The Complainant is Zippo Manufacturing Company of Bradford, Pennsylvania, United States of America (“US”), represented by Squire Sanders (UK) LLP, of the United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Paula Ellis, Personalised Occasions of Kimmel Bay, Conwy, UK. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Webfusion Ltd trading as 123-reg. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2012. On February 10 and 13, 2012, the Center transmitted by email to CentralNic and Webfusion Ltd., a request for registrar verification in connection with the Disputed Domain Name. On February 10, 2012 and February 17, 2012, CentralNic and Webfusion Ltd., respectively, transmitted by email to the Center verification responses confirming that the Respondent is listed as the registrant and providing the contact details for the Disputed Domain Name.
The Center verified that the Complaint satisfied the formal requirements of the CentralNic Dispute Resolution Policy (the “Policy”) and the Rules for CentralNic Dispute Resolution Policy (the “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 February 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 15, 2012.
On March 8, 2012, the Complainant requested a suspension of the Proceedings for 30 days in order to explore a settlement with the Respondent. On March 13, 2012, the Proceedings were suspended by the Center until April 12, 2012. On April 12, 2012, the Complainant requested a further suspension of the Proceedings for 20 days. On April 12, 2012, the Center granted a suspension of the Proceedings until May 2, 2012. The Parties did not reach a settlement and the Complainant requested that the Proceedings be reinstituted on May 2, 2012. On May 3, 2012, the Proceedings were reinstituted and the Respondent was notified that the due date for the Response was May 10, 2012.
The Respondent did not submit a formal Response by May 10, 2012 and accordingly the Center notified the parties on May 11, 2012 that it would be proceeding to Panel appointment.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on May 22, 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 trade mark on which the Complaint is based is ZIPPO. The Complainant is a US company which was founded in 1932 and is famous for its rectangular lighters which are now marketed and sold worldwide under the ZIPPO trade mark. The Complainant obtained its first trade mark registration for ZIPPO in the UK in 1937. Today, the Complainant is the owner of over 20 UK and Community Trade Mark registrations for or incorporating the ZIPPO mark. In addition, the Complainant owns UK and Community Trade Mark registrations for the unique rectangular design of its lighters.
The Respondent is Paula Ellis, Personalised Occasions of Kimmel Bay, Conwy, UK. The Disputed Domain Name was registered on June 9, 2011. The Disputed Domain Name points to the “” website (the “Website”), which offers for sale rectangular lighters similar to those of the Complainant, and related accessories (i.e. canister and pocket ashtrays) using the ZIPPO trade mark. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarised as follows:
(a) The Disputed Domain Name is confusingly similar to the Complainant’s ZIPPO mark, in which the Complainant has rights:
(i) the Complainant is the proprietor of many UK and Community Trade Mark registrations for ZIPPO;
(ii) the Complainant has been selling lighters under the trade mark ZIPPO for many years throughout the world including the UK;
(iii) the Complainant uses the ZIPPO trade mark extensively on all its products and marketing materials;
(iv) the ownership and use of the Disputed Domain Name by the Respondent infringes the Complainant's trade mark rights;
(v) the Disputed Domain Name is likely to confuse the public into believing that the Respondent is associated with or approved by the Complainant, when this is not the case;
(vi) the Disputed Domain Name is clearly identical to the Complainant’s registered marks as it fully incorporates the Complainant’s trade mark ZIPPO; and
(vii) the Website is used in relation to goods that are identical to those for which the Complainant’s trade marks are registered and the use of the Disputed Domain Name is likely to cause damage to the Complainant's business and goodwill in the ZIPPO mark.
(b) The Respondent does not have rights or legitimate interests in the Disputed Domain Name:
(i) the Complainant has no evidence of bona fide use of the disputed domain name by the Respondent;
(ii) the Respondent has not been commonly known by the Disputed Domain Name; and
(iii) the Respondent does not use the Disputed Domain Name for legitimate reasons.
(c) The Disputed Domain Name has been registered and is being used in bad faith:
(i) the Disputed Domain Name was registered intentionally by the Respondent in order to attract, for commercial gain, Internet users to the Respondent’s commercial activities under the Website;
(ii) the Respondent uses the Disputed Domain Name to create a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s products;
(iii) the Complainant has never authorised the Respondent to offer lighters under the Complainant’s ZIPPO mark; and
(iv) prior to the commencement of this administrative proceeding, the Complainant sent a letter to the Respondent, requesting the Respondent to cease and desist any unauthorised activities but the Complainant did not receive a response from the Respondent. B. Respondent
The Respondent did not submit a formal Response to the Complainant’s contentions.
The fact that the Respondent has not submitted a Response does not automatically result in a decision in favour of the Complainant. However, the failure of the Respondent to file a Response may result in the Panel drawing certain inferences from the Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403). 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the burden of proof lies with the Complainant to show each of the following three elements:
(a) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(c) the Disputed Domain Name has been registered or is being used by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in respect of the ZIPPO trade mark on the basis of its various registrations for such mark in Europe and the UK dating from 1937 and its use of this mark in connection with the manufacture and sale of lighters since 1932.
The Disputed Domain Name incorporates the ZIPPO trade mark in its entirety and is an identical reproduction of the Complainant’s trade mark.
It is a well-established rule that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the domain extension, in this case “.”, is generally disregarded (Rohde & Schwartz GmbH & Co. KG v. Pertshire Marketing, Ltd.,WIPO Case No. D2006-0762).
Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to trade marks in which the Complainant has rights in satisfaction of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant contends that there is no evidence that the Respondent has made bona fide use of the Disputed Domain Name. Further, the Complainant submits that the Respondent has not become commonly known by the Disputed Domain Name and does not use the Disputed Domain Name for legitimate reasons. Accordingly, the Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name and the Respondent has the burden of producing evidence that it does possess such rights or legitimate interests. As no Response has been submitted by the Respondent, the Panel will base its findings in this respect, on inferences that can be reasonably drawn from the Complainant’s evidence.
