DECISION

 

Zeroqode, Inc. v. George Novik

Claim Number: FA2308002059302

PARTIES

Complainant is Zeroqode, Inc. ("Complainant"), represented by David L Sterrett of Sterrett Law, Plc, Massachusetts, USA. Respondent is George Novik ("Respondent"), represented by Leonard Grayver of Grayver Law Group, PC, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zerocoder.com>, registered with TurnCommerce, Inc. DBA NameBright.com.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Eduardo Magalhães Machado as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on August 28, 2023; Forum received payment on August 28, 2023.

 

On August 29, 2023, TurnCommerce, Inc. DBA NameBright.com confirmed by e-mail to Forum that the <zerocoder.com> domain name is registered with TurnCommerce, Inc. DBA NameBright.com and that Respondent is the current registrant of the name. TurnCommerce, Inc. DBA NameBright.com has verified that Respondent is bound by the TurnCommerce, Inc. DBA NameBright.com 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 5, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 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@zerocoder.com. Also on September 5, 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.

 

A timely Response was received and determined to be complete on September 29, 2023.

 

On October 2, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Eduardo Magalhães Machado 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant claims to hold all rights to the use of the trademarked and service-marked word of ZEROQODE and any derivations thereof, as registered with the US Patent and Trademark Office under the numbers of 6017068 (international classes 9, 41 and 42, and US classes 21, 23, 26, 36, 38, 100, 101 and 107) and 6089802 (international class 41 and US classes 100 and 101), since the dates of March 24, 2020, and June 30, 2020, respectively, recognized as having use since June 14, 2017.

 

Said registrations are to identify products and services related to software, such as downloadable internet browser software in the nature of templates, plugins, blocks, backends and mobile applications for use in the creation of web applications, desktop applications, mobile applications, browser extension, messenger applications and other software; educational services, namely, conducting online and offline classes in the field of creating web applications, mobile applications, desktop applications, browser extensions, messenger applications and other software and distribution of course and educational material in connection therewith; design, development and consulting services in the field of web development, applications and software engineering, creating software and hardware architecture; consulting services in the field of providing online, non-downloadable software and applications; providing a website featuring temporary use of non-downloadable software in the nature of templates, plugins, blocks, backends and mobile applications for use in the creation of web applications and other software; providing a website featuring non-downloadable software for developing web and mobile applications; providing information related to on-line non-downloadable software to facilitate electronic communication between individuals provided via the Internet.

 

The Complainant alleges that, although the trademarks are not registered under International Class 35, it has a reasonable expectation of protection of such for commercial use regarding advertisement and the construction and operations of a marketplace in which it sells its own products which bear its trademarks or a similarly protected name.

 

Further, the Complainant affirms that its trademarks entitle it to the sole use of the term zeroqode and any derivations thereof, which would include zerocoder and zerocode. In this sense, it affirms that the disputed domain name can be easily mistaken as an access-point for the Complainant, which does business as zeroqode. It alleges that the Respondent itself stated that such terms are similar.

 

Moreover, the Complainant claims that the two terms – zeroqode and zerocoder – are nearly identical, differing solely in the suffix "r" added in the disputed domain name. It affirms that the differentiation in spelling between said terms is insignificant, as it can be reasonably understood to refer to the same brand or identity differing exclusively in the stylistic choice of spelling and article of speech. In this sense, it affirms that its trademarks extend its protection beyond merely the exact replication of the characters zeroqode to include derivations such as zerocode or zerocoder and, thereby, a domain name of <zerocoder.com>.

 

In addition, it affirms that, although the Respondent has itself admitted the similarity between the terms at issue, it rejected the claim that there would be some likelihood of confusion given the activity of both parties, with what the Complainant could not agree, based on the protected use-cases for its trademarks. Whereas the Respondent would claim that the majority of its business is related to the provision of an online marketplace for exchanging goods and services with other users, bearing in mind that the Complainant also provides an online marketplace, the nature of the use of the signs would be nearly identical.

