WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Zoological Society of San Diego, Inc. v. Affinity One, LLC
Case No. D2006-1458
1. The Parties
The Complainant is The Zoological Society of San Diego, Inc., San Diego, California, United States of America, represented by The Trademark Group, United States of America.
The Respondent is Affinity One, LLC, Herndon, Virginia, United States of America, represented by Belasco Jacobs & Townsley, LLP, United States of America.
2. The Domain Name and Registrar
The disputed Domain Name is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2006. On November 15, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On November 15, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December�14, 2006. The Response was filed with the Center on December 14, 2006.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on January�8, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a California not-for-profit corporation that operates the San Diego Zoo, Wild Animal Park, and related animal research facilities. The Complainant operates websites at “” and “.” The latter website is used to sell consumer goods such as apparel, books and media, and plush toys. In connection with its online sales at “,” the Complainant uses the service mark SHOPZOO.COM. The United States Patent and Trademark Office (USPTO) registered that trademark to the Complainant on October 24, 2000 (Registration Number 2397991), showing first use in commerce in November 1999 in connection with “on-line retail store services featuring plush toys.”
The Respondent is a California Limited Liability Company organized in April 2005, with an address in Los Angeles, California (as shown in papers filed with the State of California, copies of which were furnished by the Respondent). On March 25, 2005, the Domain Name was registered in the name of the Respondent. In July 2005, the Respondent filed a California Fictitious Name Statement stating that it uses SHOPZU.COM (the Domain Name at issue in this proceeding) as a business name.
The Respondent asserts, with supporting evidence from Internet archive search results, that it has used the Domain Name since March 2005 for its “www.” website. That website is used for the Respondent’s Internet marketing business, generating sales leads for third-party advertisers who pay the Respondent “revenue sharing” commissions based on sales to Internet users who reach these retailers through the Respondent’s website.
The Respondent’s business appears to be more than a typical click-through advertising arrangement, where a domain name is used for a website (or a redirect to another website) that automatically displays third-party advertisements and links with minimal involvement by the domain name owner. The Respondent encourages website visitors to register for a paid membership in its shopping network (currently priced at $9.99 monthly). In exchange for this membership fee, users receive such benefits as free samples, gift cards, discounts, and cash back when they shop online via the Respondent’s “www.” website. The Respondent itself does not sell goods or services to consumers, but rather negotiates with the third-party retailers for revenue sharing, discounts, gift cards, and other benefits, and then acts as a paid intermediary in generating online sales for those retailers.
On February 7, 2006, the Complainant’s legal counsel sent an express letter to the administrative contact for the Domain Name in care of the Registrar, Network Solutions – the contact address as indicated in the WHOIS database. The letter asserted that the Domain Name infringed the Complainant’s SHOPZOO.COM trademark and demanded that the Domain Name be transferred to the Complainant. The letter was received (and signed for) at Network Solutions, but the Respondent states that Network Solutions did not forward the letter to the Respondent. The Complainant later sent a copy of the letter stamped “Reminder,” which was delivered to Network Solutions on March 23, 2006. The Respondent also denies receiving this correspondence from Network Solutions and states that it first learned of the dispute when the Registrar informed the Respondent of the Complaint in this proceeding “after December�6,�2006.”
The Respondent retained counsel two days before the deadline for a Response in this proceeding. Counsel for the Respondent submitted a Response as required on December 14, 2006, under protest, after the Complainant declined to consent to an extension of time for the Response.
5. Parties’ Contentions
A. Complainant
The Complainant contends that the Domain Name “is aurally identical and confusingly similar” to its registered SHOPZOO.COM service mark.
The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name because (1) there is “no evidence of Respondent’s use of the domain name in connection with a bona fide offering of goods or services prior to the constructive notice of Complainant’s trademark right,” (2) the Respondent “had not been commonly known by the domain name prior to complainant filing a trademark application for the name,” and (3) the Respondent “intends to mislead consumers and harm Complainant’s business interests.”
The Complainant infers bad faith on the part of the Respondent because (1) the Respondent failed to respond to the Complainant’s letter requesting transfer of the Domain Name, (2) the Respondent “failed to conduct a trademark search prior to registering the domain name,” (3) the Respondent “registered the domain name primarily for the purpose of disrupting the business of a competitor,” (4) the Respondent “intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with Complainant’s registered trademark,” (5) the Respondent “registered the domain name deliberately to trade on the goodwill in the Complainant’s trademark,” and (6) the Respondent’s use of the Domain Name “is neither fair nor noncommercial and is intended to divert customers away from Complainant’s website to a website of a direct competitor.”
B. Respondent
The Respondent denies that “zu” is a purposeful misspelling of “zoo.” It asserts that SHOPZU.COM, which it uses as a registered business name in California as well as the Domain Name, is a conveniently brief name that is easily remembered, and that the name was chosen as “simply an arbitrary trade name similar to BAMZU.COM, ADZU.COM or DOTZU.COM, other arbitrarily chosen domain names.”
The Respondent points out that it has conducted business under the SHOPZU.COM name since March 2005, while the Complaint was not filed until November 2006. The test for “rights or legitimate interests” under the Policy, paragraph 4(c)(i) and (ii) is whether the Respondent used the Domain Name in business prior to notice of the dispute, not prior to “constructive notice” of the Complainant’s trademark. The Respondent’s website does not concern zoos or zoo-related gift products, and the Respondent denies any bad-faith intent to divert Internet users from the Complainant’s website.
6. Discussion and Findings
Paragraph�4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
Under paragraph�15(a) of the Rules,
“A Panel shall 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.”
