DECISION
Zora Labs, Inc. v. James Mullaly
Claim Number: FA2410002119437
PARTIES
Complainant is Zora Labs, Inc. ("Complainant"), represented by Merri C. Moken of Brown Rudnick LLP, New York, USA. Respondent is James Mullaly ("Respondent"), Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zoracompanies.com>, registered with NameCheap, Inc.
PANEL
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on October 7, 2024. Forum received payment on October 7, 2024.
On October 7, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <zoracompanies.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 October 14, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2024 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@zoracompanies.com. Also on October 14, 2024, 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 November 5, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A. Complainant
Founded in 2020, Complainant, is one of the most prominent non-fungible token ("NFT") marketplace platforms in which users can mint, buy, offer for sale, sell, and curate NFTs, such offers for sale quoting prices, and purchases allowed to be made, in a variety of cryptocurrencies. Complainant holds common law rights in, as well as both allowed and pending trademark applications in the well-known and distinctive mark ZORA, as well as marks comprising ZORA, such as ZORA LABS. Complainant has used the ZORA mark in commerce in connection with its NFT-related and software-related goods and services since at least as early as February 2020. Complainant has operated the websites at "www.ourzora.com" and "www.zora.co" since then.
Complainant's NFT platform utilizes blockchain technology that offers secondary market value to digital files including photos, videos, audio, and music, and includes features such as drop alerts and notifications. Complainant's platform is a wholly public protocol, enabling anyone across the world to mint, buy and sell NFTs, and places an emphasis on a wholly diverse, global community of NFT enthusiasts, empowering anyone seeking to monetize. Numerous record-breaking NFT transactions have been assembled and sold on Complainant's platform.
Complainant also has an extensive following on its social media accounts, including over 211.2K followers on X (formerly Twitter) and 33.3K followers on Instagram. As a result, Complainant and its ZORA marks are widely recognized, and the public has come to associate the ZORA marks with Complainant's NFT-related and cryptocurrency-related goods and services.
Respondent's <zoracompanies.com> domain name is confusingly similar to Complainant's ZORA mark.
Respondent has no rights or legitimate interests in the <zoracompanies.com> domain name since Respondent not an authorized provider of Complainant's goods and services and is not licensed or authorized to use Complainant's ZORA mark. There is no evidence to suggest that Respondent is commonly known by the name "Zora" or "Zora Companies". Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use since the domain name resolves to an inactive website.
On information and belief, Respondent registered the <zoracompanies.com> domain name with knowledge that Complainant holds strong rights in its ZORA marks, whose use and renown long predates Respondent's registration of the domain name. Respondent is misrepresenting the domain name as being related to Complainant by incorporating Complainant's ZORA marks with only the inconsequential addition of the generic term "companies". Respondent's use of a domain name nearly identical to and not meaningfully different from Complainant's domain name further demonstrates Respondent's bad faith and malintent to create confusion with Complainant's ZORA marks as to the source, sponsorship, affiliation, or endorsement of the domain name and is likely to misleadingly divert web users trying to locate Complainant and Complainant's goods and services. Further, Respondent used a privacy service in connection with the domain name to hide its identity. The domain name currently resolves to an inactive website, which is evidence of bad faith use.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant has failed to establish all the elements entitling it to relief.
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."
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) 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 as 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').
Identical and/or Confusingly Similar
Complainant has shown that it has common law rights in the ZORA mark through extensive use online since 2020 in the field of cryptocurrency.
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.
The Panel finds Respondent's <zoracompanies.com> domain name to be confusingly similar to Complainant's ZORA mark, only differing by the addition of the generic word "companies", which does nothing to distinguish the domain name from the mark. The inconsequential ".com" generic top-level domain ("gTLD") may be ignored. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Complainant has established this element.
Rights or Legitimate Interests
In light of the Panel's findings below, it is unnecessary to consider this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out some circumstances which shall be evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy. As noted in the WIPO Jurisprudential Overview 3.0, Section 3.1, those circumstances are not exclusive and a complainant may demonstrate bad faith under paragraph 4(a)(iii) by showing that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant's trademark.
The <zoracompanies.com> domain name was registered on July 11, 2024, several years after Complainant has shown that its ZORA mark had become well-known in the field of NFT-related and software-related goods and services. It does not resolve to an active website.
