h
Zoological Society of San Diego v. Above.com Legal
Claim Number: FA1204001439828
Complainant is Zoological Society of San Diego (“Complainant”), represented by Nicholas S. Barnhorst of The Trademark Group, APLC, California, USA. Respondent is Above.com Legal (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sandiegowildanimalzoo.com>, registered with Above.com, Pty. Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 17, 2012; the National Arbitration Forum received payment on April 17, 2012.
On April 17, 2012, Above.com, Pty. Ltd. confirmed by e-mail to the National Arbitration Forum that the <sandiegowildanimalzoo.com> domain name is registered with Above.com, Pty. Ltd. and that Respondent is the current registrant of the name. Above.com, Pty. Ltd. has verified that Respondent is bound by the Above.com, Pty. Ltd. 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, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2012 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@sandiegowildanimalzoo.com. Also on April 20, 2012, 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 is the owner of the following United States Trademark Registrations relevant to this Complaint:
SAN DIEGO ZOO (Reg. No. 1,804,440; International Class 16) - albums; namely, photograph or scrapbook albums; books; namely, address books, appointment books, coloring books, children’s books, and note books; cards; namely, greeting cards, note cards, picture postcards, and trading cards; paper party products; namely, party hats, paper gift wrap and bows, boxes, paper bags, paper table linens, and paper party decorations; bulletin boards, bumper stickers, notebooks, note paper, decals, folders, binders, art prints, arts and crafts kits, book covers, bookends, and bookmarks.
SAN DIEGO ZOO (Reg. No. 1,828,384; International Class 28) - toys and games; namely, action or play figurines, plastic animal replica figurines, party favors in the nature of small toys, and plush animals.
SAN DIEGO ZOO (Reg. No. 1,828,336; International Class 25) - clothing;
namely, shirts, T-shirts, tank tops, jerseys, sweatshirts, beachwear.
SAN DIEGO ZOO (Reg. No. 1,830,374; International Class 18) - carrying receptacles; namely, tote bags, traveling bags, book bags, backpacks, textile, mesh or leather shopping bags, waist packs, key cases, coin purses, pocketbooks, wallets, and purses.
SAN DIEGO ZOO (Reg. No. 1,946,914; International Class 41) - educational and entertainment services, namely conducting classes, seminars and shows which involve the use of live and/or prerecorded audio or video scripts and music, the exhibition of wild animals, and talks or appearances by zookeepers, zoo personnel, and/or live costumed characters.
SAN DIEGO ZOO SAN DIEGO WILD ANIMAL PARK and Design (Reg. No. 1,951,266; International Classes 16 and 25) – (16) - albums, namely, photograph or scrapbook albums; books, namely address books, appointment books, coloring books, children’s books, adult non-fiction books in the areas of zoological, horticultural, and environmental issues, and note books; cards, namely greeting cards, note cards, picture postcards, and trading cards; paper party products, namely party hats, paper gift wrap and bows, boxes, paper bags, paper table linens, and paper party decorations, bulletin boards; bumper stickers, note paper, decals, folders, binders, art prints, posters, arts and crafts paint kits, book covers, bookends, bookmarks, and calendars; and (25) - clothing, namely shirts, T-shirts, tank tops, jerseys, sweatshirts, sweaters, shirts, sweatpants, pants, leotards, sleepwear, beachwear, jackets, belts, rainwear, socks, aprons, cloth bibs, kerchiefs, and wristbands; headwear, namely hats, caps, visors, and head bands; neckwear, namely scarves, bandannas, and neckties.
SAN DIEGO ZOO SAN DIEGO WILD ANIMAL PARK and Design (Reg. No. 2,113,280; International Class 41) - educational and entertainment services, namely organizing and conducting instructional and entertainment programs, classes, seminars, exhibits, events, lectures, costumed character performances, shows, and workshops in the field of wildlife and wildlife conservation; and, disseminating information and educational literature therewith in the field of wildlife and wildlife conservation.
SAN DIEGO ZOO (Reg. No. 2,206,289; International Class 09) - pre-recorded CD-ROM discs and computer software in the field of education, namely, teaching adults and children about animals, featuring wildlife, plant life, and wildlife and environmental preservation issues.
