The Complainant is Z,Inc. of Ottawa, Canada, represented by L, Spain.
The Respondent is Mai Lifang of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with International Registration Services Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2011. On November 29, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 December 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2011. An informal communication was filed with the Center by the Respondent on December 1, 2011, before the commencement of the proceedings. On December 10, 2011, the Respondent filed with the Center an online submission well before the due date for the response. Therefore, on December 12, 2011, the Center requested the Respondent to confirm whether the online submission was the complete Response. Respondent did not reply to the Center’s request.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on January 13, 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 Canadian company operating a video hire business. It provides DVD rentals through mail order, physical outlets and streaming. It has operated its business under the trademark ZIP since 2004 and under ZIP.TV since mid 2006. Its websites have achieved deep penetration recording 3.6 million unique visitors since June 2009 and 33 million page views in the twelve months prior to the filing of the Complaint. It has received extensive media coverage and the popularity of its ZIP.TV service has been compared to YouTube.
The Complainant owns a Canadian trademark registration in respect of rental and distribution services for DVDs and associated goods and services dating from April 2004.
The Complainant registered the disputed domain name in July 2005 and maintained and continued to use the disputed domain name to direct to its website until the registration was inadvertently allowed to lapse in July 2011. The Complainant's attempts to recover the disputed domain name were unsuccessful as the Respondent registered the disputed domain name in September 2011.
The Respondent is an individual located in Beijing, China and is, according to the Complainant, a professional domainer holding 614 current domain names. As November 24, 2011 the website at the disputed domain name resolved to a PPC page containing links to third party websites including websites offering goods and services similar to those of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant's contentions may be summarized as follows:
- The Complainant has long established registration rights in the trademark ZIP and established common law rights in that trademark and in the trademarks ZIP.CA and ZIP.TV.
- The Respondent has no rights or legitimate interests in the disputed domain name; he has not been authorized by the Complainant to use it; he is not commonly known by it; and the use which he is making of the disputed domain name is commercial.
- The Respondent's use of the disputed domain name to direct to a pay-per-click website is not a use in the bona fide offering of goods or services and cites several prior UDRP decisions holding that unauthorized use of a trademark as a domain name generates revenue by providing links to third party websites does not confer rights or legitimate interests upon the respondent (see, inter alia, Aubert International SAS and Aubert France SA v. T Co,WIPO Case No. D2008-1986 and others).
- The disputed domain name was registered and is being used by the Respondent in bad faith. The Respondent, as a professional domainer, knew or ought reasonably to have known of the Complainant's rights in the trademark ZIP and in the disputed domain name and deliberately chose to register it because of the revenue generating potential attaching to it. At the time the Respondent registered the disputed domain name the Complainant's history of use and ownership of the disputed domain name was publicly available through resources such as the WhoIs search, a Domain Tools search, a simple Google search and through media.
- The Respondent's registration and use of the disputed domain name is in breach of warranties provided under paragraph 2 of the Policy and in the Registrar's Registration Agreement and has registered and used the disputed domain name in violation of the intellectual property rights of the Complainant. B. Respondent
The Respondent contends that:
- he was unaware of the Complainant until the Complaint was filed;
- the word "zip" is a generic word which he chose "because it is a cool name, short and easily identifiable";
- he proposes to use the disputed domain name to set up a Chinese website;
- the disputed domain name is on the Registrar's default name server and is not used for PPC or for links that are competitive to Complainant's goods and services;
- the Complainant gave up ownership of the disputed domain name and let it expire and he has a right to register it. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated registration rights in the trademark ZIP and produced substantial evidence to support its claim for common law rights in that trademark and in the trademarks ZIP.CA and ZIP.TV. The disputed domain name is identical with the Complainant's ZIP.TV trademark and substantially identical with the Complainant's ZIP and ZIP.CA trademarks.
The Panel therefore finds that the disputed domain name is identical with a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent's registration of the disputed domain name was opportunistic following its lapsing due to the Complainant's inadvertent failure to renew it on time. The Respondent's claim that he was not aware of the Complainant seems unlikely in view of the Complainant's extensive use and the publicity which it generated.
Complainant's physical presence may have been confined to North America but the Internet presence of its use of the disputed domain name was universal. However, even if he was not actually aware, that does not mean that the Respondent was entitled to act in disregard for whether or not the chosen domain name reflected the trademark or other rights of another party. As a domainer owning a significant number of other domain name registrations the Respondent should have been well aware of the simple checks which he could have made to alert him to the existence of prior rights. As noted by the learned panel in BHP Billiton Innovation Pty Ltd. v. OS Domain Holdings IV LLC,WIPO Case No. D2008-0488:
“[…] where a company such as the Respondent is in the business of registering domain names and is conscious of the need to not infringe third party trade mark rights […] it is not unreasonable to expect a rigorous "freedom to operate" review designed to alert it to such rights […]".
The Complainant's assertion that he registered the disputed domain name with the intention of using if for a Chinese website is unsupported by any evidence of preparations for such use. The only use which he has made of the disputed domain name has been to direct it to a pay-per-click website and that use, in the light of the Complainant's prior rights, is not use in connection with the bona fide offering of goods or services. The Respondent has therefore failed to establish any of the circumstances set out in paragraph 4(c)(i) of the Policy. There is no other apparent basis upon which he can claim a right or legitimate interest.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
As noted above, the Respondent's claim that he registered the disputed domain name for the purpose of setting up a Chinese website is lacking in credence and he has not produced any evidence to support his assertion in this respect. Further, the Respondent's statement that the disputed domain name is "not to use for PPC or for links are competitive with Complainant's goods and services" is contrary to the evidence produced by the Complainant to show the use of the disputed domain name in that way occurred as recently as November 2011. The Complainant's evidence establishes a strong probability, which the Respondent has been unable to rebut, other than by mere assertion, that the Respondent registered the disputed domain name knowing of, or in willful disregard for, the Complainant's rights in its ZIP and ZIP.TV trademarks and that he has used the disputed domain name for commercial gain by capitalizing on the reputation it had acquired through the Complainant's extensive prior use.
In the opinion of the Panel the Respondent's actions fall squarely within paragraph 4(b)(iv) of the Policy. The Panel there finds that the disputed domain name was registered and is being used in bad faith.
The Panel therefore finds that the disputed domain name was registered and is being used in bad faith. 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.
Desmond J. Ryan AM
Sole Panelist
Dated: January 24, 2012
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