 

Further, the Complainant claims that, as all the products sold on the marketplace provided by the Respondent would be goods and/or services under which the Complainant's trademarks protections extend (international classes 9 and 42), there would be additionally further cause to believe the Respondent's use of the disputed domain name would cause reasonable confusion for a consumer. This is because, according to the Complainant, given that a consumer can visit either the Complainant's or the Respondent's domains (both marketplaces with nearly identical names) and purchase the same wide array of products which compete in a niche and narrow market, it would be clear that the Disputed Domain is confusingly similar, or nearly identical, to the trademarks for which the Complainant would have the sole right of use.

 

B. Respondent

In its response, the Respondent affirms that the Complainant failed to address two of the three required factors to file a Complaint, that is, (i) why the Respondent should be considered as having no rights or legitimate interests in respect of the domain name subject of the complaint; and (ii) why the domain name should be considered as having been registered and being used in bad faith.

 

Nevertheless, the Respondent defends its legitimate interest in the disputed domain name, as it is the owner of a pending trademark registration for ZEROCODER, under the Application Serial No. 98009304, in international class 35, for use in connection with "providing a website featuring an online marketplace for exchanging goods and services with other users; provision of an on-line marketplace for buyers and sellers of software development, consulting, and educational services, and provision of a marketplace allowing users to buy and sell educational resources and courses in the field of no-code software development".

 

In addition, the Respondent claims that the marks are sufficiently dissimilar. That is because, although both marks are standard character marks, they do not appear similar beyond the first four letters, as well as their pronunciations and the meaning of the word CODE and CODER are different.

 

Further, it affirms it does not recall having assented to Complainant's claim that Respondent's mark is similar to Complainant's. However, the bar for a likelihood of confusion claim would not be the Respondent's assent to the similarity of the two marks but rather evidence of likely consumer confusion, and, to that end, Complainant would have failed to prove any potential or actual consumer confusion.

 

Regarding Complainant's allegation that its trademarks registered in international classes 9, 41 and 42 would give it an automatic right to claim a trademark over services covered in international class 35, the Respondent claims that the merely operation and offering of services in a marketplace does not mean that the Complainant is offering marketplace services that would be covered by international class 35. The Respondent claims that it offers actual marketplace services for others, as one of its principal services, whereas the Complainant offers its services via a marketplace - as do all purveyors of goods and services – but does not offer marketplace services.

 

In this sense, it claims that the services offered by the parties are not the same, since Complainant offers zero-code software design and development solutions for others, doing itself the design and development, whereas Respondent offers two main services: a marketplace wherein other zero-code designers can offer their services, or those looking to retain the services of a zero-code designer can browse and choose a designer that best fits their needs, and a curated repository offering zero-code educational courses and guides for those looking to start working in the zero-code software design industry.

 

In addition, the Respondent claims that the term at the center of the dispute is a commonly accepted term of art in the software development industry, with various internet sources showing that "zero code" and "no code", used interchangeably, are terms for a technique that allows users to build web and mobile applications using drag-and-drop features and without needing a knowledge or understanding of software programming. Therefore, both marks would be weak and could even be considered "merely descriptive".

 

Moreover, the Respondent affirms that it has been using the disputed domain name and the name corresponding to the domain name in connection with a bona fide offering of services. It purchased the domain name from domain and hosting provider hugedomains.com on December 5, 2022, and its site went live that same day. Also, mentions of ZEROCODER on the internet would go as far back as January 2021, when another party owned the domain before Respondent took over the domain's registration. In addition, the WHOIS lookup would show that the record for the domain was first created on July 7, 2015, years before even the Complainant claims to have begun using its trademarks.

 

Further, it affirms that Complainant reached out to Respondent about its claim regarding the disputed domain name and its intent to file a UDRP dispute on or about June 6, 2023, almost seven months to the day after the Respondent started using the domain name and over two-and-a-half years since the first English-language mention of ZEROCODER with a link to the <zerocoder.com> domain first appeared online. Beyond that, the Respondent affirms it has operated various social media pages, as well as appeared on podcasts and other events as the founder of ZEROCODER.

 

Furthermore, the Respondent claims that the disputed domain name was not registered in bad faith and is not being used in bad faith, as the Respondent has not acquired the domain name for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or a competitor of the Complainant. It affirms that it acquired the domain in order to use it for its own legitimate business purposes, having acquired the domain at a cost of $2,295, spread over 12 monthly payments of $191.25, in a bona fide and good faith attempt to promote its service. It also affirms that it has not registered the domain name in order to prevent the complainant and owner of the trademark or service mark from reflecting the mark in a corresponding domain name.

