The Complainant is Zoom Video Communications, Inc., United States of America (“United States” and “U.S”), represented by Chestek Legal, United States.
The Respondent is Makow, Ken, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2021. On January 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on January 19, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Respondent sent several email communications on January 19, 2021. The Complainant filed an amended Complaint on January 20, 2021. The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was initially February 9, 2021. The Respondent on January 22, 2021, replied to the Center, referring generally to COVID-19 conditions and submitting that the due date for the Respondent should be extended by at least six (6) months and in no event earlier than August 9, 2021. The Respondent asserted he was a sole owner with one employee and needed time for recover from the “eviscerating effects of the virus” in order to prepare a response. The Respondent maintained that “Big Tech” companies like the Complainant attempt to cancel or kill any competition no matter how insignificant to them, and criticized the Complainant for not reaching out to discuss a potential settlement, which the Respondent maintained would not have involved any monetary compensation. The Respondent also represented in his email of January 22, 2021, that he had registered disputed domain name “prior to the advent of COVID-19” with the intent to compete with the Complainant’s webinar service and not to trade off the Complainant’s name and business. According to the Respondent, Zoom was “the butt of jokes about failed unicorns” when he registered the disputed domain name. Further to the Respondent’s request for an extension, the Center in accordance with paragraph 5(e) of the Rules granted an exceptional extension of 10 days up to and including February 19, 2021. The Respondent replied to the Center on January 22, 2021, stating as follows: “Unacceptable; I asked for SIX MONTHS.” The Center for reasons stated on January 22, 2021, declined to extend further the period for response, but pursuant to Rule 10(d) informed the Respondent that any further extension requests would be a matter for the appointed panel to decide. The Center thereafter notified the Parties of the Commencement of Panel Appointment Process on February 19, 2021. The Respondent sent an informal communication on the same day, which the Center acknowledged receipt of and advised would be forwarded to the Panel once appointed. The Center appointed William R. Towns as the sole panelist in this matter on February 26, 2021. 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 Zoom Video Communications, Inc., a technology company founded in April 2011 and headquartered in San Jose, United States. The Complainant offers video conferencing services, video teleconferencing, and video webinars, the latter of which sometimes have been referred to as “zoominars.” The Complainant has secured multiple international registrations for its ZOOM mark under the Madrid Protocol, together as well as trademark registrations in a number of other jurisdictions, including among others the following: -ZOOM (stylized), International Trademark Registration No. 1365698, date of registration August 4, 2017 in Class 38; (related U.S. Serial No.87557217) (designating contracting parties under the Madrid Protocol); -ZOOM (word), China Trademark Registration No. 40417467, date of registration May 14, 2020 in Class 38; -ZOOM (stylized), International Trademark Registration No. 1539794, date of registration May 28, 2020 in Class 9; (related U.S. Serial No. 88921775) (designating contracting parties under the Madrid Protocol); -ZOOM (stylized), International Trademark Registration No. 1539765, date of registration May 28, 2020 in Class 42; (related U.S. Serial No. 88920458) (designating contracting parties under the Madrid Protocol); -ZOOM (word), European Union (EUTM) Registration No. 018293116, applied for November 30, 2018, and registered August 18, 2020 in Class 38 (cancellation proceeding pending); (see U.S. Registration No. 88016782, June 27, 2018); -ZOOM (word), United Kingdom (U.K.) Trade Mark Registration No. UK00918293116, filing date November 30, 2018, entry in register August 18, 2020 in Class 38; and -ZOOM (stylized), Japan Trademark Registration No. 1365698, date of registration August 4, 2017 in Class 38. The Complainant’s pending applications to register related U.S. Trademark Registrations Nos. 88920458, and 87557217 (the Complainant’s “basic applications”) have been subject to refusal by the United States Patent and Trademark Office (USPTO) under Section 2(d) of the Trademark Act, on the grounds that the Complainant’s applied for marks are likely to be confused with Zoom Telephonic, Inc.’s registered ZOOM mark, U.S. Trademark Registration No. 2675838. Under the Madrid Protocol, the scope of an international registration is dependent on the scope of the basic mark for five years. If the basic mark is refused registration, canceled or limited, so is the international registration and the designated contracting parties. The Complainant on February 19, 2021, filed with the USTPO Trademark Trial And Appeal