WIPO Domain Name Decision D2008-1297 for zema.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Ricardo Zema Participações Ltda. v. John Laxton Case No. D2008-1297 1 The Parties

Complainant is Ricardo Zema Participacoes Ltda., Minas Gerais, Brazil, represented by Alexandre Rodrigues Atheniense.

Respondent is John Laxton, California, United States of America, represented by Larry D. Johnson. 2. The Domain Name and Registrar

The disputed domain name is registered with eNom, Inc. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2008. On August 26, 2008, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On August 26, 2008, eNom, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 September 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 30, 2008. Respondent submitted the Response on September 30, 2008.

The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on October 8, 2008. 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

Complainant is the holder, inter alia, of the following trademark registrations:

TRADEMARK REG. No. DATE OF REGISTRATION COUNTRY

Z ZEMA

815141343

12/24/1991

BRAZIL

Z ZEMA

815141360

12/31/1991

BRAZIL

Z ZEMA

815141378

11/16/1993

BRAZIL

Z ZEMA

818523727

10/28/1997

BRAZIL

ELETRO ZEMA

824025857

08/14/2001

BRAZIL

Z ZEMA

815141327

12/24/2001

BRAZIL

Z MAIS CONVENIÊNCIA

824843371

05/02/2007

BRAZIL

ZEMA

824025881

06/19/2007

BRAZIL

Complainant is also the holder of the domain name registrations: , , , , , .

The disputed domain name was registered on December 12, 1998 by Respondent. 5. Parties' Contentions A Complainant

Complainant argues the following: I. Identical or Confusingly Similar

- That Complainant's trademarks have been registered for several years and approved by the Brazilian PTO long before Respondent registered the disputed domain name; that said trademarks have been and are currently being used by the Complainant in several market segments and are about to be expanded into other countries.

- That Complainant also registered the following domain names in Brazil, with the Núcleo de Informação e Coordenação do Ponto br, NIC.br: , , , , , , , so that its trademarks and activities were equally protected.

- That Complainant recently realized that Respondent registered the domain name , which is identical to Complainant's trademarks; that Respondent's Website and the content thereof have no relationship whatsoever with Complainant or its business activities; that said conduct constitutes acts of unfair competition and is contrary to the Policy and the Registrar's registration agreement and certificate.

- That such fact only came to Complainant´s attention when said Complainant sought to secure registration of the disputed domain name with the intent of furthering the expansion of its businesses, with the purpose of giving its trademark more visibility around the world, as the “gTLD” domain names are much more mnemonic and more commercially acceptable worldwide.

- That cybersquatting and parking are for profit activities in that they divert clients seeking certain companies and sell the qualified traffic deriving from said diversion which is generated with virtually no effort at all, through domain name exploitation programs, whereby the domain name holder is paid for every click of every user of the website, which can be associated to third party advertising.

- That one such option is pay-per-click, which option Respondent uses to generate profits at the expense of Complainant's trademarks and which causes the Website to which the disputed domain name results to generate traffic and host advertising for third parties (citing Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912, and Bang & Olufsen a/s v. Unasi Inc.,WIPO Case No. D2005-0728 ).

- That the Respondent uses the domain name in an activity known as parking, where he is paid for the use of this domain by a company named TRAFFICZ Inc, for each click on the links or third party advertising posted on the relevant Website. That in analogous cases involving the same company that provides such parking services, some of the disputed domain names have been transferred to the rights holder (and cites News Holding Limited v. Steve Kerry/ WWW Enterprise, Inc.,WIPO Case No. D2006-1374 ; Hilton Group Plc v. Young Nah,WIPO Case No. D2005-0184, V&S Vin & Sprit v. Young Nah,WIPO Case No. D2004-0961.

- That a review of the site to which the domain name resolves, will show links to third party pages without any reference to Complainant's Zema Trademarks or the Zema Group companies.

- That these malicious practices also prevent companies from owning a Web site that would otherwise reflect their original brand.

- That the disputed domain name is identical and confusingly similar to Complainant's trademarks.

