The Complainant is Zoological Society of Cincinnati dba Cincinnati Zoo & Botanical Garden of Cincinnati, Ohio, United States of America, represented by Graydon Head & Ritchey, LLP, United States of America.
The Respondent is Dotsan, R.S. Potda of Mumbai, India. 2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2013. On January 4, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 4, 2013, 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.
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 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2013.
The Center appointed Tony Willoughby as the sole panelist in this matter on February 1, 2013. 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.
On receipt of the case file the Panel noticed that certain of the schedules to one of the annexes to the Complaint were missing. This appeared to be a simple oversight and on February 4, 2013 the Panel issued the Administrative Panel Procedural Order No. 1 giving the Complainant 24 hours within which to rectify the omission. This the Complainant did in timely fashion on the same day. On February 5, 2012, the Panel issued the Administrative Panel Procedural Order No. 2 giving the Respondent 24 hours within which to file a submission in response, if it wished to do so. However, the email address provided by the Respondent for the Registrar’s database is non-operative and all that the Center has received in response is a “undeliverable” message. 4. Factual Background
The unchallenged evidence of the Complainant, well-supported by documentary evidence, which the Panel is ready to accept as fact, is as follows:
1. The Complainant is an Ohio corporation founded in 1873, which opened the doors to its zoo in 1875, and is one of the oldest zoos in the United States of America (“USA”).
2. The Complainant has used the name “Cincinnati Zoo” continuously for more than 90 years in relation to the operation of the zoo and the provision of related educational and cultural services.
3. Since the year 2000 visitor numbers to the Complainant’s zoo have averaged over 1,000,000 per year (1,200,000 in 2011).
4. The Complainant is the registrant of the domain name, registered on September 8, 2001.
5. On October 30, 2012 the Complainant’s representative sent an email to the Respondent drawing the Respondent’s attention to the Complainant’s rights in respect of the name, “Cincinnati Zoo” and seeking transfer of the Domain Name. No reply was received save for an error notice reading “polto@ not used”.
The Domain Name was registered on July 21, 2001 and is connected to what appears to be a commercial website featuring links to a large number of other sites including games sites and dating sites. None of the links appears to relate to Cincinnati Zoo or anything remotely resembling a zoo. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to its unregistered trade mark, CINCINNATI ZOO, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(b)(i) and (iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark 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. B. Identical or Confusingly Similar
The Complainant has satisfied the Panel that, by virtue of its use of the name “Cincinnati Zoo” over the last 90 years, the Complainant will have acquired unregistered trade mark rights in the USA in relation to the operation of zoos and the provision of related educational and cultural services.
The Domain Name comprises the Complainant’s unregistered trade mark CINCINNATI ZOO and the “.com” generic Top-Level Domain (gTLD) suffix.
It being permissible for panels to ignore the generic gTLD suffix when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy, the Panel finds that the Domain Name is identical or confusingly similar to the Complainant’s CINCINNATI ZOO unregistered trade mark. C. Rights or Legitimate Interests
While the Complainant is required to prove all three elements of paragraph 4(a) of the Policy, paragraph 4(a)(ii) of the Policy requires the Complainant to prove a negative, which can be very difficult for a complainant, particularly where, as in this case, the Respondent is a complete stranger to the Complainant and resident in a different continent many thousand of miles distant. Paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) deals with the matter as follows:
“While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP …... If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name and acquired the Domain Name for the purpose of either selling the Domain Name to the Complainant at a profit (paragraph 4(b)(i) of the Policy) or enticing Internet users to the Respondent’s website for commercial gain on the back of the fame of the Complainant’s trade mark. The Complainant contends that Internet users seeking the Complainant’s website will reach the Respondent’s website where they will be exposed to the commercial links featured on the Respondent’s website. The Complainant contends that there can be no other plausible reason for the Respondent’s selection of the Domain Name given that nothing on the Respondent’s website appears to have anything to do with “Cincinnati Zoo”.
In the view of the Panel the Complainant has made out a strong prima facie case. The Complainant has granted the Respondent no permission to use the Complainant’s unregistered trade mark and there is no obvious connection between the Domain Name and the content of the website to which it is attached. The Respondent has a case to answer, but there is no answer. The Respondent has elected not to respond and from the available record the Panel is unable to conceive of any basis upon which the Respondent might reasonably be said to have rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. D. Registered and Used in Bad Faith
By virtue of the same reasoning the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent cannot have dreamt up the name “Cincinnati Zoo” from nowhere. In the Panel’s view, it must have been aware of the existence of such a zoo when it acquired the Domain Name and must have been aware that the operator of the zoo would be likely to have trade mark rights in the name (whether registered or unregistered).
Given that the Domain Name was registered over 11 years ago and no approach has been made by the Respondent to the Complainant, nor any response provided to the Complainant’s representative’s recent email, the Panel dismisses the Complainant’s contention that the Domain Name was registered by the Respondent for the purposes of resale to the Complainant. However, in the absence of any explanation from the Respondent, the Panel believes it probable that the Respondent registered the Domain Name for commercial gain, hoping and anticipating that Internet users will be attracted to the Respondent’s website on the back of the fame of the Complainant’s name and trade mark.
What is surprising to the Panel is that the Complainant has taken no action until now. It seems inconceivable to the Panel that the Complainant cannot have been aware of the Domain Name since at least September 8, 2001 when it registered its domain name, . Checking the status of the “.com” equivalent of the Domain Name would have been an obvious step to take.
The Panel is aware that there is currently a debate among some panels as to whether “laches” is a defence to a complaint under the Policy. The Policy makes no mention of “laches” (or delay) and the Panel sees no reason to introduce such a concept. In many of the cases where panels have dismissed complaints on the basis of delay, the complaints could easily have failed on other grounds (e.g. lack of bad faith). In this case, the Respondent has not sought to argue the point and, in any event, such delay as there has been has been of no commercial disadvantage to the Respondent. The Respondent has simply had more time than it might reasonably have expected in order to derive a commercial benefit through use of the Domain Name. Moreover, it is not as if the commercial use that the Respondent has made of the Domain Name over the last 11 years has given to the Respondent any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraphs 4(a)(iii) and 4(b)(iv) of the Policy. 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 Domain Name, , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: February 6, 2013
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