WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zenos Limited v. Tapchou Network, TN c/o Dynadot Privacy
Case No. DME2011-0002
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 Name and Registrar
The disputed domain name <zenos.me> is 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 name. 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, approved by the doMEn d.o.o ("doMEn") (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o ("doMEn") (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 17, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 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 name. As “TN” seems to be the acronym of the “Tapchou Network” and all the other contact details are 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 in the United Kingdom 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 spends significant sums on promoting its ZENOS trademarks through the relevant marketing channels.
The Complainant’s official website is “www.zenos.com”.
The disputed domain name <zenos.me> was registered in December, 2010.
5. Parties’ Contentions
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 name <zenos.me> is confusingly similar to its trademark ZENOS:
The disputed domain name incorporates the Complainant’s mark exactly and in its entirety with merely the addition of the generic top level domain “.me”. The disputed domain name is identical and/or confusingly similar to the Complainant’s domain name corresponding to its official website “www.zenos.com”. Further, given the renown of the Complainant’s mark, relevant consumers will reasonably conclude that the disputed domain name is related to, endorsed by, or affiliated with the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Respondent has registered the disputed domain name long after the Complainant has established rights in its ZENOS marks 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 name 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 name has been registered and used solely for commercial gain, for the purpose of selling it to the Complainant’s parent company or to the general public.
(iii) The disputed domain name was registered and is being used in bad faith:
The disputed domain name fully incorporates the Complainant’s trademarks and was registered well after the Complainant’s ZENOS marks became well-known.
The Respondent is offering the disputed domain name for sale on the front page of the corresponding website, presumably for a profit over the registration cost. The announcement is as follows:
“zenos.me - Pending Sale
FAO Pearson: Instead of WHOIS’ing my domain names, you could just email me.
zenos.me is pending sale.”
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 name.
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 name:
(i) the disputed domain name is 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 name; and
(iii) the disputed domain name has been registered and is 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 name is 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 name.
The addition of the “.me” country code Top Level Domain for Montenegro is irrelevant in the present analysis, mainly because the Internet is a virtual space accessible worldwide and a Top Level Domain is technically required to operate domain names. This approach is reinforced by the fact that the Complainant’s official website “www.zenos.com” is identical to the disputed domain name with the difference of the Top Level Domain.
Also, previous UDRP decisions have held that the addition of a country code to a trademark is not sufficient to avoid confusing similarity (see also Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001).
For all the above, the Panel finds that the disputed domain name <zenos.me> is identical to the Complainant’s ZENOS trademark.
Accordingly, the Panel finds that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is identical to the trademark 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 name.
The Respondent failed to submit any response in the present procedure and did not reveal its full identity.
Further, there is no evidence before the Panel to suggest that the Respondent has made a bona fide use of the disputed domain name, or has been commonly known by this domain name, or is making any legitimate noncommercial or fair use of the disputed domain name. To the contrary, at the time of filing the Complaint, on the web page corresponding to the disputed domain name, there was a note announcing to the Complainant’s parent company and the Internet users accessing the website that the disputed domain name was for sale.
Registering a domain name knowing that third parties have established rights in the same and offering it for sale is definitely not a justification for any right or legitimate interest in the same.
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 name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The Complainant has used its ZENOS marks since 2001 and registered these 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.
Respondent registered the disputed domain name in December 2010.
The disputed domain name <zenos.me> contains the Complainant’s trademark ZENOS in its entirety.
The Respondent has no rights or any authorization whatsoever from the Complainant with regard to its ZENOS trademarks.
The passive attitude of the Respondent who chose not to participate in this procedure, to reveal its full identity and to provide evidence in its defense can be considered evidence of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
On the web page corresponding to the disputed domain name the Respondent has posted an announcement indicating that the domain name is for sale (Exhibit F to the Complaint). Furthermore, the announcement contained the name of the Complainant’s parent company, this being a clear indication that the Respondent is familiar with the Complainant and its activity.
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 name was registered long after the Complainant had established rights in the ZENOS mark and a 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 nominal invitation addressed to the Complainant’s new holder to contact it. The reason for being contacted can be deduced from the message posted below this invitation, namely that the disputed domain name <zenos.me> was for sale, more than likely in excess of its out-of-pocket costs as there could be no other reason for the Respondent registering a domain name comprising an unusual word reflecting a third party’s trademark with which it had no previous connection and in respect of which it had no rights or legitimate interest and shortly afterwards to offer this domain name for sale.
As previous UDRP panels have held, an offer to sell a domain name is strong evidence of bad faith (see Trip.com, Inc. v. Daniel Deamone, WIPO Case No. D2001-1066; Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023; Banco Bradesco S.A. v. Noori net, WIPO Case No. D2010-1553).
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 full identity entitles the Panel to infer that the Respondent's use of a proxy service is cumulative evidence of the Respondent's bad faith (see also Atlas Copco Aktiebolag v. Telecom Tech Corp., Private Registration (name), WIPO 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).
For all these reasons, the Panel finds that the third element of the Policy is established, and accordingly that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 name <zenos.me> be transferred to the Complainant.
Dated: March 23, 2011