- That Complainant's consumers will not be able to locate Complainant and may mistakenly contact a third party instead. II. Rights or Legitimate Interests in Domain Name

- That even if Respondent is not expressly posting a sale of the disputed domain name , Respondent allows any interested party to submit an offer for the acquisition thereof for a minimum amount of US$ 100.00 dollars.

- That there is a link on the bottom of the Webpage associated to the domain name that reads: “inquire about this domain” and when this link is accessed there is an electronic form. That on this form, there is a field named “inquiry type”; on which field the user can select the option “offer” to make a bid on the domain name .

- That Respondent does not have a legitimate interest in using this domain name, as it has no relationship whatsoever with Complainant or its trademarks, let alone with the business name and the activities carried out by Complainant. III. Bad Faith Registration and Use

- That Respondent's only intentions are to profit from the traffic generated with the use of the Complainant's name and to later sell said domain. B. Respondent

Respondent argues the following: I. Identical or Confusingly Similar

- That Complainant has asserted trademark and service mark rights in the ZEMA mark, and has referenced Brazilian trademark registrations in support of such rights.

- That Respondent has no knowledge of but does not dispute that Complainant may have some trademarks and service mark rights in the ZEMA mark, but those rights are far from exclusive.

- That there are U.S. trademark registrations for ZEMA and formatives thereof, to entities other than Complainant, for a wide variety of goods and services, and indicating dates of registration as early as 1970, far earlier than any of Complainant's alleged registrations. II. Rights or Legitimate Interests in Domain Name

- That before the Respondent received any notice of the dispute, Respondent made demonstrable preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

- That Respondent initially registered the domain names and in December 1998, and the domain names and in February, 2003, all in anticipation of opening one or more restaurants under this coined name.

- That while Respondent was still making preparations for this business, another entity in Respondent's immediate geographical area opened a restaurant under the name ZAZU and registered de domain name .

- That Respondent determined that there was a potential for conflict with this mark and accordingly, did not pursue the opening of the planned restaurant(s) under the ZEMA name.

- That Respondent has been developing plans for an alternate type of business to operate under ZEMA brand, not in conflict with the ZAZU restaurant or any other known goods or services.

- That meanwhile, Respondent has legally parked the disputed domain name.

- That Respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain misleadingly to divert consumers or to tarnish the alleged trademark or service mark at issue. III. Bad Faith Registration and Use

- That Complainant has submitted no evidence whatsoever that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, as the alleged owner of the trademark or service mark, or that the disputed domain name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain, or that the disputed domain name was registered by Respondent primarily to disrupt Complainant's business.

- That UDRP cases excerpted by Complainant are all based on distinctly different situations than those of this case.

- That there is no evidence that Respondent was somehow aware of Complainant's alleged Brazilian trademark registrations at the time Respondent registered the disputed domain name (1998).

- That Respondent has never heard of Complainant or any of its purported trademarks and there is no evidence that the user's of the parked domain have or were likely to have mistyped Complainant's name.

- That there is no evidence that Respondent has attempted to sell the domain name.

- That by Complainant's own admission, there has been no offer to sell the domain name to Complainant or any other party. 6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), Complainant must prove that:

(i) the domain name in question 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 the administrative proceeding, Complainant must prove that each three of these elements are present. A. Identical or Confusingly Similar

The disputed domain name is identical to Complainant's trademark ZEMA because said domain name entirely incorporates Complainant's mark.

Said domain name is confusingly similar to the trademarks Z ZEMA and ELETRO ZEMA. The addition of the letter “Z” in some of Complainant's trademark registrations does not eliminate said confusing similarity (see Mutatis Mutandis, America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004; see also, Mutatis Mutandis, MoneyGram Payment Systems Inc. v. Elizabeth Muriel Hernández,WIPO Case No. D2006-1506, Princess International Sales and Service Limited and Princess Yachts International PLC v. Lambert and Turner/Lambert Turner Marine,WIPO Case No. D2002-0419 and America Online, Inc. v. Dolphin@Heart, WIPO Case No. D2000-0713).

Numerous UDRP Panel decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example: T, S.A. de C.V. v. Francisco Gómez Ceballos,WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. , WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA,WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047; Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002; and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802.

