WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zippo Manufacturing Company v. Yishan He
Case No. D2014-0994
1. The Parties
The Complainant is Zippo Manufacturing Company of Bradford, Pennsylvania, United States of America (“USA”), represented by Squire Patton Boggs (US) LLP, USA.
The Respondent is Yishan He of Sunnyvale, California, USA.
2. The Domain Name and Registrar
The disputed domain name <japanzippostation.com> (the “Domain Name”) is registered with Melbourne IT Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2014.
The Center transmitted its request for registrar verification to the Registrar on June 12, 2014. The Registrar responded on June 13, 2014, stating that a copy of the Complaint had been sent to it by the Complainant, that the Domain Name was registered with it, that the Respondent was the current registrant, that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) applied to the Domain Name, that the Domain Name would remain locked during this proceeding, that the language of the registration agreement was English, and that it contained a submission by the registrant to the jurisdiction of the courts as provided in the UDRP. The Registrar also provided the full contact details held for the Domain Name on its WhoIs database.
The Center verified that the Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 18, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was July 8, 2014.
The Respondent did not submit a formal response but sent an email to the Center on July 8, 2014, stating that the Domain Name would be changed and further proceeding was not necessary. The Center forwarded this email to the Complainant, advising the Complainant that it could, if it wanted to, request a suspension of the proceedings to explore a possible settlement. The Complainant replied to the Center on July 10, 2014, noting that its earlier cease and desist letter had not been answered. In view of this and the lack of detail in the Respondent’s email, the Complainant asked the Center to proceed with the appointment of the Panel. The Center notified the parties on July 11, 2014 that it would proceed with the appointment.
The Center appointed Jonathan Turner as the sole panelist in this matter on July 17, 2014. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant manufacturers and sells hand-held lighters, lighter accessories and other products in numerous countries around the world under the mark ZIPPO. It has carried on this business using this mark since 1933. Its lighters have been featured in more than 1500 movies, stage plays and television shows. During World War II, the Complainant’s manufacturing was entirely devoted to servicing the US military, whose personnel carried its lighters across the world.
The Complainant is the licensee of various trademarks registered in the USA in the name of its associated company, Zippmark, Inc., in respect of the word “zippo” and logos comprising this word
The Complainant launched a website at “www.zippomfg.com” in 1996. It obtained “www.zippo.com” in 1999 and has maintained its website at “www.zippo.com” since then.
The Respondent registered the Domain Name in May, 2009, and is using it to locate a website which purports to sell “all range of Japanese authentic Zippo”.
The Complainant’s representative sent a cease and desist letter to the Respondent on November 19, 2013. The letter alleged that the lighters marketed by the Respondent on his website were “ZIPPO” products which had been materially altered. The Respondent did not reply.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the trademark ZIPPO in which it has rights. The Complainant points out that a licensee’s interest in a mark has been held by UDRP panels to qualify as rights for the purpose of paragraph 4(a)(i) of the UDRP.
The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name or any corresponding name, noting that the Respondent has not registered it as a trademark and has not received any consent from the Complainant to use it.
The Complainant alleges that the Domain Name was registered and is being used in bad faith for a website selling lighters purporting to be those of the Complainant, thereby profiting from confusion between the Domain Name and the Complainant’s famous mark.
The Complainant requests a decision that the Domain Name be transferred to it.
As stated above, the Respondent did not submit a formal Response but sent an email to the Center stating that the Domain Name would be changed and further proceeding was not necessary.
6. Discussion and Findings
Panels under the UDRP have held that where a respondent has unequivocally consented to the remedy sought by the complainant, the remedy may be directed by the Panel at its discretion on this basis alone: see paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
In this case, the Respondent has indicated that he does not dispute the Complaint, but has not unequivocally consented to the remedy of transfer sought by the Complainant. In these circumstances, the Panel considers that it is necessary to consider whether the requirements for a valid Complaint have been established.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark ZIPPO. As the Complainant rightly observes, a licensee’s interest suffices for the purpose of paragraph 4(a)(i) of the UDRP, as does that of an associated company: see WIPO Overview 2.0, paragraph 1.8. In any case, as the principal trading company, the Panel finds that Complainant also owns unregistered rights in the mark for purposes of the present proceeding.
The Panel considers that the Domain Name is confusingly similar to the Complainant’s mark ZIPPO. This mark is highly distinctive and famous, and is by far the most distinctive element of the Domain Name. The word “Japan”, incorporated into the Domain Name, would be taken by many Internet users as indicating a Japanese distributor or affiliate of the Complainant. The word “station” has a descriptive indication, suggesting a place where products can be acquired. The Panel considers that many Internet users would understand the Domain Name to refer to a website provided by or connected with the Complainant.
The first requirement of the UDRP is satisfied.
B. Rights or Legitimate Interests
The Panel notes that the Respondent has not disputed the Complainant’s allegation that the lighters sold on its website are ZIPPO lighters which have been altered without the Complainant’s consent. The Panel accepts this allegation as accurate.
Panels under the UDRP have repeatedly held that a reseller of products supplied by the owner of a trademark only has a legitimate interest in using a domain name based on the complainant’s mark if (among other conditions) it is using the domain name exclusively to promote the trademarked products and its relationship with the trademark owner is accurately and prominently disclosed: see WIPO Overview 2.0, paragraph 2.3, and cases cited there.
This Panel considers that products which have been materially altered without the consent of the trademark owner should not be regarded as properly trademarked products for this purpose. A reseller has no right to sell an altered product under a trademark as if it were the original product placed on the market by the trademark owner. Furthermore, the Respondent in this case has not prominently and accurately disclosed his true relationship with the Complainant. On the contrary, he is using the Domain Name to imply an authorization from the Complainant which he does not have to sell the products promoted on his website.
In these circumstances, the Panel considers that the use made by the Respondent of the Domain Name for his website at “www.japanzippostation.com” is not a bona fide offering of goods or services. On the contrary, the Respondent is using the Domain Name in bad faith to mislead Internet users into believing that his products and business are approved by the Complainant, when they are not, through the confusing similarity of the Domain Name to the Complainant’s mark together with statements on the Respondent’s website that the products sold are “authentic” when they have in fact been materially altered without the Complainant’s consent.
On the material in the case file, the Respondent is not commonly known by the Domain Name or a corresponding name.
The Respondent is clearly not making legitimate noncommercial or fair use of the Domain Name. On the contrary, it is making commercial use of it to sell lighters and other products.
On the material in the file, there is no other basis on which the Respondent could have rights or legitimate interests in respect of the Domain Name.
The Panel accordingly finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The second requirement of the UDRP is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain (namely the sale of lighters which purport to be genuine products of the Complainant, but which have in fact been altered without its consent) by creating a likelihood of confusion with the Complainant’s mark as to the source or endorsement by the Complainant of the website and of the products promoted on it.
In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Name in bad faith. There is no material on the case file which would counter this presumption.
The Panel accordingly finds that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP is satisfied.
Since all three requirements of the UDRP are satisfied, it is appropriate to grant the Complainant the remedy sought, namely transfer of the Domain Name to it.
For 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 <japanzippostation.com> be transferred to the Complainant.
Date: July 25, 2014