Zee TV USA, Inc. v. Aamir Siddiqi c/o DotCorner.com
Claim Number: FA0605000721969
Complainant is Zee TV USA, Inc. (“Complainant”), represented by Kay Lyn Schwartz, of Gardere Wynne Sewell, LLP, 1601 Elm Street, Suite 3000, Dallas, TX 75201. Respondent is Aamir Siddiqi c/o DotCorner.com (“Respondent”), H-77, K.D.A Staff Flats, Near Karsaz, Karachi, SINDH 75350, PK.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zeecinema.com>, registered with Enom, Inc.
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.
Richard DiSalle is the Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 5, 2006.
On May 31, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <zeecinema.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 8, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 28, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on June 27, 2006.
On July 5, 2006, Complainant timely submitted an Additional Submission that complied with the Forum’s Supplemental Rule No. 7. On July 11, 2006, Respondent timely submitted an Additional Submission, which also complied with the Forum’s Supplemental Rule No. 7.
On July 1, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Since 1995, Complainant Zee, along with its parent and affiliated entities (collectively, the "Zee Group"), continuously have used, and continue to use, the marks "ZEE" and "ZEE CINEMA" (collectively, the "ZEE Marks"), in connection with television broadcasting services. The Zee Group also uses in connection with its services various domain names, including <zee-cinema.com>, which is owned by an affiliate, Zee Telefilms, Ltd. The Zee Group is one of the world's leading television broadcasting companies, and is the largest worldwide provider of 24/7 television programming in South Asian languages. It is estimated that the Zee Group's television programming is viewed by over 350 million people in over 120 countries worldwide each year, including approximately 1.5 million people in North America who view programming that Complainant distributes.
As the owner of the world's largest privately held library of movies in South Asian languages, the Zee Group is able to offer "ZEE CINEMA" subscribers a wide range of movie selections, as well as programming suitable for all types of viewing audiences. Specifically, in North America, Complainant provides its "ZEE CINEMA" subscribers with 24/7 access to multiple movies per week by airing six films a day on the weekdays and seven films a day on weekends.
Complainant has acquired valuable rights and substantial goodwill in the ZEE Marks, examples of which are described and referenced on its website. In addition, Complainant has submitted to the United States Patent and Trademark Office various applications for federal registration for the marks "ZEE" and "ZEE CINEMA" and is the owner of U.S. Reg. No. 2,366,571.
Respondent's domain name, <zeecinema.com>, is identical or confusingly similar to Complainant's ZEE and ZEE CINEMA Marks. Respondent's website is a search portal for third party websites offering a variety of goods and services. Complainant submits that the domain name, <zeecinema.com>, is likely to cause confusion among consumers and internet users interested in South Asian programming and related services. When such consumers enter <zeecinema.com> into a web browser, expecting to find information about Complainant and/or its broadcasting services, consumers are instead brought to Respondent's site.
Complainant submits that Respondent's inclusion of these "movie" related categories of third party web sites in connection with the domain name, <zeecinema.com>, further creates a false impression among, and confuses, consumers interested in South Asian programming and related services that Respondent's site is somehow affiliated or sponsored by Complainant, when that clearly is not the case.
Complainant also claims that Respondent, Aamir Siddiqi c/o DotCorner.com, clearly has no rights in "ZEE" or "ZEE CINEMA" and is not known by <zeecinema.com>. Upon information and belief, at no time before having notice of this dispute has Respondent used or made any demonstrable preparations to use "ZEE," "ZEE CINEMA," “ZEECINEMA.COM,” or any corresponding domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). In addition, upon information and belief, Respondent is not making, and has never made, a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Complainant submits that Respondent's diversion of customers to Respondent's website by misleading them with a domain name that is confusingly similar to the ZEE Marks is not a legitimate use. Respondent is using the domain name, which is confusingly similar to the ZEE Marks, solely as a vehicle to draw Internet users to its search engine website.
