WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zippo Manufacturing Company v. Domains by Proxy, LLC and Paul Campanella
Case No. D2014-0995
1. The Parties
Complainant is Zippo Manufacturing Company of Bradford, Pennsylvania, United States of America ("US"), represented by Squire Patton Boggs LLP, US.
Respondents are Domains by Proxy, LLC of Scottsdale, Arizona, US and Paul Campanella of Middletown, New York, US, self-represented.
2. The Domain Names and Registrar
The disputed domain names <zippocatalog.com> and <zippycatalog.com> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 12, 2014. On the same day, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Names. On June 13, 2014, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on June 17, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to amend the Complaint. Complainant filed an amended Complaint on June 19, 2014.
The Center verified that the amended 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 Respondent of the Complaint, and the proceeding commenced on June 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2014. The Response was filed with the Center on July 14, 2014.
The Center appointed Robert A. Badgley as the sole panelist in this matter on July 22, 2014. 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.
4. Factual Background
For nearly a century, Complainant Zippo Manufacturing Company has manufactured lighters under the mark ZIPPO. Complainant holds numerous trademark registrations for ZIPPO, and it is a matter of common ground in this proceeding that the ZIPPO mark is famous. Since 1999, Complainant has owned the domain name <zippo.com> and has operated a commercial website at that address.
The Domain Name <zippycatalog.com> was registered on November 20, 2007, and the Domain Name <zippocatalog.com> was registered on August 29, 2009. It is not evident from the record how the Domain Names were used for the first several years after their registration. However, Complainant annexes to the Complaint screenshots of Respondent's website – to which both Domain Names resolve – from March 20, 2014. The website features the stylized term "zippy catalog" and states: "Thank you for visiting Zippo Catalog.com… your best source for the complete Zippo catalog featuring standard Zippo lighters as well as custom Zippos not found in the Zippo Catalog. Browse our Zippo catalog today for discount prices, low cost shipping options and great customer service!" Above the foregoing text, in smaller font, is a disclaimer: "ZippoCatalog.com is an independent retailer of Zippo products. The website is not sponsored or endorsed by Zippo Manufacturing Company in any way."
On December 20, 2013, Complainant's counsel sent Respondent (regarded herein as Paul Campanella, not the proxy service he used) a cease-and-desist letter asserting, among other things, that Respondent's "use of ZIPPO®, and the confusingly similar ZIPPY, in the domain names zippocatalog.com and zippycatalog.com implies that your products are authorized, approved, sponsored or in some other way associated with Zippo, when in fact, they are not, and also dilutes the distinctiveness of Zippo's famous mark." Complainant's counsel demanded, among other things, Respondent's agreement to transfer both Domain Names to Complainant. Respondent sent an e-mail response to Complainant's counsel on January 6, 2014, addressing some points not directly relevant to the Panel's disposition of this case.
5. Parties' Contentions
Complainant contends that it has satisfied all three elements of the Policy with respect to each Domain Name, and seeks a transfer of both Domain Names.
Respondent's brief and rather informal Response makes three basic arguments. First, Respondent's website includes a disclaimer, and he is willing to enlarge the disclaimer to make it more prominent. Second, the Domain Name <zippycatalog.com> was registered two years prior to the other Domain Name, and was initially intended for use as a website selling various products, not merely ZIPPO lighters, and the word "zippy" captured the spirit of a quickly navigable catalog. Third, the word "zippy" is not the same as the mark ZIPPO, and Complainant has no right to control all domain names starting with the letters "zipp."
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names at issue in this case:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
There is no doubt that Complainant holds rights in the famous trademark ZIPPO. The Panel further concludes that the Domain Name <zippocatalog.com> is confusingly similar to the ZIPPO mark, since it incorporates the mark in its entirety and adds the generic term "catalog," suggesting to the Internet user that one is likely to find an online catalog of ZIPPO products at the corresponding website.
With respect to the Domain Name <zippycatalog.com>, however, it is not such a clear-cut issue. The Respondent notes, the word "zippy" is a word unto itself, carrying the meaning of fast, peppy, energetic, lively, quick. For its part, Complainant does not go to great lengths to support its claim that <zippycatalog.com> is confusingly similar to its ZIPPO mark. The best Complainant can do is cite to a previous decision under the Policy, Zippo Manufacturing Co. v. Zippoe, WIPO Case No. D2012-2246, in which the panel concluded that the domain name <zippoe.com> was confusingly similar to the ZIPPO mark.