SAN DIEGO ZOO INSTITUTE FOR CONSERVATION RESEARCH (Reg. No. 3,847,040; International Classes 36, 41 and 42) – (36) - fund-raising services directed to the health, well-being and breeding potential for vanishing wildlife creatures and to conservation of animals, plants and habitats; (41) - educational services namely, organizing and conducting educational programs such as seminars, lectures, camps and workshops in the field of conservation of animals, plants and habitats; distribution of educational course materials in connection therewith; disseminating educational literature of others in the field of conservation of animals, plants and habitats; and (42) - research services in the fields of life sciences, species and habitat sustainability, biomimicry, and worldwide field projects to benefit endangered species and habitats.
SAN DIEGO WILD ANIMAL PARK (Reg. No. 1,953,191; International Classes 20, 21, 25 and 28) – (20) - sleeping bags; boxes, namely non-metal jewelry boxes, plastic boxes, and wood boxes; plastic key chain tags; picture frames; and sculptures, statuettes, and figures made of plaster, resin, plastic, or wood; (21) - non-metal baskets, bird feeders, bottles sold empty, bowls, lunch boxes, canteens, coasters not of paper nor table linen, cookie cutters, cups, mugs, plates, drinking glasses, napkin holders, commemorative or decorative plates, serving platters not of precious metal, sculptures of china, crystal, earthenware, glass, and porcelain, stained glass sun catchers, vases, and windchimes; (25) - clothing, namely shirts, T-shirts, tank tops, jerseys, sweatshirts, sweaters, shorts, sweatpants, pants, leotards, sleepwear, beachwear, jackets, belts, rainwear, socks, aprons, cloth bibs, kerchiefs, and waistbands; headwear, namely hats, caps, visors, and headbands; neckwear, namely scarves, bandannas, and neckties; and (28) - toys and games, namely action or play figurines, plastic animal replica figurines, water squirting toys, mechanical action and mobile toys, baby rattles, kites, jigsaw puzzles, board games, party favors in the nature of small toys, costume masks, and plush animals; dolls, holiday items, namely Christmas tree ornaments and decorations tree skirts and artificial wreaths; and protective head covers for golf clubs.
WILD ANIMAL PARK (Reg. No. 1,951,265; International Classes 16 and 25) – (16) - albums, namely photograph or scrapbook albums; books, namely address books, appointment books, coloring books, children’s books, adult non-fiction books in the areas of zoological, horticultural, and environmental issues, and note books; cards, namely greeting cards, note cards, picture postcards, and trading cards; paper party products, namely party hats, paper gift wrap and bows, boxes, paper bags, paper table linens, and paper party decorations; bulletin boards; bumper stickers, note paper, decals, folders, binders, art prints, posters, arts and crafts paint kits, book covers, bookends, bookmarks, and calendars; and (25) - clothing, namely shirts, T-shirts, tank tops, jerseys, sweatshirts, sweaters, shorts, sweatpants, pants, leotards, sleepwear, beachwear, jackets, belts, rainwear, socks, aprons, cloth bibs, kerchiefs, wristbands; headwear, namely hats, caps, visors, and head bands; neckwear, namely scarves, bandannas, and neckties.
Furthermore, Complainant currently owns the registration of the following domain names, among several others: <sandiegozoo.com>; <sandiegozoo.net>; <sandiegozoo.org>; <kids.sandiegozoo.org>.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix)
a. Identical or Confusingly Similar: UDRP Rule 3(b)(ix)(1) and UDRP Policy ¶4(a)(i)
Complainant, The Zoological Society of San Diego, is a not-for-profit corporation, dedicated to the conservation of animals and plants, and providing educational and entertainment services involving the exhibition of wild animals and their habitats. The Zoological Society of San Diego was founded in 1916, and is the largest zoological membership association in the world, with more than 250,000 member households, representing more than a half million people. The San Diego Zoo, a 100-acre zoo located just north of downtown San Diego, is home to over 3,700 rare and endangered animals representing more than 650 species and subspecies, with more than 700,000 exotic plants. The San Diego Zoo Safari Park (also known as the San Diego Wild Animal Park) is an expansive 1,800- acre wildlife sanctuary located in the San Pasqual Valley (30 miles north of downtown San Diego), and is home to more than 2,600 animals representing more than 300 species, and a botanical collection consisting of 3,500 species.
