WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zebra Technologies Corporation, Zebra Technologies Europe Limited, ZIH Corp. v. Eagle Technologies Limited

Case No. D2010-1073

1. The Parties

The Complainants are Zebra Technologies Corporation of Lincolnshire, Illinois, United States of America, Zebra Technologies Europe Limited of Reading, Berkshire, United Kingdom of Great Britain and Northern Ireland and ZIH Corp. of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland, represented by Marks & Clerk Intellectual Property, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Eagle Technologies Limited of Bracknell, Berks, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The Domain Names <zebracardprinter.com> and <zebracardprinters.com> are registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2010. On June 29, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the Domain Names. On the same day, Tucows Inc. 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 July 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2010.

The Center appointed Luca Barbero as the sole panelist in this matter on August 13, 2010. 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 Complainants are associated companies which provide printer and printer supply products under the Zebra name worldwide. The Complainants are the owners of several trademarks registrations consisting in the sign ZEBRA, such as the United Kingdom Trademark No. 1,336,154, filed on February 22, 1988, in Class 7; the Community Trademark No. 370,486, filed on September 5, 1996, in Classes 7, 9, and 16; and the United States Trademark No. 1,274,816, filed on November 10, 1982, in Class 7.

The Complainants operate the web site “www.zebra.com” since at least 1998 and the web sites “www.zebracard.com” and “www.zebracard.co.uk” since at least 2004, as evidenced by printouts of the corresponding web pages retrieved from “www.archive.org” and attached to the Complaint.

The Respondent registered the Domain Names <zebracardprinter.com> and <zebracardprinters.com> on February 21, 2002.

5. Parties’ Contentions

A. Complainants

The Complainants point out that Zebra companies are “a leading global provider of specialty printing solutions including on-demand thermal bar code label and receipt printers and supplies, plastic card printers and RFID smart label printers/encoders” and that they have sold printer and printer supplies under the Zebra name since 1982. The Complainants also state that, in view of their significant investments in marketing and advertising, they have developed a substantial goodwill and reputation in the trademark ZEBRA for printers and card printers in the United States, in the United Kingdom and around the world.

The Complainants contend that Domain Names <zebracardprinter.com> and <zebracardprinters.com> are confusingly similar to trademarks and domain names in which the Complainants have rights as they reproduce the registered trademark ZEBRA with the addition of the generic terms “card” and “printer(s)”, which are descriptive of the goods offered by the Complainants.

The Complainants inform the Panel that they also filed a Complaint before Nominet in respect of the domain names <zebracardprinter.co.uk> and <zebracardprinters.co.uk>, which were registered by the Respondent and were transferred to the Complainant pursuant to the expert’s decision.

With reference to rights or legitimate interests in respect of the Domain Names, the Complainants state that the Respondent is not commonly known by the Domain Names. The Complainants highlight that the Respondent is not making a legitimate noncommercial or fair use of the Domain Names, since the Respondent intends to divert consumers or to tarnish the Complainants’ trademarks and is using the Domain Names to create the impression that the corresponding web sites are “in someway connected to or associated with the Complainants and its goods when this is not the case”.

With reference to the circumstances evidencing bad faith, the Complainants state that, at the date of registration of the Domain Names, the Respondent “would have been aware of the Complainants rights in the ZEBRA name in relation to printers and printer supplies” and that the Respondent registered the Domain Names including the trademark ZEBRA primarily for the purpose of disrupting the business of the Complainants and to take advantage of the Complainants’ rights in the ZEBRA trademark.

The Complainants emphasize that the Respondent’s use of the Domain Names induces consumers to believe that the Respondent is an authorized reseller of the Complainants. The Complainants highlight that the Domain Names also link through to another web site operated by the Respondent under the domain name <eagletechnologies.com>, on which ribbons for printers which are not produced or authorized by the Complainants are offered for sale. In view of the above, the Complainants conclude that the Respondent is using the Domain Names to intentionally attempt to attract, for commercial gain, Internet users to its web sites, by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of the Respondents’ web site and its products.

The Complainants point out that the Respondent’s misrepresentation causes damage to the Complainants’ valuable goodwill and reputation in the Zebra name.

The Complainants inform the Panel that, when they became aware of the registration of <zebracardprinters.com> in 2009, the Domain Name was redirected to a web site falsely claiming that the Respondent was an authorized reseller of the Complainants’ Zebra products and that reproduction of the Complainants Zebra Head Logo and of the approved reseller sign were also used by the Respondent on its web site <zebracardprinter.co.uk>.

As an additional circumstance evidencing bad faith, the Complainants state that a cease and desist letter was sent to the Respondent demanding the cease of the use and the transfer of the Domain Names, but the Respondent never replied and continued to use the Domain Names in the manner described above. Only “some of the Zebra Head Devices and the “Approved Reseller” and “authorised reseller” quotes” were removed from the web site.

B. Respondent

The Respondent did not reply to the Complainants’ contentions and is in default.

Therefore the Panel shall decide this proceeding on the basis of the Complainants’ submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainants must prove each of the following:

(i) that the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainants have rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) that the Domain Names have been registered and are being used in bad faith.

