Zapier, Inc. v. Manohar Chapalamadugu / Agile CRM Inc.
Claim Number: FA2306002049262
Complainant is Zapier, Inc. (“Complainant”), represented by Tsan Abrahamson of Cobalt LLP, California, USA. Respondent is Manohar Chapalamadugu / Agile CRM Inc. (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zapup.com>, registered with Moniker Online Services LLC.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on June 15, 2023; Forum received payment on June 16, 2023.
On June 16, 2023, Moniker Online Services LLC confirmed by e-mail to Forum that the <zapup.com> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services LLC 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 June 19, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 2023 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@zapup.com. Also on June 19, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On July 18, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant made the following contentions.
Complainant owns the word marks ZAP, ZAPIER and related marks (collectively the “ZAP Marks”) for use in connection with software as a service featuring software for third party online application integration and data linking. Complainant asserts rights in the ZAP (e.g. Reg. No. 6,514,852, registered October 12, 2021) and ZAPIER (e.g. Reg. No. 4,466,112, registered January 14, 2014) Marks (hereinafter referred to as “the ZAP Marks”) based upon registration of the marks with the United States Patent and Trademark Office (“USPTO”). See Compl. Annex 1 and 2.
Complainant also asserts common law rights in the ZAP Marks.
The <zapup.com> domain name is identical or confusingly similar to Complainant’s Marks because the disputed domain name fully incorporates Complainant’s ZAP Mark and merely adds the additional word “up” to the end of ZAP as well as the generic top level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the <zapup.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the ZAP Marks. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website that purports to be that of Complainant.
Respondent registered and uses the <zapup.com> domain name in bad faith. Respondent is using the disputed domain to divert Internet users to its infringing website, which offers competing services, thus disrupting Complainant’s business. Additionally, Respondent had actual knowledge of Complainant’s rights in the ZAP Marks prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the provision of software as a service featuring software for third party online application integration and data linking, and related goods and services.
2. Complainant has established its right to the ZAP trademarks (e.g. Reg. No. 6,514,852, registered October 12, 2021) and ZAPIER (e.g. Reg. No. 4,466,112, registered January 14, 2014) Marks (hereinafter referred to as the ZAP Marks) based upon registration of the marks by Complainant with the United States Patent and Trademark Office (“USPTO”).
3. Complainant has also established its common law trademark rights in the ZAP marks.
4. Respondent registered the <zapup.com> domain name on March 2, 2017.
5. Respondent has caused the disputed domain name to be used to divert internet users to its infringing website which offers competing services to those of Complainant, thus disrupting Complainant’s business.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has registered trademark rights rights in the ZAP marks (e.g. Reg. No. 6,514,852, registered October 12, 2021) and the ZAPIER mark (e.g. Reg. No. 4,466,112, registered January 14, 2014) based upon their registration by Complainant with the USPTO. See Compl. Annex 1 and 2. Registration of a mark with the USPTO is a valid showing of rights in a mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the ZAP Marks with the USPTO, the Panel may find that the Complainant has established its rights in the ZAP Marks under Policy 4(a)(i).
Complainant also submits that it has common law rights in the ZAP Marks. The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate common law rights in the mark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). Common law rights can be established through a showing of secondary meaning within the mark. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Here, Complainant submits that Complainant first began using ZAPIER as a trademark in 2011 and that it has continued to use the mark. As the Panel agrees with Complainant, it finds that it has established its common law rights in the ZAP Marks per Policy 4(a)(i) and that it has had them since 2011.
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ZAP marks. Complainant submits that Respondent’s <zapup.com> domain name is identical or confusingly similar to Complainant’s ZAP Marks. The addition of a generic word and gTLD fail to differentiate a mark from a disputed domain name per Policy 4(a)(i). See
MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Here, the disputed domain name fully incorporates Complainant’s ZAP Mark and merely adds the additional word “up” to the end as well as the “.com” gTLD. Thus, as the Panel agrees, it finds that the disputed domain name is identical or confusingly similar to Complainant’s ZAP Marks per Policy 4(a)(i).
The Panel also finds that the disputed domain name is also confusingly similar to Complainant’s common law trademark rights to the ZAP marks.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
(a) Respondent has chosen to take Complainant’s ZAP marks and to use them in its domain name;
(b) Respondent registered the <zapup.com> domain name on March 2, 2017;
(c) Respondent has caused the disputed domain name to be used to divert internet users to its infringing website which offers competing services to those of Complainant, thus disrupting Complainant’s business;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <zapup.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS identifies “Manohar Chapalamadugu” as the registrant. See Verification Registrar Email. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the ZAP Marks. Panels may use evidence in support of that submission to show that Respondent has no rights or legitimate interests in the domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and that Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <zapup.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that the <zapup.com> domain name resolves to a website that purports to do exactly what Complainant does, I.E., automate and connect apps by creating a “zap” connection. Palming off the goodwill of a complainant to provide the same service does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshot evidence of Respondent’s resolving website. See Compl. Annex 6. As such, the Panel therefore finds that Respondent has failed to establish a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent registered and uses the <zapup.com> domain name in bad faith. Specifically, the Respondent is alleged to be using the disputed domain name to offer competing services under the same mark, and thus, attracting unsuspecting Zapier customers to its infringing website, and disrupting and damaging Zapier’s business. Creating confusion as to the sponsorship or endorsement of a Complainant’s mark in order to offer competing services is evidence of bad faith under Policy ¶ 4(b)(iii) and ¶ 4(b)(iv). See Nestlé Waters North America, Inc. v. Domain Administrator / Fundacion Privacy Services LTD, FA 1792308 (Forum July 22, 2018) (Finding Respondent uses the domain names to point to a site which offers links relating to Complainant’s business. “Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant.”). Therefore, the Panel finds that a likelihood of confusion exists, that Respondent is attempting to benefit commercially to Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”). Here, Complainant provides screenshot evidence of Respondent’s resolving website. See Compl. Annex 6. Thus, the Panel agrees and finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).
It is to be noted in that regard that Respondent’s conduct occurred after Complainant acquired is common law trademark rights in the ZAP marks from 2011.
Secondly, Complainant submits that Respondent had actual or constructive knowledge of Complainant’s rights in the ZAP Marks prior to registration of the <zapup.com> domain name. Constructive knowledge is insufficient for a finding of bad faith registration of a disputed domain name; actual knowledge, however, is sufficient for a finding of bad faith per Policy ¶ 4(a)(iii). Actual knowledge can be determined in an analysis of the totality of the circumstances surrounding the registration and subsequent use per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the ZAP Marks prior to registration of the disputed domain name based on Respondent’s adoption of the same mark for the same services. Thus, as the Panel agrees, it finds that Respondent had actual knowledge of Complainant’s Marks when the disputed domain name was registered, demonstrating bad faith registration under Policy ¶ 4(a)(iii).
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zapup.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC, Panelist
Dated: July 23, 2023
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