Complainant has obtained the above-referenced federal trademark registrations granting it the exclusive right to use its various SAN DIEGO WILD ANIMAL PARK and SAN DIEGO ZOO trademarks to identify its goods and services in the United States. Consumers have come to associate the SAN DIEGO WILD ANIMAL PARK and SAN DIEGO ZOO trademarks with The Zoological Society and its array of goods and services. See Enterprise Rent-A-Car Co. v. David Mizer Enters., Inc., FA-622122 (Nat. Arb. Forum Apr. 14, 2006). Respondent’s WHOIS information indicates an address in Australia. That Respondent operates in a country other than that in which Complainant’s marks are registered does not provide a jurisdictional issue. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001).
That Complainant has not registered every possible domain name associated with its various marks does not detract from Complainant’s rights in the marks. See Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000).
The Zoological Society of San Diego has not licensed or otherwise permitted Respondent to use the various SAN DIEGO WILD ANIMAL PARK and/or SAN DIEGO ZOO marks, or to apply for or use any domain name associated with these marks under UDRP Policy ¶4(c)(ii).
Respondent’s <sandiegowildanimalzoo.com> domain name is confusingly similar to Complainant’s various registered trademarks, namely, the SAN DIEGO WILD ANIMAL PARK and SAN DIEGO ZOO marks. To create the domain name at issue, Respondent merely combined two of Complainant’s famous registered trademarks; specifically, Respondent uses SAN DIEGO WILD ANIMAL PARK, swaps the term “park” for “zoo”, eliminates the spaces between the words, and adds the top-level domain “.com”. The replacement of the term “park” for “zoo” in the domain name is not enough to negate the confusing similarity of Respondent’s domain name, particularly where the addition of the term zoo adds to, rather than mitigates, confusion.
b. Rights or Legitimate Interests: UDRP Rule 3(b)(ix)(2) and UDRP Policy ¶4(a)(ii)
Respondent does not demonstrate a bona fide offering of goods or services under Policy ¶4(c)(i), and is not making a legitimate noncommercial or fair use of the domain name under Policy ¶4(c)(iii). The <sandiegowildanimalzoo.com> domain name routes users to a website featuring hyperlinks to various competing and non-competing commercial websites from which Respondent presumably receives click-through, or referral fees. Internet users, by typing the domain name <sandiegowildanimalzoo.com> into the address bar, in the hopes of finding information relating to San Diego attractions owned and operated by The Zoological Society of San Diego, namely the San Diego Zoo or the San Diego Zoo Safari Park, are instead offered, via hyperlink, among other services, discounted tickets to Sea World San Diego, a competing San Diego attraction. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005). It is presumed Respondent receives click-through fees by directing unsuspecting Internet users to various third-party links using Complainant’s well-known trademarks.
Respondent is not commonly known by the disputed domain name, nor is it authorized to register a domain name featuring any version of Complainant’s SAN DIEGO WILD ANIMAL PARK or SAN DIEGO ZOO marks under UDRP Policy ¶4(c)(ii). See Compagnie de Saint Gobain v. ComUnion Corp., D2000-0020 (WIPO Mar. 14, 2000). The pertinent WHOIS information identified the registrant of the domain name only as “Above.com Legal,” which does not resemble the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003).
