The Complainant is Zeetogroup, LLC of San Diego, California, United States of America, represented by Coast Law Group, LLP, United States of America.
The Respondent is Rafal Wierczynski of London the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 28, 2011. On December 29, 2011, the Center transmitted by email to GoD, LLC. a request for registrar verification in connection with the disputed domain name. On December 29, 2011, GoD, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact for the disputed domain name. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 January 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 24, 2012. The Response was filed with the Center on January 21, 2012.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on February 3, 2012. 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 provider of internet-based marketing services, including advertising software and lead generation services. Since August 5, 2007, the ZeetoGroup, LLC has offered products and services under the “Zeeto Group” and “Zeeto” names. The Complainant owns two trademark applications in the United States (“U.S.”) for ZEETO GROUP (Serial No. 85/339,827) and ZEETO (Serial No. 85/339,803). Both of the subject trademark applications have been published for opposition purposes and at the time the Complaint was filed, no opposition proceedings had been initiated.
The Respondent, Rafal Wierczynski, resides in London, England and is a graphic designer and graphic artist. The Respondent began operating his graphic design business in September 2005, providing design services, including digital illustration, website and graphic design, photo-manipulation and art-directing. The Respondent created the domain name on September 6, 2005. The Respondent also uses an e-mail address at XXXXX@. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar
The Complainant owns two U.S. trademark applications for the trademarks ZEETO GROUP and ZEETO (Serial Nos. 85/339,827 and 85/339,803, respectively). The opposition period for these applications has expired. The applications will now likely proceed to allowance. The Respondent has registered the disputed domain name which is identical to the Complainant’s applied for trademark, except for the addition of the “.com” designation. The Complainant contends that the addition of a url designation does not distinguish the domain name from the Complainant’s trademark. Rights or Legitimate Interests
The Complainant argues that the Respondent is not publicly known by the Zeeto name, and that the Respondent cannot have any rights or legitimate interest in the domain name, because the Complainant has exclusive rights to the trademark ZEETO trademark in the U.S. The Respondent has no past or current business relationship with the Complainant, and the Respondent was never licensed or otherwise authorized to use the Complainant’s trademark. Further, the Respondent is not making a bona fide use of the disputed domain name, and has used the disputed domain name in connection with a website which provides virtually no content. The Complainant contends that the lack of a bona fide offering of goods and/or services is evidence of a lack of rights or legitimate interests in the disputed domain name. Registered and Used in Bad Faith
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith for the following reasons: (i) the Respondent registered and is using a confusingly similar domain name in an attempt to interfere with the Complainant’s business and to divert Internet users, who are looking for the Complainant’s website to the Respondent’s website; (ii) the Complainant has repeatedly since August 2007, placed the Respondent on notice of the Complainant’s rights in the ZEETO trademark, and the Respondent has continually refused to acknowledge the Complainant’s rights in the ZEETO trademark and settle the dispute in respect of the disputed domain name; and (iii) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and/or services. B. Respondent
The Respondent submits that because his real name is too difficult to spell, pronounce and remember by English speaking individuals, he chose to use his childhood nickname “Zeeto” in his graphic design business. The Respondent has been identified by the name “Zeeto” since the early 1990’s. The nickname was inspired by the character called “Dr. Zito” in the popular TV program “MacGyver”. The Respondent contends that before he chose the name for his business, he conducted research to ensure that no other companies or individuals were already using the ”Zeeto” name. The Respondent states that the search results did not reveal any third-party use. The Respondent then registered the disputed domain name on September 6, 2005. On September 27, 2005, the Respondent purchased hosting services, assigning the word “Zeeto” as its indicator.
The Respondent contends that he works remotely from his studio in the United Kingdom, and uses Internet communication as his primary means to operate his business. The Respondent’s commissions are generated via e-mail contact through his e-mail address at XXXXXX@.
The disputed domain name plays a critical role in the Respondent’s FTP server, where the Respondent stores ongoing projects in relation to his client’s orders. The FTP server at the url is heavily used as a drop-off and pick-up for all the Respondent’s clients’ content.
The Respondent contends that the disputed domain name and associated server is critical to the Respondent’s business and ability to trade. Therefore, the Respondent contends that he is using the disputed domain name in association with a bona fide offering of goods and services.
The Respondent submits that the Complainant began using the name “Zeeto Group” on August 5, 2007, some 23 months after the registration of the disputed domain name . The Complainant applied to register the trademark ZEETO six years after the registration of the disputed domain name. The Respondent submits that he never had any interest in associating himself or his business with the Complainant and has never used the word “group” in association with the word “Zeeto”. Further, Respondent contends that he did not register the disputed domain name as an attempt to attract or confuse Internet users who were or are looking for the Complainant, since the Complainant did not yet exist at the time the disputed domain name was registered. The Respondent could not have anticipated that another entity would want to use the same name as he had chosen.
The Respondent denies being contacted by the Complainant with respect to the purchase of the domain name until the offer of GBP 6,000, plus legal costs, was made by the Complainant. At no time has the Respondent attempted to hold the disputed domain name for the intention of selling it to the Complainant or any other interested party. The Respondent contends that he has made lawful use of the disputed domain name in association with his graphic design business. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant does have trademark rights in the marks ZEETO GROUP and ZEETO by virtue of United States Application Nos. 85/339,827 and 85/339,803 as of the date of filing, namely June 7, 2011. Both of these applications have been published in the U.S. Trademarks Office Gazette for purposes of opposition proceedings, and the period for filing such oppositions has now expired. The Panel is also prepared to find that the Complainant does have common law rights in the ZEETO GROUP and ZEETO trademarks as submitted by the Complainant. However, the Panel agrees with the Respondent’s contention that the Complainant’s business and advertising has primarily focussed on the use of the ZEETO GROUP trademark, and has only recently used the mark ZEETO alone.
The Panel further finds that the disputed domain name is identical to the Complainant’s trademark ZEETO, except for the addition of the gTLD designation, “.com”. The addition of such a gTLD designation does not serve to distinguish the domain name from the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
In light of the Panel’s findings under section 6(c), it is unnecessary to record any separate findings here on this issue. C. Registered and Used in Bad Faith
In light of the evidence provided in this proceeding, the Panel finds that the Complainant has failed to establish on the balance of probabilities that Respondent’s conduct amounts to bad faith registration and use of the disputed domain name.
The Respondent has submitted credible evidence that he has been commonly known by the name “Zeeto” since the early 1990’s. (This is sufficient in the Panel’s assessment to activate a safe-harbour defense under paragraph 4(c)(iii) of the Policy, but also has direct implications for considerations of bad faith, which the Panel finds convenient to discuss directly). The anecdotal explanation of his childhood nickname, combined with the registration of the disputed domain 23 months prior to the Complainant’s use and filing of the ZEETO GROUP and ZEETO trademark applications supports the conclusion that the Respondent was not aware of the Complainant’s rights in the trademark ZEETO. In fact, the Panel finds that the Complainant (pending such time as its trademark applications for ZEETO may occur) actually had no rights in the ZEETO trademarks, at the time the disputed domain name was registered. Accordingly, the Panel is prepared to find that, at the time of registration, Respondent did not act in bad faith, under the Policy. Since the date of registration of the disputed domain name in September 2005, Respondent has also not done anything inconsistent with a good faith adoption and use of an appropriate identifier for himself, including his e-mail address at XXXXX@, and for his business.
Accordingly, the Panel finds that Complainant has not satisfied the requirement under Paragraphs 4(a)(ii) or 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Christopher J. Pibus
Sole Panelist
Dated: February 17, 2012
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