Board (TTAB) a Petition for Cancellation as to U.S. Registration No. 2675838. The disputed domain name The Complainant asserts both registered and common law trademark rights in its ZOOM mark predating the Respondent’s November 20, 2019, registration of the disputed domain name. The Complainant submits that its ZOOM mark has become famous, explaining that with the onset of the COVID-19 pandemic Zoom meetings quickly became integral to the continuation of business, education, court proceedings, and social events. According to the Complainant, in March 2020 more than 200 million users were participants in Zoom meetings, as compared to 10 million users in December 2019. The Complainant observes that courts are routinely using the Zoom teleconferencing application to conduct hearings, and that people are using Zoom products for entertainment and to stay connected. The Complainant remarks, however, that others such as the Respondent may seek to exploit the fame of the Complainant’s ZOOM mark for malicious purposes. The Complainant submits that the disputed domain name The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been authorized to register or use the Complainant’s mark in a domain name and has not been commonly known by the disputed domain name. The Complainant asserts that the Respondent has neither used nor made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, and is not making a legitimate noncommercial or fair use of the disputed domain name. According to the Complainant insists the Respondent solely for commercial gain is using the disputed domain name to sell services competing directly with services offered by the Complainant. The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent intentionally has sought for commercial gain to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, or endorsement of the Respondent’s products or services. The Complainant further urges that the Respondent’s inclusion in the disputed domain name of the generic Top-Level Domain (“gTLD”) “.video” signals an abusive intent by the Respondent to confuse Internet visitors. In such circumstances, the Complainant maintains that the presence of a small and vague disclaimer posted on the Respondent’s website cannot serve to negate bad faith in the context of the case. B. Respondent The Respondent did not submit a formal reply to the Complaint. As previously noted, however, the Respondent in his email of January 22, 2021, asserted that he had registered disputed domain name “prior to the advent of COVID-19” intending to compete with the Complainant’s webinar service but without trading off the Complainant’s name and business. The Respondent stated that Zoom was “the butt of jokes about failed unicorns” when he registered the disputed domain name, and further asserted that “Big Tech” companies like the Complainant always would attempt to cancel or kill any competition no matter how insignificant to them. 6. Discussion and Findings A. Scope of the Policy The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”, see Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable. Paragraph 10(a) of the Rules grants the Panel the power to conduct the proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules. Paragraph 10(c) of the Rules provides that the Panel shall ensure that the administrative proceeding takes place with due expedition, but the Panel may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel. The Panel has broad discretion in the conduct of proceedings under the Policy, and shall ensure that the Parties each are afforded a fair opportunity to present its case, and ensure that the administrative proceeding takes place with due expedition. See Tumblr, Inc. v. 段翔宇(Duan Xiang Yu),WIPO Case No. D2013-0106. The Panel notes that the Respondent was requesting a six-month extension claiming, “this is a now classic case of harassment and intimidation by Big Tech toward small business – I am the sole owner with ONE employee – I need time to recover physically and financially from the eviscerating effects of this virus and prepare a response.” The Panel notes that the Center granted an exceptional extension of 10 days for the submission of the Response. The Panel considers that usually the period allowed under the Policy for the filing of the Response, exceptionally extended by the Center, should be taken as sufficient time for the Respondent to be able to present any defense to his case. The Panel is conscious of the fact that the UDRP procedure is an online administrative procedure that takes place with due expedition, and where any response shall be submitted in electronic form only. The Panel notes that after the Center declined to extend further the period for response, leaving it for the Panel’s consideration any further extensions, the Respondent sent two further email communications without addressing the Complainant’s contentions. Having taken into account all the circumstances of this case, the Panel finds that the Respondent had already received a fair opportunity to present its case in terms of paragraph 10(b) of the Rules, but failed to do so. The Panel finds that there are not sufficient reasons pertaining to the Respondent that would justify the further extension of time requested for the submission of the Response. Therefore, the Panel will proceed to render this Decision. Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (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 with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i). Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations. Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the domain name, once the complainant has made a prima facie showing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar The Panel finds that the disputed domain name In this case, the Complainant’s ZOOM mark is recognizable in the disputed domain name The Respondent’s inclusion in the disputed domain name of what appears to be a coined phrase for Zoom seminars – i.e., “zoominars” – does not prevent a finding of confusing similarity of the disputed domain name to the Complainant’s ZOOM mark. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) or letters (such as “inars”) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.2 The gTLDs – in in this instance “.video” – generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the gTLD.3 Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been licensed or otherwise authorized to use the Complainant’s ZOOM mark. The Respondent notwithstanding has registered the disputed domain name, in which the Complainant’s ZOOM mark clearly is recognizable. The Respondent website appears to be offering ZOOM Video Seminars for use to the public on his website, and has referred to the product as “Zoominars” with a published price of USD 950. Use of the Complainant’s ZOOM Video Seminar requires the purchase of a license. Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or (ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the respondent is 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 Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy. The Panel concludes from the record that the Respondent was aware of the Complainant and the Complainant’s ZOOM mark when registering the disputed domain name. As noted above, the disputed domain name is confusingly similar to the Complainant’s ZOOM mark. The Respondent’s less than conspicuous disclaimer printed in small white font in the upper right corner of the Respondent’s “www.zoominars.video” website easily could be overlooked by Internet visitors, and even if the disclaimer were to be noticed Internet visitors might just as easily conclude that the “Zoom Seminars” website to which they have arrived enjoys the sponsorship or endorsement of the Complainant. And while the Respondent purports to disclaim any affiliation with the Complainant, the Respondent conveniently omits to disclose to prospective customers that a license must be acquired in order to use the ZOOM Video Webinar. See “www.zoom.us/pricing/webinar”. The Panel further concludes that the Respondent cannot claim to be making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. An assessment of a claim of fair use under paragraph 4(c)(iii) of the Policy entails consideration of the nature of the disputed domain name, as well as circumstances beyond the disputed domain name itself, and in some cases issues of commercial activity. A respondent’s use of a domain name is not “fair” in circumstances where the domain name falsely suggests affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla,WIPO Case No. D2016-1698. See WIPO Overview 3.0, section 2.5.1 and cases cited therein. Where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The Panel finds that the Respondent’s use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. As previously noted, the Respondent has not been authorized to use the Complainant’s mark, and the Panel concludes that the Respondent has not been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy. The Respondent’s registration of the confusingly similar disputed domain name , and its use for a website that largely adopts the design, color scheme and fonts of the Complainant’s website strongly affirms the Respondent’s targeting of the Complainant. Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. Having regard to the totality of circumstances in the record, the Panel concludes that the Respondent when registering the disputed domain name was aware of the Complainant’s ZOOM mark and registered the disputed domain name due to its similarity with Complainant’s ZOOM mark. The Respondent registered and has used the disputed domain name intentionally for commercial gain to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s ZOOM mark as to the source, sponsorship, affiliation or endorsement of the products or services that have been offered on the Respondent’s website. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 disputed domain name William R. Towns 1 See WIPO Overview 3.0, section 1.7. 2 See WIPO Overview 3.0, section 1.8 and cases cited therein. 3 See WIPO Overview 3.0 , section 1.11.1 and cases cited therein. In some instances, however, the meaning of a particular gTLD may be relevant to panel assessment of the second and third elements of the Policy. See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
Sole Panelist
Date: March 12, 2021
Full & Egal Universal Law Academy