It is also claimed that Respondent has registered and is using the domain name, <zeecinema.com>, in bad faith. Respondent is capitalizing on the goodwill of the "ZEE" and "ZEE CINEMA" marks by diverting Internet users to a website that essentially is a generic directory of unrelated web sites offering a variety of third party goods and services. Respondent's website offers links to third party web sites
offering goods/services related to movies (e.g., "Indian Movies," "Indian Actress," "Movie Download," "Movie Tickets,"), which are not affiliated with or sponsored by Complainant or by any other Zee Group entity. In addition, Respondent's website also links to third party sites offering goods and services wholly unrelated to Complainant's business, ranging from used car parts, casino and gambling sites to sites offering sexually explicit photographs and related services.
Respondent's use of the "ZEE" and "ZEE CINEMA" marks in association with these services creates a false association or perception that Complainant is related to Respondent, Respondent's website, or the third parties referenced on the website, when, in fact, no such association exists. In addition, the association of these third party sites with Complainant and the ZEE Marks tarnishes the ZEE Marks and their associated goodwill.
Complainant adds that Respondent was on notice as to the existence of Complainant and its marks when it registered <zeecinema.com> on February 8, 2002, and that, if Respondent had performed a rudimentary trademark investigation at the time of registration of the <zeecinema.com> domain name, Respondent would have been alerted as to Complainant and to the existence of the ZEE Marks.
Respondent claims that Complainant cannot say that it has a right to the “ZEE CINEMA” service mark, and asks, if it has been using it since 1995, why did it opt for registering “Z CINEMA” in September 2005 instead of “ZEE CINEMA”? It is clear that it does not have a service mark on “ZEE CINEMA.”
It is clear that the subject domain name <zeecinema.com> is not identical to Complainant service marks, i.e. “Z CINEMA.” Respondent agrees that <zeecinema.com> is identical to Complainant’s domain name <zee-cinema.com>. However, the domain name <zeecinema.com> was registered long before the Complainant’s registration of domain name. Also, there was no active/non-active trademark relating to “ZEE CINEMA” or even “Z CINEMA” at the time of registering <zeecinema.com>.
With respect to the issue of a legitimate interest in the domain name, Respondent states that it is in the business of providing search results and free email services on vanity domain names. The services offered by its company are purely legal and do not “indulge” with any other businesses. As with any search engine, the website always shows the links relating to typed search term. The same algorithm is followed at <zeecinema.com>. If a user types “Movies” in the search bar, the website will display results relating to movies. This is a normal behavior of Search Engine. Complainant has waited four years to “realize” that Respondent has no legitimate interest in the Domain Name.
On the issue of Bad Faith, Respondent says that the domain name <zeecinema.com> was registered in February 2002, and that it is clear that at the time of registering the domain name, Complainant only had one active trademark, “Z ZEE TV,” having Registration Number 2,366,571. This trademark in no case is identical to Respondent’s domain name <zeecinema.com>.
Since registering the domain name in 2002, Respondent has never contacted Complainant or put any information on its website, which suggests that Respondent is a part of Complainant’s group of companies.
C. Additional Submissions
(1) By Complainant:
In Complainant’s Additional Submission in reply to Respondent’s Response, Complainant claims that it is the owner of various “ZEE” and “Z” formative marks, including “ZEE” and “ZEE CINEMA,” which are used in connection with television broadcasting services (the “Marks”'). Complainant's Marks are protected under United States “common law” as well as under the federal trademark laws of the United States. In addition, Complainant is the owner of several federal trademark registrations for its Marks. Respondent does not deny that·Complainant possesses rights in “ZEE” or “ZEECINEMA” but instead objects to the way Complainant referenced its federal trademark applications/registrations in its Complaint.
Complainant is not relying solely on its federal applications/registrations in support of its contentions under the UDRP. Complainant also relies on its common law rights in ZEE and ZEE CINEMA, as well its family of "ZEE" marks, in support of its Complaint against Respondent under the UDRP. Even if Complainant had rights only in "Z" (as opposed to just "ZEE") and "Z CINEMA" (as opposed to just "ZEE CINEMA"), as Respondent alleges, Complainant submits that "Z" is phonetically similar to "ZEE" and provides further support for Complainant's position that the domain name at issue, <zeecinema.com>, is identical or confusingly similar to Complainant’s service marks in accordance with the Policy.
