WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Zippo Manufacturing Company v. Neatwork Communication

Case No. D 2000-1128

 

1. The Parties

Complainant is Zippo Manufacturing Company (hereinafter "Zippo"), a Pennsylvania Corporation with its principal place of business at 33 Barbour Street, Bradford, Pennsylvania 16701, U.S.A. Respondent is Neatwork Communication ("Neatwork"). According to the registration, the registrantís address is 9114 Painter Avenue, Whittier, California 90605, U.S.A. and the email address is neatwork@hotmail.com.

 

2. The Domain Name and Registrar

The domain name at issue is <avzippo.com> registered with Network Solutions, Inc.("Network Solutions").

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received the Complaint of Zippo on August 25, 2000, by email and on August 28, 2000, in hardcopy. The Complainant made the required fee payments. On August 30, 2000, the Center acknowledged the receipt of the Complaint to the Complainantís authorized representative, and assigned this matter Case No. D 2000-1128.

On September 17, 2000, the Center requested Network Solutions to verify the registration data. By email of September 24, 2000, Network Solutions confirmed that it is the Registrar of the domain name registration and, inter alia, that Neatwork is the current registrant.

Having verified that the Complaint satisfies the formal requirements of ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center, on October 2, 2000, sent to Respondent, with a copy to the Complainant, a

notification of the commencement of the administrative proceeding, together with a copy of the Complaint. The formal date of the commencement of this administrative proceeding is October 2, 2000.

Respondent never filed a formal response to the complaint and a notice of default was sent to Neatwork on November 2, 2000.

On December 13, 2000, after receiving a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center advised the parties that it had appointed Thomas L. Creel as a single panelist to resolve this dispute (the "Sole Panelist").

This decision is based on the information contained in the above documents.

 

4. Factual Background

Complainant began using Zippo as a trademark in 1933. That first use was for pocket lighters. Zippo was issued its first U.S. trademark registration in 1934. Since that time, it has offered a wide range of goods and services under this mark. At the present time, Complainant owns many United States Trademark Registrations for Zippo on such goods and services as pocket lighters, flints, lighter fluid, flexible steel rulers, pocket knives, golf balls, golf accessories, keyholders, magnifying glasses, letter openers, pill boxes, cigarette lighters, playing cards, writing instruments, belt buckles, desk accessories, clothing, and leather pouches.

The U.S. registrations for the Zippo marks include the following: 317,219; 432,131; 436,615; 710,591; 798,341; 810,114; 993,356; 1,141,310; 1,287,935; 1,356,785; 1,669,421; 1,690,272; 1,705,306; 1,768,823; 1,939,603; 2,001,509; 1,169,868; 1,180,944; 1,187,350; 1,187,605; 1,188,884; 1,189,276; 1,207,903; 1,210,687; 1,213,751; and 1,514,575.

Respondent recently registered the domain name <avzippo.com>. Respondentís registration information with Network Solutions listed the Registrant as Neatwork, 9114 Painter Avenue, Whittier, California 90605, U.S.A., at email address neatwork@hotmail.com.

 

5. Partiesí Contention

Complainant has requested that the domain name be transferred to Complainant because:

(1) the domain name <avzippo.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) Respondent has no rights or legitimate interests with respect to the domain name; and

(3) Respondentís domain name was registered and used in bad faith because Respondent has engaged in a pattern of registering domain names to prevent the trademark owner from reflecting the mark in a corresponding domain name and Respondent provided false contact information to Network Solutions.

 

6. Discussion and Findings

The policy is addressed to resolving disputes concerning allegations of abusive domain name registration.

Paragraph 4(a) of the Policy sets out three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

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

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

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

Each of the aforesaid three elements must be proved by a Complainant to warrant relief. They will be addressed separately below, after first addressing jurisdiction.

I. Jurisdiction and Procedure

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent has notice of proceedings that may substantially affect its rights. The policy and the Rules establish procedures intended to assure that Respondents are given adequate notice of the proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

The Registrar identified Neatwork as the registrant. WIPO served the Complaint on Neatwork at 9114 Painter Avenue, Whittier, California 90605, USA; its listed address.

