Zimmermann Wear Pty Ltd v. Congj Buxar, FA 1761720 (Forum Jan. 11, 2018) (ordering transfer of <zimmermannoutlet.com>), which involved facts similar to those alleged here. Complainant notes that the contact information provided by Respondent appears to be fictitious and bears "an uncanny resemblance" to that provided by the respondent in the prior proceeding.
Complainant contends on the above grounds that the disputed domain name <zimoutlet.com> is confusingly similar to its ZIMMERMANN mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has not proved that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.
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 disputed domain name incorporates the first three letters of Complainant's registered ZIMMERMANN mark, adding the generic term "outlet" and the ".com" top-level domain. Complainant does not assert that it uses or is known by ZIM, and therefore the Panel must determine whether the domain name incorporates enough of Complainant's ZIMMERMANN mark to render it confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
The test for confusing similarity involves a side-by-side comparison of the letters, words, sound, and other sensate aspects of the disputed domain name to the corresponding aspects of the relevant trademark. See, e.g., MasterCard Int'l Inc., MasterCard Europe SPRL v. IT Manager/ Crosspath, D2009-1714 (WIPO Feb. 15, 2010). Where a domain name incorporates the trademark in its entirety or at least a dominant feature of the mark, it will normally be considered to be confusingly similar for purposes of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, §§ 1.7, 1.15 (3d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview3.0/. The manner in which the domain name is used, including the content of the associated website, is normally disregarded for purposes of this analysis. See, e.g., MasterCard Int'l Inc., MasterCard Europe SPRL v. IT Manager/ Crosspath, supra.
Although Complainant has not offered any authority on this issue, the Panel has considered various decisions under the Policy involving domain names that incorporate the first few letters of a longer mark. In Fuji Photo Film U.S.A., Inc. v. Center for Ban on Drugs, D2004-0970 (WIPO Feb. 25, 2005), the Panel found <fujfilm.com> to be confusingly similar to FUJI, on the grounds that it combined the first three letters of the four-letter mark—"essentially the entirety of Complainant's mark"—with a generic term for the complainant's principal product. Similarly, in Chevron Intellectual Property LLC v. Linda Hearn, FA 1409285 (Forum Nov. 15, 2011), the Panel found <chevoil.com> to be confusingly similar to CHEVRON, combining the first four letters of the mark with a term descriptive of the complainant's products and services. In Tesco Stores Ltd. v. Mat Feakins, DCO2013-0017 (WIPO Oct. 4, 2013), the Panel found <tes.co> to be confusingly similar to TESCO, even though the second-level component of the domain name corresponded to only the first three letters of the mark, on the grounds that the domain name taken in its entirety was identical to the complete mark but for the intervening dot.
Confusing similarity is particularly likely to be found where a mark is commonly referred to by its first syllable, and of course where the complainant also possesses trademark rights in the truncated form of the mark. See, e.g., Supercell Oy v. WhoisProxy.com Ltd / Jordan Rash, Application Automation LLC, D2015-1445 (finding <clashbot.org> confusingly similar to CLASH OF CLANS, based upon evidence that the mark is often abbreviated to “CLASH”); Caterpillar Inc. v. Jonathan Scandreth, FA 1348137 (Forum Nov. 8, 2010) (finding <cataxles.com> and other domain names confusingly similar to CAT and CATERPILLAR, based upon registered trademark rights in both forms of the mark); Anheuser-Busch Inc v. Dot Com Internet Solutions, D2001-0500 (WIPO June 13, 2001) (finding <budcommercials.com> and other domain names confusingly similar to BUD and BUDWEISER, based upon registered trademark rights in both forms of the mark).
The decisions cited above are all distinguishable from the present matter. The disputed domain name incorporates only three letters of a ten-letter trademark. While those letters correspond to the first syllable of the mark, it is not clear that they serve as the distinctive or dominant aspect of the mark. Complainant has not claimed that it has rights in ZIM or that its ZIMMERMANN mark is commonly referred to in this truncated manner. (Indeed, a cursory Google search for "zim" would likely lead one to conclude that these letters standing alone almost never refer to Complainant.) Nor does the generic term "outlet" that the domain name appends to these three letters bear any obvious connection to Complainant or its products; an "outlet" could be a discounter or retailer of virtually any sort of products.
In the Panel's view, Complainant has failed to meet its burden of proving that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights.
As the Panel's finding with regard to Paragraph 4(a)(i) is dispositive, the Panel declines to reach the issues of rights or legitimate interests and registration and use in bad faith.
Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <zimoutlet.com> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: September 17, 2018
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