Respondent does not deny the allegations that Complainant raises in its Complaint, and in fact, admits that its use of the <zeecinema.com> domain name is not in connection with a bona fide offering of goods/services pursuant to Policy ¶ 4(c)(i) or that it constitutes a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Also, Respondent admits that it is in the "business of providing search results and free email services on [a] vanity [sic] [of] domain names," and that <zeecinema.com> is one of many of Respondent's domain names that are associated with one of these “search result” websites.
With respect to bad faith, Complainant argues that if Respondent had performed a rudimentary trademark investigation at the time of registration of the <zeecinema.com> domain name, Respondent would have been alerted as to Complainant and to the existence of the ZEE Marks. For example, Complainant’s U.S. federal registration No. 2,366,571 for the mark, Z ZEE TV, was filed in 1995, and was registered in 2000, two (2) years prior to when Respondent registered the domain name at issue. In addition, upon information and belief, at the time Respondent registered the domain name at issue, a search of the Internet would have revealed information concerning Complainant and "ZEE CINEMA" as the ZEE CINEMA mark was first used in 1995, seven (7) years prior to when Respondent registered the domain name at issue.
In addition, upon information and belief, Complainant avers that Respondent had actual knowledge of Complainant and its Marks. In fact, it points out that Respondent admits in its response that it was at least aware of Complainant (or its group of companies) when it registered the domain name <zeecinema.com> in 2002.
(2) By Respondent:
In its Additional Submission, Respondent claims that at the time of registering the domain name there was no trademark for “ZEE” or “ZEE CINEMA.” The trademarks were filed in 2005, which is three years after the registration of domain name. Respondent agrees that phonetically “Z” is pronounced as “ZEE” or may be “ZE” or maybe “ZED” depending on which part of the world one lives.
Respondent claims that it has been maintaining the website since 2002 and providing personal private email and search facilities. These services do not interfere in any case with services offered by Complainant. Spending money on domain name renewals, web hosting and web site running expenses shows that Respondent is serious with its business and will want to continue it.
Respondent also claims that it has never contacted complainant or any of its affiliates at any point in time since registering the domain name. It is offering legitimate services and is not involved in any illegal act.
(1) the domain name registered by the Respondent is identical to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(2) the 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 domain name registered by the Respondent is identical to a trademark or service mark in which the Complainant has rights.
Complainant is not required to own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
The ZEE CINEMA mark has acquired secondary meaning sufficient for Complainant to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark).
In addition, Complainant argues that Respondent’s <zeecinema.com> domain name is identical to Complainant’s ZEE CINEMA mark because the domain name wholly incorporates the mark and merely adds the generic top-level domain “.com.” We agree. The mere addition of a gTLD to Complainant’s mark is not sufficient for Respondent to differentiate the domain name from the mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the 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); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").
Respondent has no rights or legitimate interests with respect to the domain name.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the <zeecinema.com> domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).
Complainant maintains that Respondent is not commonly known by the <zeecinema.com> domain name, because the WHOIS information lists the registrant of the domain name as “Aamir Siddiqi c/o DotCorner.com,” and there is no other evidence in the record indicating that Respondent is commonly known by the <zeecinema.com> domain name. Complainant also asserts that it has not authorized or licensed Respondent to register a domain name incorporating Complainant’s ZEE CINEMA mark or any variation. Respondent is not commonly known by the <zeecinema.com> domain name, and has no rights or legitimate interests in the <zeecinema.com> domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003); see also Great S. Wood Preserving, Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000).
The domain name has been registered and is being used in bad faith.
Complainant claims that Respondent’s <zeecinema.com> domain name resolves to a commercial search engine page that displays links to various third-party websites, some of which resolve to the websites of Complainant’s competitors in the film business. Complainant also claims that Respondent is earning “click-through fees” for each consumer that follows the links on Respondent’s website. Respondent is profiting from the goodwill associated with Complainant’s ZEE CINEMA mark by redirecting Internet users seeking Complainant’s goods and services to Respondent’s own website for commercial gain. Therefore, Respondent has registered and is using the <zeecinema.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
By using the <zeecinema.com> domain name to provide links to Complainant’s competitors, Respondent has registered and is using the disputed domain name to disrupt Complainant’s business in violation of Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003).
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zeecinema.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: July 18, 2006
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