The addition of the generic top-level domain “.com” is immaterial for purposes of the Policy. To carry into effect the similarity analysis, a panel must not take into account the generic top-level domain (gTLD) “.com”, because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,WIPO Case No. D2000-0035); see also Pomellato S.p.A. v. Richard Tonetti,WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429 and Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409).

Respondent argues that there are other ZEMA trademarks registered by third parties in the US, and alleges that based on this fact Complainant's rights are not exclusive. The Policy does not require the non existence of other trademark registrations held by parties other than the Complainant in other jurisdictions. The Policy simply requires that Complainant has rights to a trademark, and that said trademark be identical or confusingly similar to the contested domain name. This point has been proven by Complainant.

The first requirement of the Policy has been met. B. Rights or Legitimate Interests

The following are examples of circumstances where a Respondent may have 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.” (Policy paragraph.4(c)).

Respondent claims that he made preparations to use the disputed domain name in connection to the prospective opening of one or more restaurants. No actual evidence of said preparations to use the domain name was submitted with the Response.

Respondent also alleges that at some point he decided not to open a restaurant called ZEMA, and that Respondent has ever since been developing plans for an alternate type of business to operate under ZEMA brand. No evidence of these plans was submitted during this proceeding.

Respondent argues that he has legally parked the disputed domain name. According to the evidence submitted by Complainant, the parking of said domain name has actually resulted in the diversion of traffic of Internet users, for commercial gain. This cannot in the present circumstances be deemed a bona fide offering of goods or services, and thus cannot constitute legitimate rights or interests on the side of Respondent. See, Mutatis Mutandis, The British Broadcasting Corporation v. NA,WIPO Case No. D2008-0264 and Société Air France v. Bing G Glu,WIPO Case No. D2006-0834. See also, Hoffmann-La Roche Inc. v. O, WIPO Case No. D2007-1806; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784; The Bear Stearns Companies Inc. v. Darryl Pope,WIPO Case No. D2007-0593, (citing COMSAT Corporation v. Ronald Isaacs,WIPO Case No. D2004-1082); Fat Face Holdings Lt. v. Belize Domain WHOIS Service Ltd.,WIPO Case No. D2007-0626 and Sanofi-aventis v. Montanya ILtd.,WIPO Case No. D2006-1079.

Respondent has not submitted evidence showing that Complainant has granted Respondent any authorization to register the disputed domain name (see Société Air France v. Bing G Glu, supra).

The record contains no evidence showing that Respondent has been commonly known by the disputed domain name.

Respondent's conduct generates a risk of confusion regarding the existence of an apparent association, origin or sponsorship of Complainant, in connection to the domain name, website, or products and services of Respondent (see, Mutatis Mutandis, Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946).

The second requirement of the Policy has been met. C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(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.”

Complainant has argued that Respondent has parked the disputed domain name to divert traffic for commercial gain, by means of implementing pay-per-click advertisements in conjunction with Trafficz. Complainant's allegations and evidence have not in this Panel's view been persuasively rebutted by Respondent. In the circumstances, this type of domain name parking, together with pay-per-click constitute bad faith activities for the purposes of the Policy, because they imply an intentional attempt to attract, for commercial gain, users to a specific Website, by creating a likelihood of confusion (even if it constitutes initial interest confusion, see Wagamama Limited v. Transure Enterprise Ltd., WIPO Case No. D2008-1200; PNY Technologies Inc. v. Caribbean Online International Ltd.,WIPO Case No. D2008-0544) with Complainant and Complainant's trademarks as to the source, and/or possible sponsorship, affiliation or endorsement of Respondent's site, or products or services associated to the pay-per-click practice. This conduct falls within Paragraph 4 (b)(iv) of the Policy and thus constitutes bad faith registration and use. See, Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; Hewlett-Packard Company v. NA, NAF Case No. FA154141; Savin Corporation v. Cal Toner c/o Domain Manager, NAF Case No. 230934, and State Fair of Texas v. G, NAF Case No. FA95288.

The unauthorized use of Complainant's mark suggests opportunistic bad faith (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).

The third element of the Policy has been met. 7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.

Kiyoshi I. Tsuru
Sole Panelist

Dated: October 23, 2008

Full & Egal Universal Law Academy