Zappos.com, Inc. v. Univer and Andrea and Narta and Diego c/o Diego a/k/a Fikl and Dodo c/o Dodo a/k/a Tio c/o Tio a/k/a Koko c/o Koko a/k/a Sandra c/o Munoz
Claim Number: FA0603000664337
Complainant is Zappos.com, Inc. (“Complainant”), represented by Sean F. Heneghan, 31 Reading Hill Avenue, Melrose, MA 02176. Respondent is Univer and Andrea and Narta and Diego c/o Diego a/k/a Fikl and Dodo c/o Dodo a/k/a Tio c/o Tio a/k/a Koko c/o Koko a/k/a Sandra c/o Munoz (collectively, “Respondent”), La Paz, P.O. Box 10518, La Paz, BO.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <azppos.com>, <xappos.com>, <zaposs.com>, <zappss.com>, <zappps.com>, <zappus.com>, <zappso.com>, <zopoos.com> and <jappos.com>, registered with Onlinenic, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2006.
On March 28, 2006, Onlinenic, Inc. confirmed by e-mail to the National Arbitration Forum that the <azppos.com>, <xappos.com>, <zaposs.com>, <zappss.com>, <zappps.com>, <zappus.com>, <zappso.com>, <zopoos.com> and <jappos.com> domain names are registered with Onlinenic, Inc. and that Respondent is the current registrant of the names. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 April 5, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 25, 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@azppos.com, postmaster@xappos.com, postmaster@zaposs.com, postmaster@zappss.com, postmaster@zappps.com, postmaster@zappus.com, postmaster@zappso.com, postmaster@zopoos.com and postmaster@jappos.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 2, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <azppos.com>, <xappos.com>, <zaposs.com>, <zappss.com>, <zappps.com>, <zappus.com>, <zappso.com>, <zopoos.com> and <jappos.com> domain names are confusingly similar to Complainant’s ZAPPOS mark.
2. Respondent does not have any rights or legitimate interests in the <azppos.com>, <xappos.com>, <zaposs.com>, <zappss.com>, <zappps.com>, <zappus.com>, <zappso.com>, <zopoos.com> and <jappos.com> domain names.
3. Respondent registered and used the <azppos.com>, <xappos.com>, <zaposs.com>, <zappss.com>, <zappps.com>, <zappus.com>, <zappso.com>, <zopoos.com> and <jappos.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Zappos.com, Inc., has operated an online shoe store at the <zappos.com> domain name since 1999. Complainant sells a wide variety of dress, casual and athletic shoes for men and women, including the New Balance, Ecco, Steve Madden and Timberland brands. Internet Retailer magazine named Complainant’s website one of the “Top 50 Websites of 2005.”
Complainant has registered the following marks with the United States Patent and Trademark Office (“USPTO”): ZAPPOS (Reg. No. 2,867,708 issued July 27, 2004, filed December 4, 2001) and ZAPPOS.COM (Reg. No. 2,791,052 issued December 9, 2003, filed November 19, 2001; Reg. No. 2,747,104 issued August 5, 2003, filed November 20, 2001; Reg. No. 2,691,842 issued March 4, 2003, filed October 29, 1999).
Respondent registered the disputed domain names between February 13, 2003 and April 13, 2003. Respondent’s domain names redirect Internet users to a pay-per-click search engine featuring links to websites offering shoe products that compete with Complainant. When Complainant contacted Respondent regarding the disputed domain names, Respondent offered to sell them to Complainant for $1,500. Complainant sent a counter-offer of $150, arguing that the registrar, OnlineNIC, charged only $7.99 for an annual registration for each domain name. Respondent replied that it would let the domain names expire in 2006 and let Complainant retrieve them upon expiration. Complainant increased its offer for the disputed domain names to $250 and pointed out that several of the disputed domain names would not expire until 2007. Respondent then demanded $1,500 for the disputed domain names, to which Complainant replied with a final offer of $500 for the transfer on January 18, 2006. Respondent has not responded to this offer.
