DECISION

 

Zama SAS v. Koki Kato / Personal

Claim Number: FA2309002060610

PARTIES

Complainant is Zama SAS ("Complainant"), represented by Jeremy Zaccherini, France. Respondent is Koki Kato / Personal ("Respondent"), represented by Javier Yeo of Drew and Napier LLC, Singapore.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zama.com>, registered with GMO Internet Group, Inc. d/b/a Onamae.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.

 

Héctor Ariel Manoff as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 7, 2023; Forum received payment on September 7, 2023.

 

On September 7, 2023, GMO Internet Group, Inc. d/b/a Onamae.com confirmed by e-mail to Forum that the <zama.com> domain name is registered with GMO Internet Group, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet Group, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet Group, Inc. d/b/a Onamae.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 13, 2023, Forum served the Complaint and all Annexes, including a Japanese and English Written Notice of the Complaint, setting a deadline of October 3, 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@zama.com. Also on September 13, 2023, the Japanese and English 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 October 2, 2023.

 

On October 2nd., pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Héctor Ariel Manoff 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.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

Based on the fact that Respondent submitted a response in English and did not oppose to the Complaint in English, the Panel finds that it is persuasive evidence that the Respondent is conversant and proficient in the English language and it itself serves as sufficient basis for going forward in the language of the Complainant, according to UDRP Rule 11(a).

 

PARTIES' CONTENTIONS

A. Complainant

1) Zama.com is a communications / commercial domain named identically to the Complainant's trademarked.

2) The domain was registered with WHOIS information hidden.

3) The domain name is unused, no website has ever been live, no publicly advertised or searchable services are running on this domain.

4) The domain does not appear to have ever hosted any website or commerce related

services since the current registrant registered it.

5) The only DNS record is one for Google for their current email address, which has gone unanswered as of yet.

6) It appears to have been registered with the intent to squat for 10 years to keep others from using it in commerce and there is a high risk for the potential for extortion or cyber attacks in the future.

 

B. Respondent

1) The Respondent owns the Zama group of companies (Zama Industries Inc, a company incorporated in the United States of America in 2015, Zama Industries Limited, a company incorporated in Hong Kong in 1987 and Zama Industries Sdn Bhd, a company incorporated in Malaysia in 2016, among others).

2) They are management and investment holding companies and do not provide services in relation to classes 9, 38 and/or 42 which are the only classes of the Complainant´s interest.

3) Complainant has no trade marks registered in Hong Kong, Singapore and Malaysia.

4) Respondent is also the shareholder and ultimate beneficial owner of Zama Office Pte Ltd (formerly Zama Industries Pte Ltd), a company incorporated in Singapore in 2012. Zama Office Pte Ltd is a family office. It does not provide services in relation to classes 9, 38 and/or 42.

5) The Respondent and his family have been using the name "ZAMA" since 1975, long before the earliest registration date of any of the Complainant's trademarks.

6) The Respondent's father first used the name "Zama" for a company called Zama Corporation Ltd which was subsequently sold in 2008 but the Respondent and his family continue to use "ZAMA" for the rest of the companies in the group.

7) Respondent do not use "ZAMA" for goods and services that are identical and/or confusingly similar to the Complainant's

8) Respondent is entitled to rely on its prior use and goodwill developed in the name "ZAMA" long before the Complainant registered its trade marks.

8) Zama Office Pte Ltd purchased the rights to "Zama.com" in August 2014.

9) Subsequent to the purchase, the Respondent registered "Zama.com" on behalf of the Zama group of companies as trustee of the domain name, for the group's use.

10) The group assigned the domain name for use with Google Workspace since 2015.

11) Since 2015, the Zama group has continued to use "Zama.com" as its personalised email address domain and the group of companies has currently 10 active email addresses using the email domain name "zama.com".

12) The nature of the group's business meant that it did not require a website and the lack of it does not mean that the group is not using the domain name.

13) It would be an abuse of these proceedings for the Complainant to use these proceedings as a way to obtain rights to the domain name.

 

FINDINGS

Complainant owns trademark ZAMA in France and United Kingdom for classes 9, 38 and 42, filed as from 2020.

Respondent acquired zama.com domain name in 2014 and has prior rights at least as from 1987 on companies with the word ZAMA.

 

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

 

Complainant has established rights in the ZAMA CONCRETE and ZAMA trademark in France and United Kingdom. See, Complaint Exhibit Annex.

 

The disputed domain name Respondent's <zama.com> is identical to Complainant's mark, with the addition of ".com" gTLD at the end. (See also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Forum Oct. 17, 2007) ("the inclusion of the generic top-level domain '.com' is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.") As the <exness.com.de> domain name consists entirely of the Complainant's EXNESS mark and a TLD, the Panel finds that it is identical or confusingly similar to the mark under Policy ¶ 4(a)(i)).

 

The Panel finds that the Domain Name is identical and confusingly similar to ZAMA marks, in which Complainant has rights, under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it.  If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest.  If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety.  At all times, the burden of proof remains on the complainant.  WIPO Overview 3.0 at ¶ 2.1.

 

The Panels finds that Complainant did not make a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy, especially based on prior trademark rights (use of ZAMA as from 1987).

 

On the contrary, Respondent argued (and proved) to have owned different companies which are part of the Zama Group that were incorporated in 1987 (Zama Industries Limited) and others in 2015 ((Zama Industries Inc.) and 2016 (Zama Industries Sdn Bhd).

 

Respondent has also proved the acquisition of the disputed domain name in 2014 long before the Complainant's first trademark application (2020). (See Ideal Nutrition, LLC v. Khaled Alshahri / Khaled Group, LLC Claim Number: FA2306002048379, This case is very different. The Respondent here registered the domain name more than 14 years before the Complainant was organized as a Florida limited liability compoaestablished. Respondent did not need any authorization to register and use the disputed domain name from the Complainant. The Respondent had every right to register and use the <idealnutrition.com> domain name which the Panel notes consists of two descriptive words that relate closely to the Respondent's chosen profession).

 

In addition, Respondent has proved the use of the domain name as its personalised email address domain in 10 email addresses since 2015.

 

Thus this Panel does not find evidence that the disputed domain <zama.com> had been acquired in reference to Complainant's trademark.

 

On the evidence available, the Panel concludes that Complainant has failed to prove that Respondent has registered the domain name for a potential extortion or cyber-attack.

 

For the reasons set forth above, the Panel finds that Respondent has rights and legitimate interests in the Domain Name.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent registered the domain name for a potential extortion or cyber-attack.

 

The Panel finds that the mere lack of use of the disputed domain name on a website is not sufficient evidence to prove bad faith. (See Ideal Nutrition, LLC v. Khaled Alshahri / Khaled Group,LLC, Claim Number: FA2306002048379, Moreover, a Respondent does not lose its rights or legitimate interests to a domain name simply because it does not maintain a website continuously).

 

In addition, the acquisition of <zama.com> prior to Complainant's trademark registrations proves that there was not bad faith by Respondent.

 

Since the Panel has concluded that Respondent has rights or legitimate interests in the <zama.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) ("Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.").

 

Thus the Panel concludes that the Complainant failed to prove that the disputed domain name was registered and is being used in bad faith.

 

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 <zama.com> domain name REMAIN WITH Respondent.

 

 

 

Héctor Ariel Manoff, Panelist

Dated: October 12, 2023