Complainant contends that Respondent's passive holding of the domain name demonstrates bad faith registration and use, citing Midjourney, Inc. v. Gadevski, Dimitar / Gadev Dimita / Newman, Oakland, FA 2103821 (Forum July 26, 2024). In that case registration in bad faith was found because the MIDJOURNEY mark is a unique, coined term associated exclusively with the complainant and is not the sort of name that would be selected independently, without knowledge of or reference to the complainant. Hence it was found that the respondent registered the disputed domain names with actual knowledge of the complainant and its mark, intending to target the complainant. Further, the respondent's passive holding of the domain names was found to constitute a continuing use in bad faith on the basis inter alia that it is not possible to conceive of a plausible legitimate use of the domain names that would not infringe on the complainant's rights, especially since the domain names suggest operations in the same market segment as that in which the complainant operates.
The Panel notes the recent decision in Zora Labs, Inc. v. Dirk Zagers / Michelle Garcia / Zora / sdasd asdasdasd / asdadasdzxc, FA 2119423 (Forum Nov. 7, 2024), in which the <zora-mint.info>, <zora-mint.co> and <zora-website.co> domain names were ordered to be transferred to Complainant: ("The Panel finds on the balance of probabilities that, at the time of registration of the Domain Names, July 9, 2024, Respondent had actual knowledge of Complainant's ZORA mark. The Complainant had, at the time of registration, used the ZORA mark for 4 years and had developed a reputation in the non-fungible token marketplace, where users can "mint" NFTs. There is no obvious explanation, nor has one been provided, for an entity to register three domain names that wholly incorporate the ZORA mark (two of which also append the descriptive term "mint" describing a service commonly performed on Complainant's platform), other than to take advantage of Complainant's reputation in the ZORA mark. The likely intention to cause confusion is reinforced when noting that two of the three Domain Names contain the .co TLD, which is the same TLD used by the Complainant for its primary website at www.zora.co. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).").
As to the present case, according to a Wikipedia search conducted by the Panel: "Zora is a gender-neutral given name of Arabic, Slavic, African origin. It is usually named for people that identify as female, but it can be gender neutral." Further, "Zora or Old Zora is an unincorporated community in eastern Benton County, Missouri, United States".
A USPTO trademark search conducted by the Panel has revealed, in addition to Complainant's applications, which have not yet given rise to registered trademark rights, several live registrations of the ZORA mark by third parties, including Reg. No. 6,623,084, registered on January 18, 2022 by Zora LLC of Delaware "for chocolate; chocolate confections"; Reg. No. 6,824,068, registered on August 23, 2022 by Zora International Inc. of California for "haircutting scissors"; and Reg. No. 6,533,094, registered on October 26, 2021 by The Trustees of the Zora Neale Hurston Trust of New York for "providing information, news and commentary in the field of current events relating to opinions, relationships, and self-care for and about women of color, excluding topics relating to the author Zora Neale Hurston".
In light of this publicly available information, the Panel finds that, although Complainant has common law trademark rights in the ZORA mark in the field of NFT-related and software-related goods and services, unlike the Midjourney case, the word ZORA is not a unique, coined term associated exclusively with Complainant and is the sort of name that may be selected independently, without knowledge of or reference to Complainant. Further, unlike the recent decision in Zora Labs, Inc. v. Dirk Zagers / Michelle Garcia / Zora / sdasd asdasdasd / asdadasdzxc, the appended descriptive term "companies" does not describe a service commonly performed on Complainant's platform and does not in any way convey an association with Complainant. Accordingly, despite the absence of a Response, contrary to the leading case on passive holding, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Complainant has not demonstrated the implausibility of any good faith use to which the domain name may be put that would not amount to an infringement of Complainant's rights in its ZORA mark.
For these reasons the Panel is unable to conclude that Respondent had Complainant and its ZORA mark in mind when registering the domain name; that Respondent's use of a privacy service to conceal its identity cannot, without more, establish bad faith; and that Respondent's hitherto passive use of the <zoracompanies.com> domain name has not been shown to constitute registration or use in bad faith.
Should Respondent use the domain name in the future to take advantage of Complainant's reputation in its ZORA mark in the field of NFT-related and software-related goods and services, Complainant may bring a refiled case under the Policy.
Complainant has failed to establish this element.
WITHOUT PREJUDICE DECISION
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <zoracompanies.com> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: November 11, 2024
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page