Respondent does not have any rights or legitimate interests in the
<sandeigowildanimalzoo.com> domain name under UDRP Policy ¶4(c)(ii). The Zoological Society of San Diego has not licensed or otherwise permitted Respondent to use the various SAN DIEGO WILD ANIMAL PARK or SAN DIEGO ZOO marks, or to apply for or use any domain name associated with these marks. Respondent’s unauthorized use of the domain name does not create rights under Policy ¶¶4(c)(i) or 4(c)(iii). Respondent uses the domain to confuse and divert Internet users to third-party sites. See Vapor Blast Mfg. Co. v. R & S Tech., Inc. FA-96577 (Nat. Arb. Forum Feb. 27, 2001).
c. Registration and Use in Bad Faith: UDRP Rule 3(b)(ix)(3) and UDRP Policy ¶4(a)(iii)
Respondent registered the domain name <sandiegowildanimalzoo.com> in bad faith under UDRP Policy ¶4(a)(iii). To create the domain name at issue, Respondent combined two of Complainant’s famous registered trademarks, namely SAN DIEGO WILD ANIMAL PARK and SAN DIEGO ZOO. Specifically, Respondent uses SAN DIEGO WILD ANIMAL PARK, swaps the term “park” for “zoo”, eliminates the spaces between the words, and adds the top-level domain “.com”.
See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec.
1, 2000). This method strongly suggests that the Respondent had prior knowledge of Complainant’s marks, and knew that it was infringing Complainant’s trademarks when it registered the domain name. See Research in Motion Limited v. International Domain Names Inc./Moniker privacy services, D2008-0780 (WIPO July 10, 2008).
As further evidence of bad faith registration under Policy ¶4(a)(iii), Respondent included the term “zoo” in its domain name, although Respondent does not appear to be in any way affiliated with any such organization, implying that Respondent intended to capitalize on Complainant’s well-known trademarks. See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006).
The corresponding website displays hyperlinks to competing business, which constitutes a disruption to Complainant’s business. See Anheuser- Busch, LLC v. Above.com Domain Privacy, FA 1423039 (Nat. Arb. Forum March 16, 2012) (finding that “by diverting Internet users seeking Complainant’s business and sending them to competitors’ websites, Respondent’s actions amount to disruption of Complainant’s business and indicate bad faith registration and use under Policy ¶4(b)(iii).”)
By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site and other on-line locations, by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site. Additionally, that Respondent presumably receives a profit in click-through fees is further evidence of bad faith under Policy ¶4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006).
Respondent has actual constructive knowledge of Complainant’s rights in the various SAN DIEGO WILD ANIMAL PARK and SAN DIEGO ZOO marks. The fact that Respondent offers hyperlinks to websites offering competing business at the website at issue demonstrates that Respondent has actual knowledge of Complainant’s mark and rights. See MasterCard International Inc. v. Abadaba S.A., Administrador de dominios, D200-0325 (WIPO May 28, 2008).
Complainant sent to Respondent a cease and desist letter, to which Complainant received no reply. The failure of the Respondent to reply to the Complainant’s cease and desist letter is also supporting evidence of bad faith (Ebay Inc. v. Ebay4sex.com and Tony Caranci, WIPO Case No. D2000-1632).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring the domain name:
(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(e), 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 (Nat. Arb. 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.”).
Prior panels have held a complainant can demonstrate sufficient rights in a mark through registration of the mark with the USPTO. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶4(a)(i)); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”). Complainant submits evidence of multiple trademark registrations for its SAN DIEGO ZOO (Reg. No. 1,804,440 registered November 16, 1993) and SAN DIEGO WILD ANIMAL PARK marks (Reg. No. 1,953,191 registered March 1, 1995) with the USPTO. This Panel follows those cases and determines Complainant has successfully established rights in its marks under Policy ¶4(a)(i) by demonstrating the registration of its marks with the USPTO. Complainant is not required to register its marks in the same country where Respondent resides and operates for the purposes of Policy ¶4(a)(i). Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant claims the <sandiegowildanimalzoo.com> domain name is confusingly similar to is SAN DIEGO WILD ANIMAL PARK mark. Complainant argues the domain name uses nearly the entirety of the mark, exchanges the descriptive word “park” for the descriptive word “zoo,” and eliminates the spaces in the mark. Further, Complainant argues adding the generic top-level domain (“gTLD”) “.com” does not negate the confusing similarity of the domain name to the mark. The panel in Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005), stated that adding a descriptive word to a registered mark is not sufficient to distinguish the disputed domain name from the mark. The panel in Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007), found that, because spaces are not permissible in domain names, the disputed domain name is confusingly similar to the complainant’s mark. In Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003), the panel held that adding a top-level domain to a mark is irrelevant when determining whether a mark is confusingly similar because top-level domains are required in every domain name. This Panel concludes exchanging one descriptive term for another in a domain name and adding the gTLD “.com” does not alleviate the confusing similarity to Complainant’s mark under Policy ¶4(a)(i). While the domain name is not identical to the registered mark, it bears a phonetic similarity which is material in today’s world of speech recognition software.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. 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.”).
