Zappos.com, Inc. v. Spiral Matrix
Claim Number: FA0602000650258
Complainant is Zappos.com, Inc. (“Complainant”), represented by Sean F. Heneghan, 31 Reading Hill Avenue, Melrose, MA 02176. Respondent is Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave., P.O. Box 4276-30100, Eldoret 30100, KE.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <shoeszappos.com> and <shoesatzappos.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 27, 2006.
On February 24, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <shoeszappos.com> and <shoesatzappos.com> domain names are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com 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 March 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 21, 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 postmaster@shoeszappos.com and postmaster@shoesatzappos.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 27, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <shoeszappos.com> and <shoesatzappos.com> domain names are confusingly similar to Complainant’s ZAPPOS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <shoeszappos.com> and <shoesatzappos.com> domain names.
3. Respondent registered and used the <shoeszappos.com> and <shoesatzappos.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Zappos.com, Inc., owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ZAPPOS.COM mark. Complainant first registered the ZAPPOS.COM mark with the USPTO on December 9, 2003 (Reg. No. 2,791,052). Complainant also holds valid trademark registrations with the USPTO for the ZAPPOS mark.
Since as early as 1999, Complainant has used the ZAPPOS.COM mark to operate an online shoe store through its website, which is located at the <zappos.com> domain name. Complainant’s website features a wide variety of shoes for men and women, and has successfully generated over $200 million in sales since its inception.
Respondent registered the <shoeszappos.com> domain name on July 27, 2005. Respondent later registered the <shoesatzappos.com> domain name on November 4, 2005. Respondent is using the disputed domain names to operate websites offering links to third-party websites featuring online footwear services in competition with Complainant’s business. The websites located at the disputed domain names also generate pop-up advertisements and links to other commercial services.
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. 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.”).
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’s trademark registrations of its ZAPPOS.COM mark
with the USPTO sufficiently establish Complainant’s rights in the mark pursuant
to Policy ¶ 4(a)(i). See VICORP
Restaurants, Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14,
2005) (“Complainant has established rights in the BAKERS SQUARE mark by
registering it with the United States Patent and Trademark Office (“USPTO”).”);
see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Complainant also demonstrates that
Respondent’s <shoeszappos.com>
and <shoesatzappos.com> domain
names are confusingly similar to Complainant’s ZAPPOS.COM mark. Respondent’s <shoeszappos.com> and <shoesatzappos.com>
domain names each incorporate Complainant’s mark in its entirety, adding only
the generic terms “shoes” and “shoes” and “at.” The addition of a generic,
descriptive term related to Complainant’s business does not negate the
confusing similarity between the disputed domain names and Complainant’s
mark. See Space Imaging LLC v.
Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combines the complainant’s mark
with a generic term that has an obvious relationship to the complainant’s
business); see also L.F.P., Inc. v. MSR
Marketing, FA 540023 (Nat. Arb. Forum Sept. 28, 2005) (finding that the
respondent’s <hustlerathome.com> domain name is confusingly similar
to the complainant’s HUSTLER mark); see
also America Online, Inc. v. Pro-Life Domains aka Pro-Life Domains, Inc.,
FA 161565 (Nat. Arb. Forum July 23, 2003) (finding that the respondent’s <supportataol.com> domain name is not sufficiently
distinguishable from the complainant’s AOL mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant possesses the initial burden of establishing that Respondent lacks rights and legitimate interests with respect to the disputed domain names. However, once Complainant demonstrates a prima facie case, the burden of proof then shifts to Respondent to prove that it has rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c).
Respondent registered the <shoeszappos.com> and <shoesatzappos.com> domain names under the name “Spiral Matrix.” There is no evidence on record suggesting that Respondent is commonly known by either the <shoeszappos.com> or <shoesatzappos.com> domain name. Moreover, Respondent’s WHOIS information does not indicate that Respondent has ever been commonly known by either of the disputed domain names. Thus, the Panel finds that the evidence on record does not demonstrate that Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The evidence on record indicates that Respondent is using the <shoeszappos.com> and <shoesatzappos.com> domain names to operate websites featuring links to third-party websites, including the websites of Complainant’s competitors. In Royal Bank of Scotland Group plc v. PARRY, FA 615243 (Nat. Arb. Forum Feb. 10, 2006), the panel found that the respondent’s use of the complainant’s mark to send Internet users to a search engine website that displayed links to several of the complainant’s competitors did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. In the present case, Respondent is diverting Internet users seeking Complainant’s online shoe store to Respondent’s own directory website, which features links to websites of Complainant’s competitors. The Panel infers that Respondent receives revenues through the operation of its websites located at the disputed domain names. Such use by Respondent does not represent a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <shoeszappos.com> and <shoesatzappos.com> domain names use Complainant’s well-known ZAPPOS.COM mark to divert Internet users to a website lacking any affiliation with Complainant’s business. The disputed domain names resolve to websites featuring pop-up advertisements and offering links to Complainant’s competition. Consequently, the Panel finds that Respondent is using the <shoeszappos.com> and <shoesatzappos.com> domain names to attract Internet users for commercial gain by creating a likelihood of confusion between the disputed domain names and Complainant’s mark. Therefore, Respondent’s <shoeszappos.com> and <shoesatzappos.com> domain names were registered and are being used in bad faith under 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 Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore, Respondent registered and is using the <shoeszappos.com> and <shoesatzappos.com> domain names
to operate websites primarily featuring links to Complainant’s
competitors. Such use by Respondent is
indicative of an intent to disrupt the business of Complainant, and constitutes
registration and use of the disputed domain names in bad faith pursuant to
Policy ¶ 4(b)(iii). See EBAY,
Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites); see also
Puckett v. Miller, D2000-0297
(WIPO June 12, 2000) (finding that the respondent has diverted business from
the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
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 <shoeszappos.com> and <shoesatzappos.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: April 7, 2006
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