ZRT Laboratory, LLC v.
Claim Number: FA0701000907499
PARTIES
Complainant is ZRT Laboratory, LLC (“Complainant”), represented by Kennedy
K. Luvai, of Lindsay, Hart, Neil & Weigler, LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zrtlaboratory.com> and <zrtlabs.com>,
registered with Compana, Llc.
PANEL
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.
Piotr Nowaczyk as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 30, 2007; the
National Arbitration Forum received a hard copy of the Complaint on February 2, 2007.
On February 8, 2007, Compana, Llc confirmed by e-mail to the
National Arbitration Forum that the <zrtlaboratory.com> and <zrtlabs.com>
domain names are registered with Compana, Llc
and that the Respondent is the current registrant of the names. Compana, Llc
has verified that Respondent is bound by the Compana,
Llc 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 12, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 5, 2007 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@zrtlaboratory.com and
postmaster@zrtlabs.com by e-mail.
A timely Response was received and determined to be complete on March 6, 2007.
On 16 March 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Piotr Nowaczyk as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant alleges that, despite not registering either the ZRT LABORATORY or ZRT LAB marks with a federal agency, it maintains common law trademark rights in the marks.
Complainant asserts common law rights in the ZRT LABORATORY and ZRT LAB marks. Complainant maintains extensive use of the mark in commerce since 1998, including a direct-mail marketing campaign, the use of advertisements in trade publications, and attendance at trade shows where the marks are predominantly displayed.
Complainant further asserts that
the <zrtlaboratory.com> disputed domain name is identical to
Complainant’s mark. The <zrtlaboratory.com> mark contains Complainant’s ZRT LABORATORY
mark in its entirety, adds the generic top-level domain (“gTLD”) “.com,” as
well as removing the space between “zrt” and “laboratory.”
Complainant
contends that the <zrtlabs.com> is confusingly similar to Complainant’s ZRT
LAB. The disputed domain name contains
Complainant’s ZRT LAB mark in its entirety and adds the letter “s,” the gTLD
“com,” and removes the space between the “zrt” and “labs.”
B. Respondent
Respondent alleges Complainant has not sufficiently demonstrated common law rights in the ZRT LABORATORY or ZRT LAB marks. Respondent contends Complainant’s proffered examples of how it has used the marks for over eight years fails to establish that Complainant has done business using the names in question in a sufficient manner to create a secondary meaning associated with Complainant’s goods and services.
Respondent suggests that Complainant has failed to sufficiently establish secondary meaning in the marks pursuant to Policy ¶ 4(a)(i).
FINDINGS
The lack of a federal registration does not preclude Complainant from asserting rights in the ZRT LABORATORY or ZRT LABS pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); 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.”).
Complainant’s use of the marks for over eight years sufficiently establishes common law rights in the marks pursuant to Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services).
DISCUSSION
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:
(1) the domain name registered by the Respondent
is identical or confusingly similar 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.
The <zrtlaboratory.com>
domain name is identical to Complainant’s mark.
The <zrtlaboratory.com> mark contains Complainant’s ZRT LABORATORY mark in its entirety, adds
the generic top-level domain (“gTLD”) “.com,” as well as removing the space
between “zrt” and “laboratory.” The mere addition of the gTLD “.com” to
an otherwise identical mark fails to distinguish the domain name from the mark
pursuant to Policy ¶ 4(a)(i). See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also
Similarly, the <zrtlabs.com> domain name is confusingly similar to Complainant’s ZRT LAB mark. The disputed domain name contains Complainant’s ZRT LAB mark in its entirety and adds the letter “s,” the gTLD “.com,” and removes the space between the terms “zrt” and “labs.” The Panel finds that the mere addition of the letter “s” and the gTLD “.com” to an otherwise unchanged mark fails to sufficiently distinguish Respondent’s domain name from the mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that “the addition of an ‘s’ to the end of the complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation”).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that 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) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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 is using the disputed domain names to operate websites featuring links to commercial, third-party websites from which Respondent presumably receives referral fees. Respondent’s current use of the disputed domain names is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use in accordance with Policy ¶ 4(c)(iii). See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (holding that the respondent’s use of the disputed domain name to host a series of hyperlinks and a banner advertisement was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Respondent
is neither commonly known by the disputed domain names nor licensed to register
domain names featuring Complainant’s marks.
A review of Respondent’s WHOIS information reveals that the registrant
of both disputed domain names is “Texas International Property
Associates.” Respondent is not commonly
known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb.
Forum Feb. 5, 2001) (finding no rights or legitimate interests because the
respondent is not commonly known by the disputed domain name or using the
domain name in connection with a legitimate or fair use); 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.”).
Registration
and Use in Bad Faith
Respondent is
utilizing the disputed domain names to run websites featuring commercial links
to third-party websites, thereby presumably generating “click-through”
advertising revenue for Respondent.
Respondent’s use of the disputed domain names to operate a website
wherein it receives monetary compensation evinces bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling
Shun Shing, FA 187431 (Nat. Arb. Forum
Oct. 6, 2003) (“Respondent has attempted to commercially benefit from
the misleading <qwestwirless.com> domain name by linking the domain name
to adult oriented websites, gambling websites, and websites in competition with
Complainant. Respondent’s attempt to
commercially benefit from the misleading domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv).”); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zrtlaboratory.com> and <zrtlabs.com>
domain names be TRANSFERRED from Respondent to Complainant.
Piotr Nowaczyk, Panelist
Dated: 27 March 2007
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