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 has established rights in the ZAPPOS and
ZAPPOS.COM marks through registration of the marks with the USPTO. Because Complainant filed for trademark
registrations before Respondent registered the disputed domain names in 2003,
and Complainant’s trademark applications were granted, Complainant’s rights to
the marks predate Respondent’s registration of the domain name. See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Planetary Soc’y v. Rosillo, D2001-1228
(WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s
trademark rights date back to the application’s filing date).
Respondent’s disputed domain names are confusingly similar to Complainant’s ZAPPOS mark pursuant to Policy ¶ 4(a)(i), because each is a slight misspelling of the mark. Panels have held that the addition or deletion of words, letters, or hyphens, as well as the substitution and transposition of words or letters, do not distinguish a domain name from a complainant’s mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the Policy); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to the complainant’s TD WATERHOUSE name and mark);
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed domain names. Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain names. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See BIC Deutschland GmbH & Co. KG v.
Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response,
Respondent has failed to invoke any circumstance which could demonstrate,
pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the
domain name”); see also Am. Express Co. v. Fang
Suhendro, FA 129120 (Nat. Arb. Forum Dec.
30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”). However, the Panel will now
examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
There is no evidence in the record, including the WHOIS
information, suggesting that Respondent is commonly known by the disputed
domain names. Therefore, Respondent has
not established rights or legitimate interests in the disputed domain
names pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store,
FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have
rights in a domain name when the respondent is not known by the mark); see
also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
In addition, Respondent is using
the disputed domain names, which are confusingly similar to Complainant’s
ZAPPOS mark, to operate a web directory featuring links to third-party websites
offering the products of Complainant’s competitors in the online shoe
business. Such use of the
disputed domain names for commercial gain by misdirecting Internet users
seeking Complainant’s shoe products under the ZAPPOS mark to other websites
selling competing goods does not constitute a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use of the domain names pursuant to Policy ¶ 4(c)(iii). See Gardens
Alive, Inc. v. D&S Linx, FA 203126
(Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name
for commercial benefit by diverting Internet users to a website that sold goods
and services similar to those offered by the complainant and thus, was not
using the name in connection with a bona fide offering of goods or
services nor a legitimate noncommercial or fair use); see also Coryn Group,
Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding
that the respondent was not using the domain names for a bona fide
offering of goods or services nor a legitimate noncommercial or fair use
because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s conduct purporting to sell the disputed domain name registrations to Complainant provides evidence of bad faith registration and use under Policy ¶ 4(b)(i). After Complainant contacted Respondent regarding the disputed domain names, Respondent offered to sell the disputed domain names for $1,500, which Complainant claims is far in excess of Respondent’s out-of-pocket costs. Complainant supplied Respondent with several counter-offers but Respondent did not accept any of them. In Prudential Ins. Co. of Am. v. TPB Fin., FA 105218 (Nat. Arb. Forum Apr. 8, 2002), the panel found that the respondent had registered and used the <prumericaprivatebank.com> domain name in bad faith where it offered to sell the domain name registration to the complainant for $900. Here, Respondent has specifically asked the Complainant for $1,500 several times in order to transfer the disputed domain name registration. The Panel finds that this amount is in excess of Respondent’s out-of-pocket costs and thus Respondent’s offer to sell the disputed domain name registrations violates Policy ¶ 4(b)(i). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name registration is evidence of bad faith).
Furthermore, Respondent is using the disputed domain names, which are confusingly similar to Complainant’s ZAPPOS mark, to attract Internet users to a web directory displaying links to Complainant’s competitors in the online shoe business. The Panel infers that Respondent receives click-through fees for diverting consumers to these websites. Therefore, Respondent is taking advantage of the confusing similarity between Respondent’s domain names and Complainant’s mark and capitalizing on the goodwill associated with the mark. The Panel finds that such use indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Respondent’s various misspellings of Complainant’s ZAPPOS mark in the disputed domain names indicate that Respondent is typosquatting. Typosquatting constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(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 <azppos.com>, <xappos.com>, <zaposs.com>, <zappss.com>, <zappps.com>, <zappus.com>, <zappso.com>, <zopoos.com> and <jappos.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 16, 2006
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