Zulily v. Mike Morgan
Claim Number: FA1209001463754
Complainant is Zulily (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Mike Morgan (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <zululy.com>, <zuloly.com>, <zullly.com>, <zulliy.com>, <zuily.com>, <zuilly.com>, and <wwwzulily.com>, registered with Moniker.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2012; the National Arbitration Forum received payment on September 21, 2012.
On September 24, 2012, Moniker confirmed by e-mail to the National Arbitration Forum that the <zululy.com>, <zuloly.com>, <zullly.com>, <zulliy.com>, <zuily.com>, <zuilly.com>, and <wwwzulily.com> domain names are registered with Moniker and that Respondent is the current registrant of the names. Moniker has verified that Respondent is bound by the Moniker 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 September 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@zululy.com, postmaster@zuloly.com, postmaster@zullly.com, postmaster@zulliy.com, postmaster@zuily.com, postmaster@zuilly.com, and postmaster@wwwzulily.com. Also on September 25, 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 October 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the ZULILY mark in relation to its online retail store, which markets goods such as bridal and bridal party wear, baby prams, diapers, feeding bowls and utensils, beauty products, home appliances, stationary, albums, leather goods, luggage, dietary supplements, linens, toys, and games, among others.
Complainant registered the ZULILY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,868,643 filed Dec. 21, 2009; registered Oct. 26, 2010), the Canadian Intellectual Property Office (“CIPO”) (Reg. No. TMA816414 filed June 21, 2010, registered Jan. 30, 2012), and the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 009189961 filed June 21, 2010, registered Jan. 21, 2011).
Complainant’s business is to seek discounted prices on children’s brand products. Complainant operates a website at <zulily.com>, which offers sales on a variety of items. Complainant has operated the website since 1999, and owns numerous other domain names containing its ZULILY mark. Complainant has spent significant resources to build recognition of its ZULILY mark.
Respondent registered the <zululy.com>, <zuloly.com>, <zullly.com>, <zulliy.com>, <zuily.com>, <zuilly.com> and <wwwzulily.com> domain names between December 17, 2009 and October 11, 2010.
Respondent uses the disputed domain names to host a website that links users to third-party websites, some of which belong to Complainant’s competitors.
The disputed domain names are confusingly similar to Complainant’s ZULILY mark. Respondent is not commonly known by the disputed domain names and does not have permission to use the ZULILY mark, nor does Respondent have any affiliation with Complainant’s business.
Respondent registered the disputed domain names in bad faith, as a result of typosquatting, and uses the disputed domain names to display “click-through” links to competitors of Complainant, thereby is receiving profits in the form of referral fees.
Respondent has demonstrated a pattern of bad faith registration in past domain name registrations.
Respondent uses the disputed domain names to display “click-through” links to competitors of Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO and CIPO for its ZULILY mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent registered some of the at-issue domain names subsequent to Complainant acquiring rights in the ZULILY mark and following Complainant’s official company introduction of Complainant’s online business.
Those domain names that were registered prior to Complainant’s trademark registrations have been shown to nevertheless have had common-law trademark rights prior to the domain names’ registration.
Respondent uses the at-issue domain names to host a website that links users to third-party websites, some of which belong to Complainant’s competitors.
Respondent has demonstrated a pattern of bad faith registration regarding past domain name registrations.
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 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.
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.”).
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant owns rights in the ZULILY mark through its trademark registrations with the USPTO and through similar trademark registrations with CIPO. Registration of a trademark with a recognized trademark authorithy, such as either of the aforementioned national registrars, demonstartates rights in Complainant’s ZULILY mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
The <wwwzulily.com> domain name is confusingly similar to Complainant’s ZULILY mark because punctuation is omitted after the “www” prefix. The <zululy.com>, <zuloly.com>, <zullly.com>, <zulliy.com>, <zuily.com> and <zuilly.com> domain names are each confusingly similar to Complainant’s mark due to the replacement of one character with another, juxtaposition of two characters, or removing a character, as well as the addition of the generic top-level domain (“gTLD”) “.com.” Therefore, the Panel finds each of the at-issue domain names to be confusingly similar to Complainant’s mark pursuant to Policy ¶4(a)(i). See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); see also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to the complainant’s DELTA mark); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant).
Respondent lacks both rights and legitimate interests in respect of each of the at‑issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Mike Morgan” as the registrant of each at-issue domain name. Additionally, there is nothing in the record which suggests that Respondent is otherwise known by one or more of the domain names. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Additionally, the confusingly similar at-issue domain names reference websites which display a variety of links offering goods and services that compete with those offered by Complainant. Using the domain names in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at‑issue domain names were registered and are being used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances, as well as non-Policy ¶4(b) circumstances are present, from which the Panel may conclude, pursuant to Policy ¶4(a)(iii), that Respondent acted in bad faith regarding the at-issue domain names.
