The Complainant is Creative Technology Ltd. of Singapore, represented by Cooley Godward Kronish LLP, United States of America.
The Respondent is Global Network, LLC of United States of America.
The disputed domain name <zen-store.net> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2008. On October 29, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 29, 2008, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that:
(a) the Respondent is listed as the registrant;
(b) the Respondent's administrative and technical contact details are as set out in the Complaint;
(c) the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applies to the domain name; and
(d) English is the language of the registration agreement.
The Center verified that the Complaint satisfied the formal requirements of 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 the Respondent of the Complaint, and the proceedings commenced on October 31, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was November 20, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 24, 2008.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 9, 2008. 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.
According to the Complaint, the Complainant was founded in Singapore in 1981. It now has corporate offices in the United States of America, Europe, Asia, Africa and the Middle East. It markets and sells a wide range of “personal digital entertainment” consumer products including MP3 players, portable media centers, headphones, cameras and other products.
One of its product lines is branded ZEN. The Complainant introduced its ZEN brand MP3 player in 2002. As Annex C to the Complaint illustrates, the range of products including accessories has expanded substantially since then. The Complaint also includes in Annex D a range of media reports reviewing or referring favourably to the Complainant's ZEN brand products. Amongst other things, the Complainant's ZEN brand products have received the following awards:
- The 100 Best Products of 2007 for ZEN V Plus, PC World
- CNET Best of CES 2006 - MP3 and Portable Audio Category for ZEN VISI0N:M product, United States Consumer Electronics Show, 2006
- CNET Best of Show 2006 for ZEN VISION: M product, United States Consumer Electronics Show, 2006
- World Class Award for ZEN VISION: M, X-FI ELITE PRO, X-FI XTREMEMUSIC, X-FI PLATINUM and X-FI FATALITY products, PC World, 2006
- Best Buy Award for ZEN NANO PLUS product, PC World., 2006
- Style Award for ZEN TOUCH product, Stuff, 2005
- 5 out of 5 Rating for ZEN MICRO product, Men's Journal, 2005
- Editor's Choice - Best Value for ZEN Portable Media Center, Maxim, 2004.
The Complainant owns at least four registered trademarks in the United States of America:
- Registration No. 3,290,268 for ZEN (registered on September 11, 2007 based on first use in commerce in the United States of America on October 14, 2002);
- Registration No. 3,358,797 for ZEN STONE (registered on December 25, 2007 based on first use in commerce in the United States of America in April 18, 2007);
- Registration No. 3,205,689 for ZEN VISION:M (registered on February 6, 2007 based on first use in commerce in the United States of America on December 2005); and
- Registration No. 3,245,023 for ZEN NANO (registered on May 22, 2007 based on first use in commerce in the United States of America on April 15, 2005).
The Complaint also claims that the Complainant owns dozens of corresponding registrations throughout the world, although details of these are not included in the Complaint.
The Respondent registered the disputed domain name on November 23, 2007. Prior to the dispute commencing, the disputed domain name resolved to a website from which the Respondent offered for sale the Complainant's products and also products competitive with the Complainant's products.
The website has ceased to be available at the time of preparing this Decision.
On November 24, 2008, the registration of the disputed domain name was extended for one further year
The Complainant asserts in its Complaint that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and the disputed domain name was registered and was being used in bad faith. The Respondent did not reply to the Complainant's contentions.
First, there has been no Response. The Center has forwarded the Complaint to the Respondent by email and courier to the addresses which the Registrar has confirmed are the correct details for the disputed domain name as registered. Consequently, the Panel is satisfied that the Center has taken all reasonable steps to notify the Complaint to the Respondent, and the Respondent has had an adequate opportunity to put its case in rebuttal of the Complaint.
In the absence of exceptional circumstances, where the Respondent does not submit a Response, therefore, paragraphs 5(e) and 14(a) of the Rules direct the Panel to decide the dispute on the basis of the Complaint. This is not a simple “rubber stamping”, however, as paragraph 15(a) directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
Accordingly, under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
There are two parts to this inquiry: does the Complainant have trademark rights in a mark and, if so, is the disputed domain name identical or confusingly similar to that mark?
The Complainant has clearly established ownership of trademark rights in ZEN in the United States of America set out in section 4 above.