Complainant contends Respondent is not commonly known by the <sandiegowildanimalzoo.com> domain name, nor is Respondent is authorized to use the SAN DIEGO ZOO or SAN DIEGO WILD ANIMAL PARK marks in any way, including to register a domain name featuring these marks. Complainant points out the WHOIS information identifies the domain name registrant as “Above.com Legal” and argues the registrant identification does not resemble the disputed domain name. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), the panel held that “nothing in [the respondent’s] WHOIS information implies that [the respondent] is ‘commonly known by’ the disputed domain name.” In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that the respondent was not known by the domain name when no evidence on record, including the WHOIS evidence provided, indicated that the respondent was commonly known by the disputed domain name. This Panel determines the WHOIS information and other information provided does not support a finding Respondent is commonly known by the disputed domain name for the purposes of Policy ¶4(c)(ii).
Complainant argues Respondent uses the disputed domain name to operate a website that features links to competing and unrelated third-party websites from which Respondent generates “click-through” fees. Complainant claims such use does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. The resolving website offers discounted tickets to competing attractions. This Panel finds Respondent’s use of the <sandiegowildanimalzoo.com> domain name to host a website offering hyperlinks to competing and noncompeting websites is not 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). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (stating that use of the domain name to redirect Internet traffic to a website with links to businesses whose services directly compete with the complainant’s business is not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent registered the <sandiegowildanimalzoo.com> domain name in bad faith, claiming Respondent’s use of the domain name disrupts Complainant’s business by displaying hyperlinks to competing businesses. In Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panel stated using a confusingly similar domain name in order to attract Internet traffic to a website displaying commercial links to complainant’s competitors constitutes bad faith registration and use. The panel in David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007), held the use disrupted the complainant’s business because the respondent used the disputed domain name in order to advertise the services of complainant’s competitors. This Panel accepts these precedents and concludes Respondent’s use of the disputed domain name disrupts Complainant’s business, which amounts to bad faith registration and use under Policy ¶4(b)(iii).
Complainant argues Respondent uses the <sandiegowildanimalzoo.com> domain name in bad faith by purposely attracting Internet users to Respondent’s website by creating the likelihood of confusion and making a financial profit from consumers’ confusion. This Panel find Respondent is engaged in bad faith registration and use under Policy ¶4(b)(iv) by making use of the disputed domain name to generate revenue on its behalf by attracting Internet users with a confusingly similar domain name and offering “click-through” hyperlinks. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (concluding that using a domain name which incorporates a complainant’s mark in order to make “click-through” referrals constitutes bad faith); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant argues Respondent had constructive and actual knowledge of Complainant’s rights in the SAN DIEGO ZOO and SAN DIEGO WILD ANIMAL PARK marks at the time Respondent registered the <sandiegowildanimalzoo.com> domain name. Previous panels have held constructive notice will not support a finding of bad faith under Policy ¶4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."). This Panel determines Respondent’s offering of hyperlinks to businesses which compete with Complainant’s business is sufficient to demonstrate actual knowledge of Complainant’s rights, which is evidence of bad faith registration and use under Policy ¶4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Furthermore, Respondent appears to be a privacy service which holds a domain in a naked trust for the benefit of the real owner. The purpose of such arrangements is to prevent the identity of the true owner from becoming known in the WHOIS database. This Panel has previously ruled such arrangements are rebuttable evidence of bad faith registration and use in the commercial context. While such arrangements might well be justifiable in certain personal contexts, this Panel has never heard a cogent argument for such arrangements in a commercial context. This Panel elects to apply this logic here and finds this as an additional basis for finding bad faith registration and use.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered that the <sandiegowildanimalzoo.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, May 14, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page