WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Xtraplus Corporation v. Flawless Computers
Case No. D2007-0070
1. The Parties
Complainant is Xtraplus Corporation, doing business as ZipZoomFly, of Newark, California, United States of America, represented by Shawn T. Leuthold, of San Jose, California, United States of America.
Complainant has named three Respondents: DomainsByProxy.com, Brian Smith, and Flawless Computers, LLC. DomainsByProxy.com is simply a privacy domain name registration service. The Registrar has confirmed that the registered owner of the Domain Name is Flawless Computers of Centennial, Colorado, United States of America. Accordingly, the Panel will treat Flawless Computers as the sole Respondent.
2. The Domain Name and Registrar
The disputed domain name <zipzoomflysucks.com> (the “Domain Name”) is registered with Go Daddy Software (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 18, 2007. On January 19, 2007, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 22, 2007, 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 for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 Respondent of the Complaint, and the proceedings commenced on January 29, 2007. 1 In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 19, 2007.
The Center appointed David H. Bernstein as the sole panelist in this matter on February 23, 2007. 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
Because Respondent failed to file a Response, the Panel accepts as true all statements of fact in the Complaint. Action Instruments, Inc. v. Technology Associates, WIPO Case No. D2003-0024 (March 6, 2003); EAuto, L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096 (April 9, 2000).
Complainant is a company that markets and sells computer accessories, computers and technology products through its website, “www.zipzoomfly.com”. Complainant is the owner of the federally-registered trademark ZIPZOOMFLY and claims common-law trademark and copyright rights in a stylized peanut-shaped “O” character that is incorporated in the logo that appears on its website.
Respondent resells custom built personal computers. Respondent registered the Domain Name on September 7, 2006, and maintains a website that is critical of Complainant’s business practices. The website incorporates a logo that is identical to that found in Complainant’s website, including the stylized peanut-shaped “O” character, with the word “Sucks” appended to the end. At one point, Respondent provided excerpts and a catalog of negative comments made by consumers from consumer feedback websites. The excerpts have since been removed and replaced by a link to a consumer feedback website, “www.reseelerratings.com.” Alongside the website’s criticism of Complainant’s business, the website states that one of Complainant’s competitors, Newegg.com, is a better company with which to do business. There is no evidence in the record that Respondent’s website is used to conduct any commercial activity, that Respondent is a direct competitor of Complainant, or that Respondent profits from any traffic that may be diverted from Complainant to Newegg.com by virtue of the information posted on Respondent’s website.
5. Parties’ Contentions
Complainant asserts that the Domain Name is identical or confusingly similar to its registered trademark because it incorporates the mark ZIPZOOMFLY with the word “sucks” appended to the end. Further, Complainant notes that the fact that Respondent appropriates the identical stylized “O” in its logo increases the likelihood that users will be confused.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name because it is not operating a bona fide criticism website. Complainant points to the facts that Respondent states on its website that it plans “to take much business from them [ZipZoomFly]” and that it instead recommends one of ZipZoomFly’s direct competitors, Newegg.com. Complainant also notes that Respondent is in the computer business and speculates that, to the extent it drives business away from ZipZoomFly, it may potentially flow back to Respondent. Finally, Complainant complains that Respondent’s website only incorporated negative comments from the consumer review website, while excluding positive ones, and thus improperly tarnishes Complainant’s reputation.
Finally, Complainant alleges that the Domain Name was registered and is being used in bad faith. Specifically, it speculates that Respondent will in the future make an offer to sell the Domain Name. Complainant also points to Respondent’s statement on the website that it seeks to divert business to a competitor as a sign of bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
Complainant has proven ownership of trademark rights in the mark ZIPZOOMFLY. In addition to its common law rights, Complainant owns a federal trademark registration for ZIPZOOMFLY.
Under the Policy, a domain name is considered “identical or confusingly similar” to a trademark if it incorporates the mark in its entirety, regardless of any other terms appended to the domain name. Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (September 19, 2000). Because the Domain Name incorporates Complainant’s registered mark in its entirety and merely appends an additional word (“sucks”), the Domain Name is confusingly similar to Complainant’s trademark for purposes of the Policy. Ryanair Limited v. Michael Coulston, WIPO Case No. D2006-1194 (December 12, 2006). Accordingly, the Panel finds that Complainant has satisfied its burden under the first factor.