Neatwork was given an opportunity to tell his side of the story by formally responding to the Complaint. Respondent did not do so and was notified that it was in default. It was informed of the consequences of the default. Namely, that the Panel would be informed of the default and would have sole discretion to consider Respondentís later response to the Complaint and that the Center, notwithstanding the default, would continue to send all case-related communications to Respondent.

In this case, the Panelist is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint, of initiation of these proceedings, and allowed sufficient opportunity to Neatwork to respond. Formal notice was given to

Neatwork. Therefore, this Tribunal has jurisdiction to decide this dispute as presented.

II. The Identity or Confusing Similarity of the Domain Name with the Trademark or Service Mark

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "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." Since all parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.

Because "avzippo" and "zippo" are not identical, the issue becomes whether the domain name and Zippoís mark are confusingly similar. The Policy does not define "confusingly similar." A search of the documents leading to the final version of the Policy at the ICANN website failed to explain how this language came to be or what test was meant to be applied in assessing whether a mark is confusingly similar to the Complainantís. The United States trademark law, as well as that of other common law countries, provides that there is infringement when defendantís use is "likely to cause confusion" as to the source of the goods. Likelihood of confusion is also a factor listed in ∂ 4(b)(iv) of the Policy when assessing bad faith.

Other panelists have applied the likelihood of confusion standard tests in determining whether Respondentís use is "confusingly similar." See, e.g.,

"In determining whether the domain name <jordanf1.com> is confusingly similar to the trademark "Jordan Grand Prix", the Panel has regard to various tests in trademark law as to when a mark may not be registered where "the use of which would be likely to deceive or cause confusion . . ." (The words cited or similar are to be found in trademark statutes in several jurisdictions)."

WIPO decision in Case D2000-0233 [British panelist]. This is the standard that will be used here.

There are at least three types of proof of likelihood of confusion: (1) survey evidence; (2) evidence of actual confusion; and, (3) determination based on an inference arising from a comparison of the conflicting marks themselves and the context of their use in the marketplace. In a close case amounting to a tie, doubts are resolved in favor of the senior user. The majority of U.S. Courts view a finding on the likelihood of confusion issue as a finding of fact. Complainant has not offered any evidence of the first two types. Therefore, the Panel will explore the various marketplace factors.

Under United States law, eight factors referred to as the Polaroid factors are often used to determine likelihood of confusion: (1) strength of the mark; (2) degree of similarity between the conflicting marks; (3) proximity of the goods or services; (4) likelihood that the senior user will bridge any gap between the goods or services of the parties; (5) actual

confusion; (6) the junior userís good faith in choosing its marks; (7) the quality of the junior userís product; and, (8) the sophistication of the buyers. (Footnote 1) Not all the factors have to be present or equally emphasized in each case. (Footnote 2)

As to factor 1, Complainant owns at least twenty-seven United States trademark registrations that use the word "zippo." The earliest registered trademark dates back to September 18, 1934. The "zippo" mark has been used by Zippo for more than sixty years. It is a famous mark. Thus, I find the ZIPPO Marks to be strong marks.

As to factor 2, <avzippo.com> is very similar to the "zippo." They are visually similar in that both contain the letters "zippo." The Respondentís registered domain name is Zippoís mark with the prefix "av." This prefix "av" is a common abbreviation for "audio-visual." Because of the use of the prefix as a common abbreviation, one would be inclined to read "avzippo" as "audio-visual zippo." The addition of the prefix still results in "avzippo" and "zippo" being confusingly similar.

Moreover, other panelists have held that adding a prefix does not avoid confusion. See, e.g., America Online, Inc. v. Tencent Communications (FA0002000093668); America Online, Inc. v. Chinese ICQ Network (D2000-0808); and American Online, Inc. v. Shenzhen JZT Computer Software Co., Ltd. (D2000-0809). In these cases, the domain names <oicq.com> and <Oicq.com> were held to be confusingly similar to the domain name <icq.com>. See also Case No. D2000-0799 holding "mp3skunkworks" confusingly similar to "skunkworks".

Factors 3 and 4 favor Respondent. Complainant uses the mark on a number of personal products whereas Respondentís site has been for pornographic material.

There is no evidence of actual confusion (Factor 5).

Factors 6, 7, and 8 favor the Complainant.

