WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Z-Tel Technologies, Inc., v. Domain Deluxe

Case No. D2001-1427

 

1. The Parties

The Complainant is Z-Tel Technologies, Inc., a corporation of Delaware, of 601 South Harbour Island Blvd., #220, Tampa, FL 33602, U.S.A.

Complainantís authorized representative in this administrative proceeding is Janice W. Housey of Roberts, Mlotkowski & Hobbes, P.C., 3911 Old Lee Highway, Suite 43B, Fairfax, VA 22030, U.S.A.

The Respondent is Domain Deluxe, of P.O. Box 7628 - General Post Office, Central Hong Kong, Republic of China.

 

2. The Domain Name and Registrar

The Domain Name the subject of this Complaint is <ztel.net>.

The Registrar of the Domain Name is The Registry at Info Avenue, LLC, P.O. Box 1897, 3545 Centre Circle Drive, Fort Mill, SC 29716, U.S.A.

 

3. Procedural History

3.1. The Complaint in respect of the disputed Domain Name was received by the World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) by email on December 6, 2001, and in hard copy on December 11, 2001. Complainant states that a copy of the Complaint was sent or transmitted to Respondent by first class mail on December 5, 2001; and a copy was sent to the Registrar, The Registry at Info Avenue, by email on December 5, 2001.

3.2. On December 19, 2001, verification was received from the Registrar, The Registry at Info Avenue, that the name of the Registrant of the disputed Domain Name <ztel.net> is: Domain Deluxe, P.O. Box 7628 - General Post Office, Central, HK. The Administrative Contact is: Deluxe, Domain; Domain Deluxe, P.O. Box 7628 - General Post Office, Central, HK. The Registrar confirmed that the Uniform Domain Name Dispute Resolution Policy applies to the disputed Domain Name.

3.3. On December 19, 2001, WIPO Center made a print of the response obtained by attempting to access the website corresponding to the disputed Domain Name.

3.4. On December 21, 2001, WIPO Center determined (and the Administrative Panel has subsequently accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules) all as approved by the Internet Corporation for Assigned Names and Numbers (ICANN).

3.5. On December 21, 2001, Formal Notification of Complaint and Commencement of Administrative Proceeding (with enclosures) was sent by WIPO Center to Respondent by post/courier (with enclosures) and email (without attachments). The Formal Notification was copied to Complainant, to ICANN and to the Registrar by email.

3.6. No Response was received from Respondent by the due date and a Notification of Respondent Default was sent to the Parties on January 16, 2002.

3.7. On February 6, 2002, Dr. Clive Trotman, having provided the WIPO Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to Complainant, Respondent and the Administrative Panel. An electronic copy of the Complaint and Response was sent by email to the Administrative Panel on February 6, 2002, and the hardcopy of the Case File was sent by courier.

 

4. Factual Background

4.1. Complainant, according to its certified Complaint and Annexes, is a Company established in the field of telecommunications. The Company has fame for instance in having been named as the number 1 Company on the Deloitte & Touche 2001 Florida High Tech Corridor's Fast 50 Rising Star List.

4.2. Complainant is the owner of the trade or service marks Z-TEL (Reg. No. 2,391,572, registered on: Oct. 3, 2000), Z-TEL and Design (Ser. No. 76/110,578, filed on: Aug. 16, 2000), Z-TEL TECHNOLOGIES (Reg. No. 2,487973, registered on: September 11, 2001), Z-TEL COMMUNICATIONS, INC. and Design (Reg. No. 2,425,551, registered on: January 30, 2001) and Z-TEL BUSINESS NETWORK (Ser. No. 75/629,656 filed on: Jan. 28, 1999). These trade or service marks will be referred to below collectively as the Z-TEL trademarks.

4.3. Complainant has been using the Z-TEL trademarks in connection with telecommunications services since at least as early as March 1998. The Z-TEL trademarks are inherently distinctive and well-known and the Company has received favorable press comment.

