World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zenos Limited v. Tapchou Network, TN c/o Dynadot Privacy

Case No. D2011-0275

1. The Parties

The Complainant is Zenos Limited of Oxon, Oxford, United Kingdom of Great Britain and Northern Ireland, represented by Kilpatrick Townsend & Stockton LLP, United States of America.

The Respondent is Tapchou Network, TN c/o Dynadot Privacy of San Mateo, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <zenos.info>, <zenos.mobi> and <zenos.tel> are registered with Dynadot, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2011. On February 10, 2011, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain names. On February 11, 2011, Dynadot, LLC transmitted by email to the Center its verification response confirming that the Respondent Tapchou Network c/o Dynadot Privacy 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 February 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2011.

The Center appointed Marilena Comanescu as the sole panelist in this matter on March 18, 2011. 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.

The language of the proceeding is English.

The Identity of the Respondent

The Complainant has named in its Complaint TN c/o Dynadot Privacy of San Mateo, California, United States of America as being the Respondent. The relevant registrar has confirmed that the Respondent Tapchou Network c/o Dynadot Privacy is listed as the registrant of the disputed domain names. As “TN” seems to be the acronym from “Tapchou Network” and the contact information is the same, the Panel shall consider the Respondent as being Tapchou Network, TN c/o Dynadot Privacy.

4. Factual Background

The Complainant is an Information Technology training provider operating since 2001. Currently, the Complainant operates a network of more than 30 academies in the United Kingdom and has received a number of awards and recognitions in its industry.

In 2008 the Complainant was acquired by Melorio PLC, which was further acquired in 2010 by the world leading educational company Pearson PLC.

The Complainant owns trademark registrations in the United Kingdom for the following:

the trademark no. 2,492,321 for ZENOS registered on July 10, 2008 in classes 35, 41; and

the trademark no. 2,492,322 for ZENOS ACADEMY registered on July 10, 2008 in classes 35, 41.

The Complainant operates its official website at “www.zenos.com”.

The disputed domain names are registered between December 2010, and January 2011.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case, as follows:

(i) The disputed domain names <zenos.info>, <zenos.mobi> and <zenos.tel> are confusingly similar to its trademark ZENOS:

The disputed domain names incorporate the Complainant’s mark exactly and in its entirety with merely the addition of the generic top level domains “.info”, “.mobi” and “.tel”. The disputed domain names are identical and/or confusingly similar to the Complainant’s domain name corresponding to its official website “www.zenos.com”. Further, given the widespread renown of the Complainant’s mark, the relevant consumers will reasonably conclude that the disputed domain names are related to, endorsed by, or affiliated with the Complainant.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names:

The Respondent has registered the disputed domain names long after the Complainant has established rights in its ZENOS mark through extensive use.

The Complainant has no relationship with the Respondent, nor granted any license, permission or other right to own or use any domain name incorporating the trademark ZENOS.

The Respondent is neither using the disputed domain names in connection with a bona fide offering of goods and services nor making a legitimate noncommercial or fair use of the same. The disputed domain names have been registered and used solely for commercial gain, for the purpose of selling them to Complainant’s parent company or the general public. The Respondent has registered all three disputed domain names within a matter of weeks.

(iii) The disputed domain names were registered and are being used in bad faith:

All the disputed domain names fully incorporate Complainant’s trademark and were registered well after Complainant’s ZENOS mark has become well-known.

The Respondent is offering to sell two of the disputed domain names, namely <zenos.info>, <zenos.mobi>, on the front page of the corresponding website, presumably for a profit over the registration cost. The announcement is the following:

“(disputed domain name)-Pending Sale

FAO Pearson: Instead of WHOIS’ing my domain names, you could just email me.

(disputed domain name) is pending sale.”

The third disputed domain name, <zenos.tel> appears to be functionally unused at the time of drafting the Complaint.

Furthermore, the Respondent has failed to identify itself, choosing to conceal its identity by using an identity protection service in connection with the disputed domain names. In case of the disputed domain name <zenos.tel>, the Respondent has also failed to provide its contact details.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

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

In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain names:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent does not have rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used by the respondent in bad faith.

Consequently, the Panel shall further analyze the eventual concurrence of the above-mentioned circumstances in the present case.

A. Identical or Confusingly Similar

There are two requirements that a complainant must establish under this element, namely: that it has rights in a trade or service mark, and, if so, that the disputed domain names are identical or confusingly similar to its mark.

The Complainant has rights in the ZENOS trademark, holding registrations in the United Kingdom since 2008. The Complainant’s ZENOS mark is incorporated identically and in its entirety in the disputed domain names.

It was well established that the addition of the generic top level domains such “.info”, “.mobi”, “.tel” are without legal significance in the present analysis since the use of a gTLD is technically required to operate the domain name (see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; F. Hoffmann-La Roche AG v. Jan Adair, WIPO Case No. D2009-1491; Pelephone Communications Ltd. v. Golan Thomas, WIPO Case No. D2010-0187).

Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain names are confusingly similar to the trademark ZENOS in which the Complainant has rights, pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its trademark. Therefore, the burden of production of evidence on this element shifts to the Respondent to demonstrate its rights or legitimate interests in the disputed domain names.

The Respondent failed to submit any response in the present procedures and did not reveal its real identity.

Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain names, or has been commonly known by these domain names, or is making any legitimate noncommercial or fair use of the same.

To the contrary, at the time of filing the Complaint, on the webpage corresponding to the disputed domain names <zenos.info> and <zenos.mobi> there was a message announcing to the Complainant’s parent company and third parties accessing these websites that the disputed domain names were for sale. Further, the disputed domain name <zenos.tel> appears to be practically inactive as on the corresponding webpage there is no information beyond a generic search engine apparently provided by the “.tel” operator, Telnic directing users to its website.

Registering several identical domain names in various top level domains knowing the fact that a third party has established rights in the same and offering these for sale is in this Panel’s view not a justification for any right or legitimate interest.

For all these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain names, pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant has used its ZENOS mark since 2001 and registered it in 2008, acquiring a significant recognition in its industry. In the summer of 2010 the worldwide known education company Pearson PLC becomes the owner of the Complainant.

The Respondent registered all three disputed domain names between December 2010 and January 2011.

The disputed domain names incorporate Complainant’s trademark ZENOS in its entirety.

The Respondent has no right or any authorization whatsoever from the Complainant with regard to its ZENOS trademark.

On the webpage corresponding to the disputed domain names <zenos.info> and <zenos.mobi> the Respondent has posted an announcement indicating that the domain names are for sale (Exhibit F to the Complaint). Furthermore, there is a nominal message for the Complainant’s parent company, this being a clear indication that the Respondent is familiar with the Complainant and its activity.

In case of the disputed domain name <zenos.tel> the corresponding website appears to be practically inactive. For this and given the other circumstances of the case and Respondent’s general conduct (see also Zenos Limited v. Tapchou Network, TN c/o Dynadot Privacy, WIPO Case No. DME2011-0002), there is little doubt in the eyes of the Panel that this domain name was registered for the same purpose as the other two, namely to exploit for financial gain the goodwill and reputation associated with the Complainant.

Paragraph 4(b) of the Policy sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where the Respondent has registered the disputed domain name primarily for the purpose of selling, or otherwise transferring the domain name registration to the complainant who is the owner of the mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.

The disputed domain names were registered long after Complainant has started to use its ZENOS mark and few months after the acquisition of the Complainant by a worldwide leading educational company. Clear evidence that the Respondent was familiar with the Complainant is the invitation addressed directly to the Complainant’s new holder. The reason for being contacted can be deduced from the message posted below this invitation, namely that the disputed domain names <zenos.info> and <zenos.mobi> are for sale, more than likely in excess of their out-of-pocket costs as there could be no other reason for the Respondent registering several domain names comprising an unusual word reflecting a third party’s trademark with which it had no previous connection and in respect of which he had no rights or legitimate interest.

As previous UDRP panels have held, an offer to sell a domain name is strong evidence of bad faith (see also Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066; Parfums Christian Dior S.A. v. QTR Corporation, WIPO Case No. D2000-0023; Banco Bradesco S.A. v. Noori net, WIPO Case No. D2010-1553).

The passive attitude of the Respondent who chose not to participate in this procedure can be considered further, evidence of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Although the use of privacy registration services is presently a legally acceptable practice and may be for legitimate purposes, having in view all the circumstances of the present case, the Respondent’s option to conceal its identity entitles the Panel to infer that the Respondent's use of a proxy registration service is cumulative evidence of the Respondent's bad faith (see also Atlas Copco Aktiebolag v. Telecom Tech Corp., Private Registration (name), Case No. D2010-0396; Viceroy Hotels, L.L.C., Kor Cayman Ltd. v. Mr. Syed Hussain, WIPO Case No. D2009-0962; Google Inc. v. Oneandone Private Registration, WIPO Case No. D2009-1674).

Furthermore, in case of the disputed domain name <zenos.tel> the Respondent has failed to provide its contact details to the relevant registrar. Along with other circumstances in a case, the supplying of an incorrect or incomplete address by the respondent to the registrar can be considered sign of bad faith (see also Ticketmaster Corporation v. Dmitri Prem, WIPO Case No. D2000-1550; Francesco Totti v. Jello Master, WIPO Case No. D2002-0134; BellSouth Intellectual Property Corporation v. Real Yellow Pages, WIPO Case No. D2003-0413).

For all these reasons, the Panel finds that the third element of the Policy is established, and accordingly that the disputed domain names were registered and are being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).

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 disputed domain names <zenos.info>, <zenos.mobi> and <zenos.tel> be transferred to the Complainant.

Marilena Comanescu
Sole Panelist
Dated: March 28, 2011

 

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