Based on all of the facts, I find that Respondentís domain name <avzippo.com> is confusingly similar to Complainantís trademarks or service marks. Therefore, the requirement of paragraph 4(a)(i) is met.

III. Rights or Legitimate Interests in Respect of the Domain Name

Paragraph 4(c) of the Policy enumerates how a Respondent may establish rights to and legitimate interests in a domain name. These include the following circumstances: (i) before any notice to Respondent of the dispute, Respondentís use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or, (iii) Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Respondent has not filed a response to the Complaint. Complainant has alleged that Respondent has no legitimate rights or interests in the name. Respondent does not own any U.S. trademark or service mark registrations and neither "avzippo" nor "zippo" is part of its company name. I find nothing in the record which would indicate that Respondent has any rights or legitimate interests in the domain name. Indeed, I find that the record establishes Neatwork does not. Therefore, the requirement of Paragraph 4(a)(ii) of the Policy has been fulfilled by Complainant.

IV. Bad Faith

The third element Complainant must prove is in the conjunctive: the domain name "has been registered" and "is being used in bad faith."

Respondent has engaged in a pattern of registering domain names to prevent owners of marks from reflecting the mark in a corresponding domain name. Other marks that Respondent has registered include <jeffylube.com> and <sinamall.net> which are identical or confusingly similar to "Jiffy Lube" and "Sinamall" respectively. "Jiffy Lube" is a registered trademark of Jiffy Lube International, Inc. for "vehicle lubrication services." "Sinamall" is a registered trademark of SINA.com Online Corporation for "promoting and advertising a wide variety of goods and services of others by means of a computer information network."

Prior to August 24, 2000, Respondent attached a pornographic website to <avzippo.com> Upon receipt of a cease and desist letter from Complainant, the Respondent removed the attached website. Nevertheless, Respondent is still the owner of the <avzippo.com> domain name and could at any time, reconnect the <avzippo.com> domain name to a pornographic website.

Moreover, Respondent provided false contact information to the Registrar. Respondent indicated that its address was 9114 Painter Avenue, Whittier, California 90605, USA; its e-mail address was neatwork@hotmail.com. Complainant made two attempts to send a cease and desist letter via e-mail to Neatwork. These e-mails were returned as undeliverable. Zippoís counsel also searched Yahoo yellow pages website and California Secretary of Stateís database for information regarding Neatwork, but found nothing. Although providing false contact information is not an example of bad faith in the Policy, it is enumerated in the Anticybersquatting Consumer Protection Act as evidence of bad faith. The statute states that "the personís provision of material and misleading false contact information when applying for the registration of the domain name, the personís intentional failure to maintain accurate contact information, or the personís prior conduct indicating a pattern of such conduct" (Footnote 3) can be considered a factor in determining bad faith intent.

Ultimately, Zippoís counsel reached Neatwork and communicated with "Joe." When Zippoís counsel explained that <avzippo.com> was linked to a pornographic website, Joe" responded, "I donít think itís a big deal" because Ďavzippoí is different from Ďzippo.í" Joe refused to give his last name and denied that Respondent had any website. He stated Respondent was no longer at the address provided to the Registrar, but refused to provide the correct current address. Furthermore, "Joe" said that he would look into the matter and call back Zippoís counsel. He had not done so as of August 25, 2000.

Considering all of the evidence, I find that the Respondent both registered and used the domain name in bad faith. Therefore, the requirements of paragraph 4(a)(iii) of the Policy have been proved.

 

7. Decision

Complainant has proved the necessary elements that the name is identical or confusingly similar to its trademark or service mark, that Respondent has no rights or legitimate interests in the domain name; and, that Respondent registered the domain name in bad faith and is using it in bad faith. Therefore, the remedy requested by Complainant is granted. The panelist orders the transfer of the domain name <avzippo.com> to Complainant.

 


 

Thomas L. Creel
Sole Panelist

Dated: January 4, 2001

 


 

Footnotes:

1. Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961).

2. Fisons Horticulture, Inc. v. Vigoro. Indus., Inc. 30 F.3d 466 (3d Cir. 1994)

3. 15 U.S.C.A. ß 1125(d)(1)(B)(I)(VII) (West Supp. 2000)