The question of resemblance for the purposes of the Policy requires a comparison of the disputed domain name to the trademark in which the Complainant has proved rights. This is a different test to that involved in trademark law where questions of the goods or services covered by the trademark rights can be relevant to the likelihood of confusion: See for example Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v Bob Larkin, WIPO Case No. D2002-0420. The question of the scope of the Complainant's trademark rights may of course be relevant to the issues under paragraphs 4(b) and 4(c) of the Policy.
The disputed domain name differs from the first of the Complainant's trademarks, ZEN, by the addition of “-store” and the gTLD. It has long been established under the Policy that the addition of descriptive elements such as “store” in this case and of the gTLD component of the domain name will be inadequate to preclude a finding of confusing similarity. The distinctive component of the disputed domain name is “zen” and, accordingly, the Panel has no doubt that the degree of resemblance between the disputed domain name and the Complainant's trademark would lead to a conclusion or inference of association between the two. The existence of the Complainant's other trademarks identified above is likely to reinforce the likelihood of such a conclusion or inference as they demonstrate a pattern of brand extension and, having regard to its descriptiveness, the term “store” is a natural extension to adopt in connection with the promotion and sale of the Complainant's goods.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademarks, especially the ZEN trademark.
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial 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.
These are not an exhaustive enumeration of rights or legitimate interests; they are examples only.
In view of the difficulty in proving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor, after which the burden of proof shifts to the Respondent to show it has rights or legitimate interests in respect of the disputed domain name.
The Complainant contends that it has not licensed or otherwise authorised the Respondent to use the disputed domain name or any name similar to the Complainant's trademarks.
There is no obvious derivation or association between the Respondent's formal name as it appears in the WhoIs contact details or otherwise and the disputed domain name. While the website to which the domain name resolved did announce “Welcome to ZenStore” and “Welcome to <zen-store.net>”, there is no evidence that the Respondent was using the name “ZenStore” or “zen-store” in connection with a legitimate business, or otherwise, before registering the domain name. The Respondent, by failing to submit a Response, has not sought to provide any evidence which would suggest some right or entitlement to the domain name.
Further, the Respondent used the disputed domain name not only to offer the Complainant's products for sale but also products competitive with the Complainant's products. The use of a domain name based on the Complainant's trademarks in connection with the offering for sale of products competitive with the Complainant's products precludes the operation of paragraph 4(c)(iii) of the Policy. It also precludes the operation of paragraph 4(c)(i) of the Policy. As already noted, there is no evidence to support a finding under paragraph 4(c)(ii) of the Policy.
In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The third requirement that the Complainant must demonstrate to succeed on its Complaint is that the disputed domain name has been registered and used in bad faith.
The Complainant contends that this requirement is satisfied because the Respondent used the disputed domain name to resolve to a website which offered for sale products competing with the Complainant's products as well as offering for sale what appear to be the Complainant's own products. Thus, the Complainant contends that the disputed domain name was registered with the intention in part of attracting potential customers of the Complainant's products to the Respondent's website for commercial gain.
This is in effect the situation proscribed by paragraph 4(b)(iv) of the Policy:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
The Respondent has not sought to dispute this allegation. The printout of the Respondent's website submitted in Annex G of the Complaint demonstrates that the Respondent was in fact using the confusingly similar name “ZenStore” and the disputed domain name to solicit sales, not just of the Complainant's products, but also of products competitive with the Complainant's products.
Further, having regard to the renown of the Complainant's products as demonstrated by the awards several of its ZEN brand products have received and the examples of media coverage included in the Annexes to the Complaint, it would seem unlikely that the Respondent was not well aware of the Complainant's ZEN brand when the Respondent registered the disputed domain name.
While there is no evidence of when the Respondent's website commenced operation, the disputed domain name itself was registered comparatively recently before the Complaint was filed; there being only a 10 to 11 month interval. There has certainly not been a lengthy lapse of time between the date the disputed domain name was created and the date of the print out of the website. Thus, it may be inferred that the website was in contemplation when the domain name was registered. The Respondent has not sought to contend to the contrary.
In these circumstances, the Panel finds that the disputed domain name was registered and used in bad faith.
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 name <zen-store.net> be transferred to the Complainant.
Warwick A. Rothnie
Dated: December 23, 2008