A. Domain Names Identical or Confusingly Similar

The Complainants have provided evidence of ownership of several trademark registrations consisting in the sign ZEBRA, such as the United Kingdom Trademark No. 1,336,154, filed on February 22, 1988, in Class 7; the Community Trademark No. 370,486, filed on September 5, 1996, in Classes 7, 9, and 16; and the United States Trademark No. 1,274,816, filed on November 10, 1982, in Class 7.

The Panel finds that the Domain Names are confusingly similar to the registered trademark ZEBRA owned by the Complainants since, pursuant to a number of prior decisions rendered under the Policy, the addition of the descriptive terms “card” and “printer(s)” is not a distinguishing feature.

See, inter alia, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to FRY mark); Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to WALMART mark); PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality, WIPO Case No. D2005-1028 (“net” and “training” added to ISO mark); Banca Intesa S.p.A. v. Roshan Wickramaratna, WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma, WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN).

Furthermore, the use of the terms “card” and “printer(s)”, which are descriptive of the Complainants’ products, are particularly apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association with the Complainants.

The Panel concurs with the views expressed in Stanworth Development Limited v. Michael Gordon, WIPO Case No. D2007-1227, where the panel found that “the Domain Name <riverbellecasiino.com> is almost identical, and is confusingly similar to the complainant’s mark, RIVER BELLE, adding only a misspelling of the generic term ’casino’, which describes Complainant’s services. The result is a domain name that is distinctly suggestive of the complainant’s ’casino‘ services, linked with the complainant’s RIVER BELLE mark”. See, e.g., DaimlerChrysler A.G. v. Donald Drummonds, WIPO Case No. D2001-0160; Microsoft Corp. v. StepWeb, WIPO Case No. D2000-1500.

In view of the above, the Panel finds that the Complainants have proven that the Domain Names are confusingly similar to the trademarks in which the Complainants have rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainants must show that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent may establish a right or legitimate interest in the Domain Names by demonstrating, in accordance with paragraph 4(c) of the Policy, any of the following:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or

(ii) the Respondent has been commonly known by the Domain Names, 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 Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

It is well-established that the burden of proof lies on the Complainants. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the Domain Names according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedents, it is sufficient that the Complainants show a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainants are deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).

In the case at hand, by not submitting a Response, the Respondent has not rebutted the Complainants’ prima facie case, failing to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Names.

Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).

There is no relation, disclosed to the Panel or otherwise apparent from the documents submitted, between the Respondent and the Complainants. The Respondent is not a licensee of the Complainants, nor has the Respondent otherwise obtained an authorization to use the Complainants’ trademarks.

There is no indication before the Panel that the Respondent is commonly known by the Domain Names. Moreover, the use of the Domain Names made by the Respondent to promote the Respondent’s sale of ribbons of competitors through its web sites cannot be considered a bona fide offering of goods or services, or a legitimate, noncommercial or fair use of the Domain Names.

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:

(i) circumstances indicating that the holder has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainants who are the owners of the trademark or service mark or to a competitor of the Complainants, for valuable consideration in excess of the holders’ documented out-of-pocket costs directly related to the Domain Names; or

(ii) the holder has registered the Domain Names in order to prevent the owners of the trademark from reflecting the mark in a corresponding domain names, provided that the holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Names, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.

As to bad faith at the time of the registration, the Panel notes that, in light of the use of the trademark ZEBRA since 1982 in connection with the printers and printer supplies produced by the Complainants, considering the amount of advertising and sales of the Complainants’ products worldwide and overall the fact that the Respondent is acting in the same field of activity of the Complainants and was selling also the Complainants’ products, the Respondent was or ought to be aware of the Complainants’ trademarks when it registered the Domain Names.

The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang, WIPO Case No. D2003-0257. Along the same lines Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn, WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd., WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions WIPO Case No. D2003-0103. As stated inter alia in DHL Operations B.V v. Net Marketing Group, WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.

As to the circumstances evidencing bad faith in the use of the Domain Names, the Panel finds that Internet users, in light of the contents of the web pages linked to the Domain Names, which promote the Respondent’s sales of printer supplies, may be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s web sites (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).

In accordance with prior decisions, the Panel also finds that a failure to respond to a cease and desist letter can be evidence of bad faith. See, e.g., Spyros Michopoulos S.A. v. John Tolias, ToJo Enterprises, WIPO Case No. D2008-1003, in which the panel stated: “Any such bad faith is compounded when the Domain Name owner upon receipt of notice that the Domain Name is identical or confusingly similar to a registered trade mark, refuses to respond. Such conduct is not consistent with what one reasonably would expect from a good faith registrant accused of cybersquatting.”

As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response and in this case, as stated in Sports Holdings, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1146 “it is open for the Panel to infer a prima facie case of bad faith registration. The Panel also notes that the Respondent has used the present domain name in a commercial website. The evidence before the Panel indicates that the Respondent has used (or allowed the use) of the domain name for the purpose of some apparently commercial nature from which the Respondent (or a related third party) presumably derives or intends to derive revenue. This is not conduct consistent with registration and use in good faith”.

Along the same lines is the decision Renegade LLC v. Kenneth Gibert, WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.

In view of the above, the Panel finds that the Domain Names were registered and are being used in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <zebracardprinter.com> and <zebracardprinters.com> be transferred to the Complainant Zebra Technologies Europe Ltd.

Luca Barbero
Sole Panelist
Dated: August 27, 2010