4.4. Complainant uses extensively the Internet web sites located at www.z-tel.com and www.ztel.com.

4.5. Complainant Company is traded on the NASDAQ stock exchange under the ticker symbol ZTEL.

4.6. Complainant has spent considerable amounts of money, time and effort in securing, developing, promoting, advertising and protecting its Z-TEL marks and its web site.

 

5. Partiesí Contentions

A. Contentions of Complainant

5.1. The contentions of Complainant include (paragraphs 5.2-5.7 below) that:

5.2. The dispute is properly within the scope of the Uniform Domain Name Dispute Resolution Policy (the Policy). The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the Policy by reference.

5.3. The disputed Domain Name is confusingly similar to the dominant portion of the Z-TEL trademarks in which Complainant has rights and is identical to Complainantís stock ticker symbol.

5.4. Respondent has no rights or legitimate interest in the disputed Domain Name.

5.5. Respondentís registration and use of the disputed Domain Name is in bad faith in terms of the Policy. Respondent has registered the Domain Name intending to either: (1) profit from the sale of the Domain Name by selling it to Complainant; (2) profit from the sale of the Domain Name by selling it to a competitor of Complainantís so that the competitor could divert sales; (3) develop its own web sites using Complainant's trademarks, with the intent to divert customers away from Complainant, cause confusion in the marketplace, or otherwise trade on the goodwill and name of Complainant; (4) prevent Complainant from registering the Domain Name for its own business.

5.6. The disputed Domain Name is not in bona fide use. It provides a token presence whereas the real intention is to profit from the re-sale of the Domain Name to either Complainant or a competitor of Complainant.

5.7. The remedy requested by Complainant is that the disputed Domain Name be transferred to Complainant.

B. Contentions of Respondent

5.8. No Response has been received from Respondent.

 

6. Discussion and Findings

Jurisdiction of Administrative Panel

6.1. Paragraph 4(a) of the Policy (in the numbering system provided by ICANN and WIPO; that provided by the present Registrar is in a slightly different form) states:

"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith."

6.2. Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.

Whether the Domain Name is Identical or Confusingly Similar to a Trademark

6.3. The Domain Name subject to this Complaint is <ztel.net>. Complainant is the owner of and has rights in certain Z-TEL trademarks. Domain names, owing to their limited scope for punctuation and the desirability for simplicity, inherently may use variants of a trademark. Introduction of a small variation such as the deletion of a hyphen from another's trademark makes no substantial difference and usually does not avoid confusing similarity between the Domain Name and the trademark (Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026; Draw-Tite Inc., v. Plattsburgh Spring Inc., WIPO Case No. D2000-0017; George-Marie Glover and George-Marie Glover, LLC v. Cherie Pogue, WIPO Case D2001-0600; Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Gateway, Inc. v. Pixelera.com, Inc., WIPO Case No. D2000-0109). The inclusion of ".net" or equivalent into a Domain Name is inevitable and of no consequence for the determination of similarity.

6.4. On the basis of the uncontested facts presented by Complainant the Administrative Panel finds in the terms of Paragraph 4(a)(i) of the Policy that the disputed Domain Name <ztel.net> is confusingly similar to Complainant's trademarks.

Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name

6.5. Complainant is required to prove that Respondent has no rights or legitimate interests in respect of the disputed Domain Name. The Administrative Panel is cognizant of the fashionable nature of the letter "Z" in trade names and of the plethora of trademarks and service marks beginning with "Z" or "Z-" (or ending with "Z" or "-Z"). Furthermore the word or contraction "TEL" has universal usage and meaning in the context of telecommunications and associated goods and services. As pointed out by the Panelist, Alan L. Limbury, "Where a trader uses a descriptive name as a trademark, only slight differences will suffice to distinguish another trader and its business from the first trader and its business" (Gateway, Inc. v. Pixelera.com, Inc., WIPO Case No. D2000-0109).

