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#ZenCat .com : A 15 year old #domain lost to the owners of a design trademark

ZFBot

UDRP: Loss for the Respondent.

ZenCat.com, a domain registered in 2003 was just lost via the UDRP process at the National Arbitration Forum.

What makes this case stand out, is that the trademark for ZENCAT was registered in 2018, and it’s a design mark for veterinary services. Not only that: the colors of the design are claimed as part of the mark.

The biggest issue was that the Respondent did not file any kind of response.

Despite the domain being offered for sale for $3,999 via the GoDaddy marketplaces, the circumstances of the case could have led to the opposite outcome, in our opinion, if a competent IP attorney were involved to defend the case.

Houston Putnam Lowry, sole panelist, not only decided on behalf of the Complainant, but also made this astounding comment about the Respondent’s use of a legitimate WHOIS privacy service:

” In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name.  An honest merchant in the marketplace does not generally try to conceal the merchant’s identity.  Good faith requires honesty in fact. “

Full details of the decision on ZenCat.com follow:

Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249

Claim Number: FA1808001800231
PARTIES

Complainant is Phoenix Niesley-Lindgren Watt (“Complainant”), California, USA. Respondent is Contact Privacy Inc. Customer 0150049249 (“Respondent”), Canada.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zencat.com>, registered with GoDaddy.com, LLC.

PANEL

The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 6, 2018; the Forum received payment on August 6, 2018.

On August 7, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <zencat.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@zencat.com. Also on August 14, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

On September 6, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Trademark/Service Mark Information: Rule 3(b)(viii).

ZenCat (US Trademark Reg. No. 5,477,027) is currently used for cat toys (international class 028), Veterinary services (International class 044), and Animal adoptions (International class 045). And will be used in the future for clothing, cat furniture, cat food, publications, and additional classes.

FACTUAL AND LEGAL GROUNDS

This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).

[All three elements of the Policy must be alleged and proved by the Complainant. UDRP Para. 4(a).] [The analysis in this section may require more space than provided, but the entire Complaint shall not exceed fifteen (15) pages. FORUM Supp. Rule 4(a).]

[a.] Specify in the space below the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).

The domain zencat.com is identical to the U. S. Patent and Trademark Office trademark, ZenCat, Registration Number 5,477,027, filed 5-20-2017 and Registered 5-22- 2018, by Phoenix Niesley-Lindgren Watt (Complainant).

[b.] Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).

Respondent has not made preparations to use, or used, the “zencat.com” domain name in connection with a Bona Fide offering of goods or services, has no trademark or service mark rights in the ZenCat trademark, and is not making a legitimate non-commercial or fair use of the “zencat.com” domain name.

[c.] Specify in the space below why the domain name(s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).

Respondent has registered the domain name “zencat.com” in a blatant attempt to capitalize unfairly on the goodwill of the ZenCat mark. Respondent’s bad faith is evidenced by its placing of the domain name for sale on the “Afternic.com” and “GoDaddy.com” websites at a price ($3,999, Exhibits B and C) that far exceeds its out-of-pocket costs and thus has violated Paragraph 4(b)(i) of the Policy.

Respondent’s target audience for its offer of sale undoubtedly was and is the Complainant. Respondent has no Bona Fide purpose for the domain name, and has offered to sell the domain name to the Complainant for a price in excess of its costs, which constitutes bad faith registration of the name.

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires Complainant prove the following three elements to obtain an order transferring or cancelling a domain name:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

Identical and/or Confusingly Similar

Complainant claims rights in the ZENCAT mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 5,477,027, registered May 22, 2018; filed May 20, 2017). Registration of a mark with a governmental authority, such as the USPTO, is sufficient to demonstrate rights in a mark under Policy ¶4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). Complainant’s registration of the ZENCAT mark with the USPTO is sufficient to establish rights in the mark under Policy ¶4(a)(i).

Complainant claims Respondent’s <zencat.com> domain name is identical to the ZENCAT mark, plus a TLD. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017) (“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”). The <zencat.com> domain name is identical to the ZENCAT mark under Policy ¶4(a)(i).

The Panel finds Policy ¶4(a)(i) satisfied.

Rights or Legitimate Interests

Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant claims Respondent has no rights or legitimate interests in the <zencat.com> domain name. Respondent is proceeding pro se, so the Panel will be a little more liberal than usual in interpreting Complainant’s Complaint. Complainant did not argue Respondent is not commonly known by the disputed domain name, but provided enough information for the Panel to determine this fact. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Contact Privacy Inc., Customer 0150049249” (which indicates the disputed domain name was registered using a WHOIS privacy service). This registrar does not automatically provide Respondent’s real name once a Proceeding commences (some registrars do provide a respondent’s real name). Respondent has not been commonly known by the <zencat.com> domain name under Policy ¶4(c)(ii).

Complainant claims Respondent has not made demonstrable preparations to use the <zencat.com> domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use, which indicates it does not have rights or legitimate interests in the name. Inactive holding of a domain name shows Respondent does not have rights or legitimate interests in the domain name under Policy ¶¶4(c)(i) or (iii) (especially since the domain name was created August 14, 2003). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name). While a domain can be used for purposes other than hosting a website, Respondent does not make any such claims. The domain resolves to a dynamic parking page with what appear to be pay-per-click links. This does not constitute a bona fide use, see also Disney Enters., Inc. v. Kamble, FA 918556 (Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)). Respondent does not have rights or legitimate interests in the domain name under Policy ¶¶4(c)(i) or (iii).

Respondent registered the domain name using a WHOIS privacy service. This means Respondent has done nothing to publicly associate itself with the domain name. Respondent could not acquire any rights to the domain name simply by registering it.

The Panel finds Policy ¶4(a)(ii) satisfied.

Registration and Use in Bad Faith

Complainant claims Respondent’s bad faith is evident from its offering of the domain name for sale for an amount in excess of out-of-pocket costs, indicating its registration and use of the domain name in bad faith. Respondent offers to sell the domain name for $3,999.00 (and GoDaddy indicates it can be renewed for $14.99/year). It seems clear Respondent is requiring a purchase price in excess of Respondent’s out of pocket costs. A general offer to sell a domain name is evidence the respondent intended to make such an offer at the time it registered the name, supporting a finding of bad faith under Policy ¶4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶4(b)(i).); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Forum Feb. 21, 2002) (“[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner”). Respondent registered and used the <zencat.com> domain name in bad faith under Policy ¶4(b)(i).

Respondent registered the disputed domain name using a WHOIS privacy service. In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.

The Panel finds Policy ¶4(a)(iii) satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.

Accordingly, it is Ordered the <zencat.com> domain name be TRANSFERRED from Respondent to Complainant.

Houston Putnam Lowry, Chartered Arbitrator, Panelist

Dated: Thursday, September 6, 2018


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