The aural and visual comparison of the domain names with a complainant's trademark plays an important role in assessing confusing similarity. Additionally, in appropriate limited circumstances, the content of the website associated with the domain name may provide indication as to a respondent's targeting of a specific trademark in choosing its domain name. See Schering-Plough Corporation, Schering Corporation v. Dan Myers, WIPO Case No. D2008-1641; Mr. Willem Vedovi, Galerie Vedovi S.A. v. Domains By Proxy, LLC / Jane Kelly, WIPO Case No. D2014-0780.
With the foregoing approach in mind, the Panel concludes that the Domain Name <zippycatalog.com> is confusingly similar to Complainant's ZIPPO mark. This is admittedly a close call. Nevertheless, the dominant part of the Domain Name differs from Complainant's famous and distinctive ZIPPO mark by a single letter. In addition, the Panel notes that the Respondent registered two nearly identical domain names that resolve to the same website. A consumer landing on this site is met by a copious display of Complainant's products and mark. On balance, the Panel also finds the Domain Name <zippycatalog.com> confusingly similar to Complainant's mark.
Accordingly, the Panel concludes that Policy paragraph 4(a)(i) has been satisfied by Complainant..
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
It is undisputed that Respondent has not been authorized by Complainant to use the famous ZIPPO mark as a domain name or otherwise. The Panel also finds that Respondent has not used the Domain Names in connection with a bona fide offering of goods or services. On the contrary, Respondent directed the Domain Names to a website where Respondent purports to sell Complainant's products. The Panel concludes that Respondent has no right under the Policy to appropriate Complainant's famous ZIPPO trademark and use it in the Domain Names. Although the Respondent notes that the website associated with the Domain Names states: "ZippoCatalog.com is an independent retailer of Zippo products. This website is not sponsored or endorsed by the Zippo Manufacturing Company in any way" the Panel finds this insufficient to dispel user confusion given the use of the Complainant's famous mark in the Domain Names.
Furthermore, Respondent's arguments that the term "zippy" is used for its "fast" character is undermined by the redirection of both Domain Names to a site which uses the ZIPPO mark very liberally – this extensive use (what appears on an unscientific glance to be about every tenth word) indicates to the Panel that Respondent is using Complainant's mark for some purpose that goes beyond a normal commercially descriptive (i.e., fair) way, possibly to drive search queries or otherwise attract users based on the fame of Complainant's mark. Lastly, Respondent's statement that "if I am able to continue the use of zippocatalog.com as well, I might be interested in selling the domain to the Zippo Manufacturing Company, if an offer of financial compensation is made that is worth my while" leads the Panel to question Respondent's motive in registering the Domain Names.
Accordingly, the Panel concludes that Policy paragraph 4(a)(ii) has been satisfied by Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of each Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other online location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
The Panel concludes that Respondent has registered and is using the Domain Names in bad faith within the meaning of Policy, paragraphs 4(b)(iv). It is undisputed that Respondent had Complainant's famous ZIPPO mark in mind when registering the Domain Names. Respondent's website purports to sell ZIPPO lighters to the public. The modest disclaimer at the website is, in the Panel's view, insufficient to overcome the overall impression created by the website that it is somehow approved by Complainant.
In any event, once one has landed at the website and begins to behold the wide array of ZIPPO lighters on display, one may well cease to care whether the site enjoys the blessing of the manufacturer of the famous lighters. By that time, initial interest confusion has given way to genuine interest in the product itself, and then perhaps to a sale by Respondent to a customer unwittingly lured to the site by Respondent's appropriation of Complainant's ZIPPO mark. Such conduct violates paragraph 4(b)(iv) of the Policy.
Accordingly, and also in light of the discussion above under the second element, the Panel concludes that Policy paragraph 4(a)(iii) has been satisfied by Complainant.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <zippocatalog.com> and <zippycatalog.com> be transferred to Complainant.
Robert A. Badgley
Date: July 27, 2014