6.6. Complainant asserts in its certified Complaint that Respondent has no legitimate rights in the disputed Domain Name. Respondent has not denied any component of the Complaint nor claimed to have acquired any right in the disputed Domain Name. Respondent has not availed itself of any defense in general or particularly in the terms of Paragraph 4(c) of the Policy.

6.7. Respondent has not claimed any reason to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services in terms of Paragraph 4(c)(i) of the Policy.

6.8. Respondent has not claimed that as an individual, business, or other organization it has been commonly known by the Domain Name in terms of Paragraph 4(c)(ii) of the Policy.

6.9. Respondent has not claimed to be making a legitimate noncommercial or fair use of the Domain Name in terms of Paragraph 4(c)(iii) of the Policy.

6.10. In summary in the matter of rights or legitimate interests, and recognizing that the terms of Paragraphs 4(c)(i), (ii) and (iii) of the Policy are without limitation, Complainant has satisfied the Administrative Panel that Respondent has no rights or legitimate interests in the disputed Domain Name in the terms of Paragraph 4(a)(ii) of the Policy.

Whether Domain Name Has Been Registered and Is Being Used in Bad Faith

6.11. Paragraph 4(a)(iii) of the Policy requires Complainant to prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) provides four illustrative circumstances (without limitation) that shall be evidence of the registration and use of a Domain Name in bad faith, the first two of which read as follows:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;"

"(ii) you have 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 you have engaged in a pattern of such conduct;"

6.12. According to the uncontested evidence provided by Complainant at Annex F, the website of the disputed Domain Name has displayed an announcement: "<ztel.net> is for sale. Click here to make an offer." The visitor was eventually led by links to a website of Domain Deluxe, a seller of registered Domain Names, which stated inter alia that "Our asking prices for most of our domains range from $1,500 to $20,000". The Complainant has provided convincing evidence (Annex H) to the effect that the website of Domain Deluxe is owned by the Respondent in the present case. Complainant certifies that according to its enquiries, Respondent had over 1000 domain names available for sale, many of them being similar to well known trademarks and entertainment titles.

6.13. The Respondent clearly has engaged in a pattern of the conduct of registering Domain Names similar to existing trademarks or service marks and offering them for sale at prices representing a considerable profit over their direct costs of registration. The disputed Domain Name <ztel.net> is so confusingly similar to Complainant's trademarks and to Complainant's legitimately owned Domain Names <ztel.com> and <z-tel.com> reflecting its trademarks, that Respondent cannot reasonably have had any other primary intent than to sell it to Complainant or a competitor. Respondent has prevented Complainant from reflecting its trademark in a parallel version of its existing legitimate Domain Name and Respondent has engaged in a pattern of such conduct.

6.14. The Administrative Panel finds the activities of Respondent in respect of the disputed Domain Name to be in bad faith generally within the terms of Paragraph 4(a)(iii) of the Policy and specifically in terms of Paragraphs 4(b)(i) and 4(b)(ii) of the Policy.

6.15. In summary, as concluded in 6.4 above Complainant succeeds under Paragraph 4(a)(i) of the Policy. As concluded in 6.10 above, Complainant succeeds under Paragraph 4(a)(ii) of the Policy. As concluded in 6.14 above, Complainant succeeds under Paragraph 4(a)(iii) of the Policy. The Complainant has proven all three points required by Paragraph 4(a) of the Policy and the Administrative Panel awards its decision in favor of the Complainant and against the Respondent.

 

7. Decision

The Decision of the Administrative Panel is that the disputed Domain Name <ztel.net> is confusingly similar to the trademarks in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed Domain Name; and that Respondent has registered and is using the disputed Domain Name in bad faith. The Domain Name <ztel.net> shall be transferred to the Complainant.

 


 

Dr. Clive N. A. Trotman
Sole Panelist

Dated: February 20, 2002