 

Lastly, it affirms it has not registered the domain name primarily for the purpose of disrupting Complainant's business, nor has never intentionally attempted to attract, for commercial gain, internet users to Respondent's web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or of a product or service on Respondent's web site or location.

 

FINDINGS

As can be seen from the trademarks certificates attached to the case files by the Complainant ('Annex 1'), although it alleges that it is the owner of the ZEROQODE trademarks, registered under No. 6017068 and 6089802, before the USPTO, the holder of said trademarks is a third party called Mr. Levon Terteryan, with whom the Complainant did not prove in this proceeding to have any commercial relationship with nor any agreement regarding such trademarks, merely stating that Mr. Terteryan would be an officer of Zeroqode, Inc.

 

Nevertheless, such trademarks were registered on March 24, 2020, and June 30, 2020, respectively, and common law rights for both registrations were acquired on June 14, 2017. Meanwhile, the disputed domain name was registered on July 07, 2015, being purchased by the Respondent on December 5, 2022 ('Annex 11').

 

A reading of both the Complaint and the Response leads to the conclusion that both parties operate in the software market, which was proven by the Respondent in its Response ('Annex 7' and 'Annex 9'). Regarding the Complainant, although it affirms that it uses the ZEROQODE trademark for commercial use with respect to advertisement and the construction and operations of a marketplace in which it sells its software products/services with said trademark, it did not file any evidence of such.

 

In addition, regarding the parties' previous communication with each other, the Complainant affirmed Respondent itself would have acknowledged the signs to be similar – ZEROQODE and ZEROCODER -, however it did not provide any evidence of such affirmation. On the other hand, the Respondent attached to case files the Annex 19, in which appears to be a copy of said communication, with no affirmation by the Respondent that the marks would be similar.

 

Furthermore, the Respondent proved it is the holder of a pending trademark registration for ZEROCODER, application serial No. 98009304, before the USPTO, related to software services ('Annex 2').

 

Also, the evidence provided by the Complainant does not show that Respondent has no rights or legitimate interests in the disputed domain name, nor that Respondent registered and used the disputed domain name in bad faith.

 

Lastly, this Panel performed an independent research (See Société des Produits Nestlé SA v. Telmex Management Services WIPO D2002-0070), in which it found out that the term "zero code" makes reference to a widely known technique in the software market, which basically enables the programming and software development that does not involve coding.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

The first issue that arises in this proceeding is whether the Complainant has established that it has a trademark registration for ZEROQODE to which the domain name is similar. In this sense, the Panel finds that the Complainant has not submitted that it has a registered trademark, nor common law rights over such trademark. This is because the trademark certificates provided by the Complainant demonstrate that the rightful holder of the ZEROQODE trademark is Mr. Terteryan, whom Complainant did not prove to have any type of relationship, in addition to not providing any evidence of Complainant's use of the ZEROQODE trademark.

 

Accordingly, the Panel finds that Complainant has not provided sufficient evidence to support its assertion that it has a trademark registration or common law trademark rights pursuant to Paragraph 4(a)(i) of the Policy.  

 

In view of the Panel's finding that Complainant has not satisfied Policy 4(a)(i), the Panel may decline to analyze the other two elements of the Policy. Nevertheless, in the interests of completeness and as the issue of Reverse Domain Name Hijacking may become relevant, the Panel will address the remaining elements.

 

Rights or Legitimate Interests

The panel finds that Complainant has failed to prove, even at the threshold level of a prima facie case, that Respondent has no rights to or legitimate interests in the domain name.

 

According to Paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the disputed domain name by showing any of the following elements:

 

"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

 

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

 

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

 

Respondent successfully demonstrated elements (i) and (ii), as seen in Annexes 2 ('Respondent's trademark application') (11 ('Proof of purchase of domain on December 5, 2022'), 12 ('Proof of respondent's site being available at least as early as December 25, 2022'), 14 ('Zerocoder's social media presence') and 15 ('Zerocoder's presence on various internet news sites, blogs, pr newswires, podcasts, and technology competitions').