The Panel accepts that the Complainant’s ZIPPO mark is a world renowned mark and its fame is well established in the UK, where the Respondent is located. The Panel finds that the Respondent’s use of the famous ZIPPO trade mark in its entirety renders no plausible explanation as to why the Respondent selected the trade mark other than to trade on the goodwill of such a mark (see RRI Financial, Inc., v. Ray Chen,WIPO Case No. D2001-1242). In the Complainant’s cease and desist letter to the Respondent on September 20, 2011, the Complainant acknowledged that the lighters sold by the Respondent on the Website may be genuine ZIPPO lighters manufactured by the Complainant but modified by the Respondent (e.g. applying authorised engravings, artwork and/or badges). The Panel finds that the use of the Website to offer for sale ZIPPO lighters to which unauthorised engraving, artwork and/or badges have been applied, precludes a finding of noncommercial use or fair use of the Disputed Domain Name. Similarly, in the event that the lighters are not genuine ZIPPO lighters, but are in fact counterfeit, previous panels have established that the use of a domain name to host a website selling counterfeit products cannot constitute a bona fide offering of goods and services. See for example Cartier International, N.V. , Cartier International, B.V. v. David Lee,WIPO Case No. D2009-1758; and Oakley Inc. v. Li Qi, WIPO Case No. D2010-0970.
In addition, displaying the copyright notice “© 2012 Zippo.” and making numerous references to the Complainant’s ZIPPO trade mark throughout the Website without disclosing the Respondent’s relationship with the Complainant increases confusion for Internet users in that it creates an impression that the Website is owned or authorised by the Complainant. The reference to the Complainant’s trade mark on the Website and the offering for sale of lighters, which are identical in design to the distinctive shape of the Complainant’s ZIPPO lighters and which are possibly genuine ZIPPO lighters, suggests that the Respondent was aware of the Complainant’s ZIPPO trade mark, and that the Disputed Domain Name (and the Website that it points to) was being used in order to create an impression of association or affiliation with the Complainant, its ZIPPO mark and the goodwill attached to the mark. Using a domain name to intentionally trade on the fame or reputation of another constitutes unfair use, and cannot amount to a bona fide offering of goods or services (see Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847).
The Panel also finds that the Respondent must have been aware of the Complainant and its rights in the ZIPPO mark because the Complainant sent a cease and desist letter to the Respondent on September 20, 2011, informing the Respondent of the Complainant’s rights in the ZIPPO mark and requesting the Respondent to cease all unauthorised activities, including offering for sale ZIPPO lighters which have had unauthorised engravings, artwork and/or badges applied to them. The Respondent continued to sell lighters via the Website following receipt of the cease and desist letter, even though it had been expressly informed of the Complainant's rights in the ZIPPO trade mark.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy in respect of the Disputed Domain Name. C. Registered or Used in Bad Faith
Evidence of bad faith includes actual or constructive notice of a well known trade mark at the time of registration of a domain name by a respondent (see Samsonite Corp. v. Colony Holding, NAF Claim No. 94313).
Given the worldwide fame and reputation of the ZIPPO mark and the Complainant’s long-established rights in this mark (including in the UK where the Complainant owns many trade mark registrations for or incorporating ZIPPO), the Panel finds that the Respondent, a company located in the UK, must have been aware of the Complainant and its ZIPPO mark when registering the Disputed Domain Name, which constitutes registration of a domain name in bad faith (see Caesar World, Inc. v. Forum LLC.,WIPO Case No. D2005-0517 and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113, in support of a finding of bad faith registration based on constructive knowledge of the Complainant’s mark(s) on the part of the Respondent).
The Panel is led to conclude that the Respondent registered the Disputed Domain Name with the intention to capitalise on the fame of the Complainant’s ZIPPO mark by attempting to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of the Website at the Disputed Domain Name, thereby increasing the traffic to the Website and profiting from the products being offered for sale. Such use of the Disputed Domain Name by the Respondent constitutes an improper use of the Disputed Domain Name and is therefore further evidence of bad faith use of the Disputed Domain Name on the part of the Respondent (see for example Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774; Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited,WIPO Case No. D2009-0728; and Missoni S.p.A v. 仲裁域名/DomainJet, Inc. /Jack Sun,WIPO Case No. D2011-1058).
The Panel also finds that the Respondent has used the Disputed Domain Name in bad faith when it continued to use the Disputed Domain Name, which points to the Website, to sell ZIPPO branded lighters with unauthorised engraving, artwork and/or badges and/or counterfeit ZIPPO lighters, despite having been notified via the cease and desist letter of the Complainant’s rights in the ZIPPO mark and that such unauthorised activities amounted to infringement of the Complainant’s trade mark rights.
The fact that the Respondent has registered and used the Disputed Domain Name without having any rights or legitimate interests in it is of itself evidence of bad faith on the part of the Respondent. The Panel finds that the Respondent’s numerous references to the Complainant’s ZIPPO trade mark on the Website, the fact that the Website offers for sale lighters which are identical in design to the Complainant’s rectangular-shaped ZIPPO lighters and which are possibly genuine (but modified) ZIPPO lighters, and the fact that the Respondent continued such infringing behaviour despite being notified of the Complainant’s rights in the ZIPPO trade mark, all constitute evidence of blatant bad faith on the part of the Respondent.
The Panel accordingly finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy in respect of the Disputed Domain Name. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
Gabriela Kennedy
Sole Panelist
Dated: June 5, 2012
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