As a threshold consideration regarding Policy ¶4(a)(iii) bad faith, some of the at-issue domain names were registered prior to Complainant’s registration of the ZULILY mark. Demonstrating bad faith generally requires a finding that a complainant had trademark rights in a mark prior to the at-issue domain name’s registration because the registrant/respondent could not have contemplated the complainant's non-existent right. Complainant contends that it had common-law trademark rights in ZULILY prior to the registration of each of the at-issue domain names. However, in the instant case the exact timing of Complainant’s trademark rights is not determinative. To wit, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions expresses an applicable noted exception to the prior rights doctrine.
In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This has been found to occur: shortly before or after a publicized merger between companies, but before any new trademark rights in the combined entity have arisen; or when the respondent (e.g., as a former employee or business partner, or other informed source) seeks to take advantage of any rights that may arise from the complainant's enterprises; or where the potential mark in question is the subject of substantial media attention (e.g., in connection with a widely anticipated product or service launch) of which the respondent is aware, and before the complainant is able to obtain registration of an applied-for trademark, the respondent registers the domain name in order to take advantage of the complainant's likely rights in that mark.
http://www.wipo.int/amc/en/domains/search/overview2.0/ (October 25, 2012) (emphasis added)
In the instant case, “it is clear [to the Panel] that the aim of the registration[s] was to take advantage of the confusion between the domain name[s] and any potential [or actual] complainant’s rights.” That Respondent’s multiple domain name registrations each may be confused with Complainant’s fanciful mark, that Complainant used its ZULILY mark in a domain name addressing its official website before any of the domain names were registered, and that Respondent registered confusingly similar domain names directly after Complainant’s official company introduction and press coverage, together urge that Respondent registered the domain names to exploit any goodwill, or anticipated goodwill, concerning the ZULILY mark. The fact that some of the domain names may have been registered before Complainant may, or may not, have had rights in the ZULILY mark thus does not preclude a finding of bad faith under Policy ¶4(a)(iii).
Respondent is a “serial cybersquatter,” and has had multiple domain names transferred to mark holders as a result of unfavorable UDRP decisions. See State Farm Mut. Auto. Ins. Co. v. Morgan, FA 1333179 (Nat. Arb. Forum Aug. 12, 2010); see also Microsoft Corp. v. Morgan, FA 1364809 (Nat. Arb. Forum Jan. 24, 2011); see also Allstate Ins. Co. v. Morgan, FA 1426490 (Nat. Arb. Forum Mar. 7, 2012). Because Respondent has multiple domain names registered in the present case and there are at least three adverse UDRP decisions against Respondent in unrelated cases, the Panel finds that Respondent exhibits a pattern of bad faith registration and use of the currently at-issue domain names pursuant to Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Respondent disrupts Complainant’s business by diverting potential customers away from Complainant’s website and to third-party websites. Respondent’s effort to lure consumers away from Complainant constitutes disruption of Complainant’s business and demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent maintains “pay-per-click” websites that are addressed by the at-issue domain names. Respondent earns revenue, or intends to, from these websites. Respondent misdirects Internet users by confusing such users as to Complainant’s involvement with the websites, and benefits as a result of the confusion. The foregoing circumstances are inidica of bad faith under the Policy ¶4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), (finding that the respondent’s bad faith registration and use was evident by the respondent’s operation of a commercial search engine with links to the complainant’s competitors and by diverting Internet users to other websites). Therefore the Panel concludes that capitalizing on consumer confusion and attracting traffic to its website, by using misspellings of Complainant’s official website in the at-issue domain names, demonstrates that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Furthermore, because Respondent registered the domain names directly following Complainant’s “official company introduction” of its online business, as mentioned above, Respondent’s domain name registrations reflect opportunistic bad faith under Policy ¶ 4(a)(iii),. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001), (finding that the respondent registered the disputed domain name at the time of an announcement of a golf tournament by the same name, which was indicative of opportunistic registration and was evidence of bad faith registration and use of the disputed domain name).
Finally, Respondent’s use of the <wwwzulily.com> domain name to typosquat shows bad faith registration and use under Policy ¶ 4(a)(iii). Respondent’s <wwwzulily.com> domain name simply omits the period following “www” in anticipation that Internet users wanting to arrive at Complainant’s official site will likewise omit the period from Complainant’s URL and in so doing will instead be directed to Respondent’s website. See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
Having established all three elements with regard to each of the at-issue domain names as required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zululy.com>, <zuloly.com>, <zullly.com>, <zulliy.com>, <zuily.com>, <zuilly.com>, and <wwwzulily.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 25, 2012
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