B. Rights or Legitimate Interests
Complainant bears the burden of proving that Respondent lacks a legitimate interest in the Domain Name. Despite Respondent’s default, the Panel must still consider whether Complainant has carried this burden of proving that Respondent has no legitimate interest. See Action Instruments, Inc. v. Technology Assocs., WIPO Case No. D2003-0024 (March 6, 2003).
UDRP panels have in applicable cases repeatedly stated that a U.S.-based website engaged in noncommercial criticism of a U.S.-based trademark owner’s activities enjoys First Amendment protection, even if the domain name incorporates the complainant’s trademark. See, e.g., Benjamin Ladner v. Ben Wetmore, NAF File No. FA 0407000305190 (October 13, 2004); Howard Jarvis Taxpayers Assoc. v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004); Action Instruments, Inc. v. Technology Assocs., WIPO Case No. D2003-0024 (March 6, 2003); The Am. Nat’l Red Cross v. Mafiabusters.com LLC, NAF File No. FA0206000114589 (August 6, 2002); Bosley Med. Group v. Kremer, WIPO Case No. D2000-1647 (February 28, 2001); Pensacola Christian College Inc. v. Gage, NAF File No. FA0110000010314 (December 12, 2001); Bridgestone Firestone, Inc. v. Jack Myers, WIPO Case No. D2000-0190 (July 6, 2000); Compusa Mgmt. Co. v. Customized Computer Training, NAF File No. FA0006000095082 (August 17, 2000). United States Court of Appeals decisions from several Circuits have similarly held that use of a trademark in a domain name for a bona fide criticism site is a protected fair use. See, e.g., Lamparello v. Falwell, 420 F.3d 309 (4th Cir. 2005); TMI, Inc. v. Maxwell, 368 F.3d 433 (5th Cir. 2004); Lucas Nursery and Landscaping, Inc. v. Grosse, 359 F.3d 806 (6th Cir. 2004); Nissan Motor Co. v. Nissan Computer Corp., 378 F.3d 1002 (9th Cir. 2004).2
It is clear that Respondent’s website, both as it originally appeared and as it was subsequently amended, qualifies as a classic complaint site. That, however, does not end the inquiry. If the site is nevertheless a pretext for cybersquatting, such as if “Respondent’s actions evidence an ‘intent for commercial gain to misleadingly divert consumers’ or an ‘intent for commercial gain . . . to tarnish the trademark or service mark at issue,’” then Complainant may succeed in showing that it is not a bona fide criticism site and thus that Respondent lacks a legitimate interest. See Howard Jarvis Taxpayers Assoc. v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004) (quoting paragraph 4(c)(iii) of the Policy). Complainant makes this specific challenge, arguing that Respondent’s website is not a bona fide criticism website, based on three facts: (1) the website announces its intention to “take [as] much business from [ZipZoomFly] as possible”; (2) it recommends that visitors to the website use a direct competitor, Newegg.com, instead of ZipZoomFly; and (3) there is some overlap between the products offered by Complainant and those offered by Respondent, and to the extent that business is diverted from Complainant, it could potentially flow to Respondent for Respondent’s commercial gain.
Respondent’s statement that it intends to take business away from the Complainant, standing on its own, is not probative of whether the Respondent’s website is intended for the Respondent’s commercial gain. Any website or speech that is critical of a business by its very nature stands to decrease the target’s business, and that is often the intent of such messages.