A. Identical or Confusingly Similar
The Complainant has demonstrated rights in the SHOPZOO.COM trademark. The Respondent does not dispute that English-speakers would consider this mark “aurally identical” to the Domain Name. Because of the ruling below on the third element of the Complaint (bad faith), the Panel does not find it necessary to determine whether being “aurally identical” with the Complainant’s trademark has the effect of making the Domain Name “confusingly similar” to that mark.
B. Rights or Legitimate Interests
The Complainant asserts without contradiction that it has not authorized the Respondent to use the SHOPZU.COM mark or the “aurally identical” Domain Name.
The Policy, paragraph�4(c), provides a non-exhaustive list of other circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you 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 (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 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.”
The Complainant improperly recasts the test in subparagraphs (i) and (ii) as requiring evidence of use by the Respondent prior to “constructive notice of Complainant’s trademark.” As the Respondent correctly observes, the Policy seeks evidence of use at a different point in time, prior to notice of the dispute. Even if the date of the Complainant’s first allegedly undelivered cease-and-desist letter is used as the reference point, the Respondent indisputably began using the Domain Name in connection with a bona fide service offering in March 2005, nearly a year before the Complainant’s letter (and some twenty months before the Complaint was filed).
The Complainant also suggests that the Respondent’s use of the Domain Name could not be deemed “legitimate” precisely because the Respondent selected the name intentionally to mislead consumers and disrupt the Complainant’s business. As that is also the Complainant’s central argument on the issue of “bad faith,” it will be discussed below in connection with the third element of the Complaint.
C. Registered and Used in Bad Faith
The Policy, paragraph�4(b), sets forth a non-exhaustive list of circumstances indicating bad faith. The Complaint implicitly relies on two of these: paragraphs�4(b) (iii) and (iv) of the Policy:
“(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The Complaint refers to paragraph 4(b)(iv) by asserting separately that the Respondent intended to “trade on the goodwill” of the Complainant’s trademark and to unfairly “divert customers” from the Complainant.
The Complaint also cites as evidence of bad faith the Respondent’s failure to reply to the Complainant’s cease-and-desist letter and its failure to conduct a trademark search that would have revealed the Complainant’s October 2000 trademark registration.
The Complainant bears the burden of persuasion for each element of the Policy in the Complaint. There is no direct evidence in this proceeding that the Respondent registered the Domain Name primarily to disrupt the Complainants’ business, nor that it used the Domain Name intentionally to create a likelihood of confusion with the Complainants’ mark. The Respondent expressly denies such intent, and its website does not focus on toys or zoos. Thus, the Panel must weigh the evidence from which the Complainant infers bad faith against the plausibility of the reasons given by the Respondent for registering and using the Domain Name.
At bottom, the Complainant’s most persistent argument is that its trademark was registered and established before the Domain Name was created. In the Complainant’s view, the Respondent “should have” conducted a trademark search for “aurally identical” marks and was placed on “constructive notice” of the trademark by the fact of its registration; therefore, the “misspelling” of part of the mark in the Domain Name must be presumed to have been deliberate.
Whatever strength these assertions might have in a trademark infringement or trademark dilution case in United States courts, they do not suffice to establish bad faith for purposes of the Policy. The trademark (consisting of two common English words) is not highly distinctive, and the Complaint does not include evidence of the widespread fame of the mark and its association with the Complainant among consumers. Thus, this is not an instance where the only plausible reason for selecting the Domain Name would be to trade on the goodwill associated with a (phonetically) similar mark. Compare Veuve Clicquot Ponsardin, Maison Fond�e en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (the disputed domain name was “so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
The Respondent denies any intent to divert consumers by using a Domain Name that sounds like the Complainant’s service mark. The word “shop” in the Domain Name is clearly relevant to the Respondent’s online, fee-based shopping network. And the Respondent cites other examples of “zu” added as a fanciful suffix in short domain names: , and , all marketing a variety of products and services and none of them oriented toward zoos or animal plush toys. The Panel notes as well that “” is the website of a self-styled “full service Internet boutique” that advertises website graphic design services and related applications development. Thus, it is not self-evident that Internet users would expect the characters “zu” in a domain name to refer to a zoo, much less the Complainant’s particular zoo or its online gift store.
The manner in which the Domain Name has been used also does not suggest an intent to “disrupt” the Complainant’s business or mislead and divert its clientele. The Respondent’s website is used to advertise a wide variety of retail goods and services and does not noticeably emphasize zoos, animals, or toys. The list of “Shopping Departments” currently displayed on the home page of the Respondent’s website includes “Pets” and “Toys & Games” as the 18th and 21st departments listed, respectively, with links to major retailers such as Wal-Mart, Target, and PETsMART. Nothing about the website indicates an intent to mislead consumers seeking gift items from the San Diego Zoo.
The Panel finds, in these circumstances, no reason to conclude that the Respondent’s failure to respond to the Complainant’s cease-and-desist letter supports a finding of bad faith. The Respondent denies that the letter and reminder were forwarded by the Registrar, and there is no known history here of the Respondent or its principals engaging in abusive or evasive domain name registrations, which would tend to undermine the Respondent’s credibility. The Panel is also unwilling, particularly in the absence of other indicia of bad faith, to conclude that bad faith is revealed simply by the Respondent’s failure to conduct a trademark search for phonetically similar marks.
In sum, the Panel finds that the available evidence establishes that the Respondent, more probably than not, did not register and use the Domain Name in bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Dated: January 22, 2007
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