 

In addition, Respondent claims that the terms "zeroqode" and "zerocoder" would constitute weak trademarks and even be considered "merely descriptive" as them both make reference of a technique that allow users to build web and mobile applications using drag-and-drop features and without needing a knowledge or understanding of software programming ('Annex 10'). Given that (i) the Panel proceeded with an independent research and have found various websites with the term "zerocode" or a variation of it in their domain names or in the content of a website to identify said technique, and (ii) Complainant failed to prove that its alleged trademark achieved a secondary meaning in this market segment (See Shoe Mart Factory Outlet, Inc. v. DomainHouse.com, Inc. c/o Domain Administrator - Forum FA0504000462916) is that the Panel accepts Respondent claim.

 

Accordingly, the Panel finds that Complainant has not provided sufficient evidence to support that Respondent has no rights or legitimate interests pursuant to Paragraph 4(a)(ii) of the Policy.  

 

Registration and Use in Bad Faith

For the same reasons above with regard to the second element (rights or legitimate interests), the Panel finds that Complainant has failed to show bad faith registration and use.

 

Regarding the registration, it must be highlighted that the domain name in dispute was first registered on July 7, 2015, that is, almost two years before the date Complainant claimed without proof to have first used the ZEROQODE trademark, (June 14, 2017). Although the Respondent purchased the domain name after the alleged common law trademark rights, its purchase cannot be understood as made in bad faith, since, as already explained, the term can be seen as merely descriptive of the products and services it provides through the domain name.

 

In view of Respondent's constant use of the domain name to provide its services and products since the month it purchased it ('Annex 12'), with no evidence that it has been trying to confuse the consumers as to thinking Respondent is somehow associated with Complainant or it has been using in anyway to damage Complainant's business, the Panel finds that Complainant has failed to provide evidence to support the requirement of Paragraph 4(a)(ii) of the Policy.  

 

REVERSE DOMAIN NAME HIJACKING

The Respondent claims that the Complainant submitted a deficient Complaint, through counsel who purportedly has experience in intellectual property and trademark disputes ('Annex 16'), and who should have known the required elements of a proper UDRP complaint. Thus, it affirms that Complainant's communication with Respondent in their June 2023 Telegram conversation, wherein Complainant's demands to hand over the domain, combined with Complainant's failure to submit proper arguments and evidence in support of two of three elements of the UDRP policy should be construed as evidence that Complainant brought its Complaint in bad faith to harass and attempt a reverse domain name hijacking as defined in UDRP Rule 15(e), which constitutes an abuse of the administrative process.

 

Under Paragraph 1 of the Rules, "Reverse Domain Name Hijacking" (RDNH) is defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Paragraph 15(e) of the Rules provides that if "the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

 

The Panel finds both that the Complaint was brought in an attempt at Reverse Domain Name Hijacking and that it was also brought to harass the domain-name holder.

 

That is, because the only evidence Complainant attached to the case files was trademark registration certificates that were not able to prove that Complainant had any relation to the holder of such trademarks.

 

Also, Complainant did not even try to prove that Respondent had no rights or legitimate interests, or that Respondent registered and used the domain name in bad faith, not even making reference to these elements.

 

In addition, Complainant alleged that Respondent itself confirmed that the terms were similar, in order to imply that the Respondent was in bad faith, without attaching any evidence of such statement by the Respondent.  It is also important to note that the registration of the disputed domain name was made in 2015, whereas the alleged first use of the ZEROQODE trademark was made only in 2017.

 

Thus, Complainant failed to prove any of the three elements demanded by Paragraph 4(a) of the Policy.

 

Panels have traditionally held parties represented by counsel to a higher standard especially when deciding whether to make a finding of RDNH (see Ideal Nutrition, LLC v. Khaled Alshahri / Khaled Group, LLC – Forum FA2306002048379). Bearing in mind that Complainant is being represented by a counsel, such should have known it could not succeed in this matter by not attaching any evidence to the case files, or by not even mentioning the elements provided by Paragraph 4(a)(ii) and (iii) of the Policy.

 

Complainant's counsel should have known about its burden of proof, as well as the obligation to prove the three elements set out in paragraph 4(a) of the Policy.

 

DECISION

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 <zerocoder.com> domain name REMAIN WITH Respondent.

 

 

 

 

Eduardo Magalhães Machado, Panelist

Dated: October 16, 2023