Similarly, that Respondent’s website recommends that visitors use Newegg.com instead of the Complainant for computer parts does not demonstrate that Respondent is acquiring any commercial gain from operating the complaint website. Complainant does not allege, nor is there any evidence to support, that Respondent receives any compensation or other form of commercial benefit from any business that may be diverted to Newegg.com. The only relationship between Respondent and Newegg.com depicted on the record is that Respondent admits on its website that it regularly purchases computer parts from Newegg.com. There is no evidence in the record that Respondent receives commissions or better prices from its vendor as a result of its activity on the criticism website. 3
The Panel also finds that there is insufficient evidence on the record to demonstrate that Respondent’s critique of Complainant’s business could potentially divert business from Complainant to Respondent. Although there may be some overlap in the products sold by the Complainant and the Respondent on the fringes, the record demonstrates that Complainant and Newegg.com are direct competitors in the computer component market, whereas Respondent is focused on selling custom built personal computers. The Panel has reviewed the parties’ websites and has determined that any overlap in products is de minimus at best. Any possibility that diverted business might potentially flow to Respondent is thus not only attenuated, but also unlikely given that the website recommends a particular alternative — Newegg.com — rather than Respondent itself. At the very least, the positive review of Newegg.com belies the notion that Respondent had the intent of obtaining commercial gain for itself from operating the criticism website.
Finally, Complainant argues that Respondent did not have a legitimate purpose in the criticism website because it only reported negative reviews from consumer websites without reporting the accompanying positive reviews. There is, however, no requirement under the Policy that criticisms be tempered with disclosure of positive comments about the Complainant. Similarly, U.S. law has no requirement that a complaint website incorporate opposing viewpoints. Hurley v. Irish-American Gay, Lesbian & Bisexual Group of Boston, 515 U.S. 557, 573 (1995) (“the fundamental rule of protection under the First Amendment [is] that a speaker has the autonomy to choose the content of his own message”). Moreover, even if the contents of Respondent’s website could be seen to tarnish the reputation of Complainant’s business, and even if there was an imbalance given the purely negative tone of the commentary, there still remains no evidence that it was done for commercial gain, as required under the Policy. Howard Jarvis Taxpayers Assoc. v. Paul McCauley, WIPO Case No. D2004-0014 (April 22, 2004) (under paragraph 4(c)(iii) of the Policy, a complainant can trump a finding of fair use for criticism where it demonstrates “intent for commercial gain . . . to tarnish the trademark or service mark at issue”).
In sum, Complainant has not demonstrated that Respondent’s complaint site is used for commercial gain. Accordingly, Complainant has failed to meet its burden on the second factor.
C. Registered and Used in Bad Faith
In light of the Panel’s finding under the legitimate interest factor, the Panel need not consider Complainant’s assertions that Respondent registered and used the domain name in bad faith under paragraph 4(b)(iii) of the Policy.
Because Complainant has failed to demonstrate that Respondent does not have a legitimate right or interest in the Domain Name, the Complaint is denied.
David H. Bernstein
Dated: March 9, 2007
1 By e-mail dated February 19, 2007, Respondent suggested that the Notification of Complaint may have been sent to the wrong address. Despite this assertion, the record indicates that the notification was sent to the address Respondent provided in its WHOIS information, and in any event, that Respondent did in fact receive notice of the Complaint, based on the fact that, on January 30, 2007, it responded by e-mail to the Center’s January 29, 2007 e-mail that included the notice of the Complaint. Moreover, Respondent has not made any attempt to submit a Response nor has Respondent asked for more time to do so in the nearly three weeks since its February 19, 2007 e-mail.
2 As this panel has explained in other cases, it is appropriate to try to conform UDRP decisions to the national law that would apply if the same dispute were pursued in court in order to help ensure consistent application of the law and discourage unnecessary litigation. See Richard Starkey v. Mr. Bradley, NAF file No. 874575 (Feb. 12, 2007) (Bernstein, dissenting).
3 Given the lack of discovery in URDP proceedings and the limited evidentiary record available to the Panel, the Panel is not in a position to find that there is no such relationship. Rather, the Panel is only able to determine that the record is devoid of any evidence of such a relationship. If Complainant has a good faith basis to believe that Respondent is enjoying some commercial gain by virtue of his criticism site, Complainant is free to pursue its claims in court, where it could take discovery on this issue and where the trier of fact would be able to make credibility determinations. See, e.g., Displays Depot, Inc., v. GNO, Inc., WIPO Case No. D2006-0445 (June 29, 2006) at n.3.