Zappos.com Inc. v. WhoisGuard Protected
Claim
Number: FA0501000408128
Complainant is Zappos.com, Inc. (“Complainant”), represented
by Seán F. Heneghan, 31 Reading Hill Avenue, Melrose, MA
02176. Respondent is WhoisGuard Protected (“Respondent”),
8939 S. Sepulveda Blvd., Westchester, CA 90045.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <myzappos.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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 27, 2005.
On
January 25, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <myzappos.com> is registered with Enom,
Inc. and that 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
February 4, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 24, 2005 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 postmaster@myzappos.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 3, 2005 pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Ralph
Yachnin 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." 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 makes the following assertions:
1. Respondent’s <myzappos.com>
domain name is confusingly similar to Complainant’s ZAPPOS.COM mark.
2. Respondent does not have any rights or
legitimate interests in the <myzappos.com> domain name.
3. Respondent registered and used the <myzappos.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Zappos.com Inc., has operated a popular online shoe store since 1999. Complainant has registered the ZAPPOS.COM
mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,791,052
issued December 9, 2003).
Respondent
registered the <myzappos.com> domain name on November 10,
2004. Currently, the domain name
resolves to a “placeholder” website without any active content. On the same day Respondent registered the
domain name, Complainant received an e-mail from Respondent offering to sell
the domain name registration for “a minimum of $2,500.”
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."
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.
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.
Complainant has
established rights in the ZAPPOS.COM mark through registration of the mark with
the USPTO. See 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
and have acquired secondary meaning.”); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
Respondent’s <myzappos.com> domain name is
confusingly similar to Complainant’s ZAPPOS.COM mark. Respondent’s domain name incorporates Complainant’s mark in its
entirety and merely adds the word “my.”
Such addition is insufficient to negate the confusing similarity between
Respondent’s domain name and Complainant’s mark pursuant to Policy ¶
4(a)(i). See Infospace.com,
Inc. v. Delighters, Inc.,
D2000-0068 (WIPO May 1, 2000) (finding that the domain name
<myinfospace.com> is confusingly similar to Complainant’s INFOSPACE
mark); see also NIIT Ltd. v.
Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name
‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is
confusingly similar to the Complainant’s trade name and trademark NIIT”).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations and
assertions set forth by Complainant as true and accurate. See 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.”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of the Complaint to be deemed true).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <myzappos.com> domain name
pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent has
not used the <myzappos.com> domain name; as such, it cannot be
said to be making a bona fide offering of goods or services, nor can it be said
to be making a legitimate noncommercial or fair use of the domain name. In
these circumstances, Policy ¶¶ 4(c)(i) and (iii) are inapplicable to
Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci,
D2000-1244 (WIPO Nov. 11, 2000) (“[M]erely registering the domain name is not
sufficient to establish rights or legitimate interests for purposes of
paragraph 4(a)(ii) of the Policy”); see also Pharmacia & Upjohn AB v.
Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate
interests where Respondent failed to submit a Response to the Complaint and had
made no use of the domain name in question); see also Broadcom Corp. v. Wirth,
FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the
disputed domain name to display an “under construction” page did not constitute
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
<myzappos.com> domain name or is authorized to register domain
names featuring Complainant’s ZAPPOS.COM mark.
Thus, the Panel finds that Respondent lacks rights and legitimate
interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name); see also RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii)
"to require a showing that one has been commonly known by the domain name
prior to registration of the domain name to prevail").
Moreover,
Respondent’s offer to sell the domain name registration to Complainant for a
minimum of $2,500 is evidence that Respondent lacks rights and legitimate
interests in the <myzappos.com> domain name pursuant to Policy ¶
4(a)(ii). See Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use); see also Am. Nat’l Red Cross v. Domains, FA 143684
(Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s
lack of rights and legitimate interests in the domain name is further evidenced
by Respondent’s attempt to sell its domain name registration to Complainant,
the rightful holder of the RED CROSS mark.”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s
offer to sell the <myzappos.com> domain name to Complainant for an
amount greater than its out-of-pocket expenses is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(b)(i). See Dollar Rent A Car Sys. Inc. v. Jongho,
FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated
bad faith by registering the domain name with the intent to transfer it to
Complainant for $3,000, an amount in excess of its out of pocket costs); see
also Nabisco Brands Co. v. Patron
Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that Respondent registered
and used the domain names to profit where Respondent offered to sell the domain
names for $2,300 per name).
Moreover,
Respondent registered the <myzappos.com> domain name with actual
or constructive knowledge of Complainant’s rights in the ZAPPOS.COM mark due to
Complainant’s registration of the mark with the USPTO. Thus, the Panel finds that Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <myzappos.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 17, 2005
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