WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zippo Manufacturing Company v. Perfect Privacy, LLC / Fred Martin
Case No. D2015-0964
1. The Parties
The Complainant is Zippo Manufacturing Company of Bradford, Pennsylvania, United States of America (the "USA"), represented by Squire Patton Boggs (US) LLP, USA.
The Respondents are Perfect Privacy, LLC of Jacksonville, Florida, USA and Fred Martin of Thorold, Ontario, Canada.
2. The Domain Name and Registrar
The disputed domain name <zippolighterproducts.com> is registered with Network Solutions, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 6, 2015. On June 8, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 9, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center in which it provided the registrant and contact information disclosed by the Registrar, the Complainant filed an amended Complaint on June 24, 2015.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for the Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for the 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 July 1, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2015.
The Center appointed Antony Gold as the sole panelist in this matter on July 29, 2015. 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
The Complainant is a company based in Pennsylvania, USA and the licensee of trade marks owned by a related company, ZippMark, Inc. ("Zippmark"), which is the owner of numerous registrations for the trade mark ZIPPO.
The Respondents comprise "Fred Martin of Ontario, Canada" and "Perfect Privacy, LLC of Jacksonville, Florida, USA". At the time of the filing of the original Complaint on June 6, 2015, "Perfect Privacy, LLC" was listed as the Registrant for the disputed domain name. However, since that date the whoIs database has been updated to show "Fred Martin" as the Registrant and the Complaint has been amended to reflect this. For ease of reference, the Respondents are referred to collectively below, notwithstanding that it is now evident that "Mr. Martin" is the actual Registrant.
The disputed domain name <zippolighterproducts.com> was registered on September 5, 2008. As at June 4, 2015, this being the date of the screen prints provided by the Complainant, it pointed to a website which purported to offer Zippo lighter products for sale.
5. Parties' Contentions
The Complainant explains that it was established in 1932 and that it manufactures and sells hand-held lighters, lighter accessories and other apparel in the USA and in over 170 countries in total. It says that its windproof lighter has been described as a design icon of the Twentieth Century, that the ZIPPO trade mark is regarded as one of the world's most famous marks and that the mark has featured in over 1400 films, stage plays and television shows. The ZIPPO trade mark is also used on a diverse range of other products such as lighter fuel, flexible steel rulers, playing cards and many other items.
The Complainant has produced a schedule of its numerous registered ZIPPO trade marks in the USA. These include (by way of example only) United States trade mark No. 2,654,990, registered on November 26 2002 for utility lighters in International class 34 (US classes 2, 8, 9 and 17).
The Complainant says that it has used the ZIPPO mark on the Internet since 1996 and, since 1999, has maintained a website at "www.zippo.com".
The Complainant says that the disputed domain name is identical or confusingly similar to a name in which it has rights. It says that the addition of "lighter products" to its ZIPPO trade mark does not serve to distinguish the disputed domain name from the trade mark. In fact, it says, the addition of words which are entirely descriptive in character and which are closely associated with the Complainant's products will serve to exacerbate the likelihood of confusion.
The Complainant says that the Respondents have no rights or legitimate interests in the disputed domain name. It says that it can establish this by showing that it has rights to the ZIPPO mark, that the Respondents have no rights to "Zippo" of which it is aware and that the Complainant has not given any permission to the Respondents to use its ZIPPO mark. In this respect, the Complainant says that it has owned the rights to the ZIPPO trade mark for several decades and has not licensed the mark to the Respondents or otherwise permitted them to use the mark, nor is it aware that the Respondents might have any other basis to claim rights in the ZIPPO trade mark.
The Complainant says that the fame of its ZIPPO trade mark is such that the Respondents would undoubtedly have known of the mark when registering the disputed domain name. It asserts that a respondent does not make legitimate use of a domain name when it merely sponges off a complainant's world famous trade mark.
For this reason the Complainants say that the Respondents' use of the ZIPPO mark for its domain name infringes and dilutes the Complainants trade mark rights and that the Respondents' use is accordingly illegitimate. In this respect, the Complainant refers to the decision of the panel in Geoffrey, LLC v. Toys R.Russ and Days of '49, WIPO Case No. D2011-0830 in which the panel said "because Complainant's marks are famous and well-known through extensive promotion and use starting in 1960, there is a strong presumption that no one besides Complainant has any rights or legitimate interests to use them or any variations that would be considered confusingly similar". It cites additional cases in support of its arguments, which are dealt with later in this decision.
Lastly, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The Complainant says that the Respondents appear to have intended to intentionally capitalize on the goodwill associated with the ZIPPO trade mark. It says that paragraph 4(b)(iv) of the Policy provides that evidence of bad faith includes intentionally attracting Internet users to a respondent's website by creating a likelihood of confusion with the complainant's mark and that the Respondents have, on this basis, both registered and used the disputed domain name in bad faith.
Moreover the Complainant says its mark is so famous that the Respondents can make no legitimate use of a domain name which incorporates it and that the mere registration of a domain name confusingly similar to a famous mark is prima facie evidence of bad faith. It refers in this respect to a number of earlier decisions under the Policy, including Burberry Ltd v.Jonathan Schefren, WIPO Case No. D2008-1546. The Complainant says that such bad faith arises here by the registration and use of a domain name that includes its ZIPPO mark for a website selling what appear to be ZIPPO lighters. It says that a web-based business which is selling ZIPPO lighters combined with use of the ZIPPO trade mark is evidence of the Respondents' bad faith intent to trade off the goodwill associated with the Complainant.
The Complainant also says that the Respondents' failure to respond to a cease and desist letter emailed and faxed on July 16, 2014 to the email address provided on the Respondents' website is further proof of the Respondents' bad faith.
The Respondents did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate. In circumstances where a respondent has failed to serve a reply, it is difficult to conceive of circumstances in which those inferences would be favourable to a respondent. The extent to which those inferences are adverse depends on the particular facts of a case.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests with respect to the disputed domain name; and
(ii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trade mark ZIPPO. It has produced evidence of numerous ZIPPO trade marks of which it is the licensee in support of its assertions.
The disputed domain name is not identical to ZIPPO. In assessing whether it is confusingly similar it is necessary to consider the differences between the Complainant's ZIPPO trade mark and the disputed domain name. In this respect, it is both usual and appropriate to disregard the applicable generic Top-Level Domain ("gTLD") suffix (in this case, ".com") for the purpose of making a comparison between the Complainant's trade mark and the disputed domain name.
Whilst the Complainant has explained that the ZIPPO mark is now used in relation to a diverse range of products, its primary use is in relation to lighters. The words "lighter products" are, in this context, words which would naturally be associated with the Complainant's mark in that they are descriptive of the very product with which the Complainant's mark is widely known. Accordingly the words within the disputed domain name which are additional to the ZIPPO trade mark simply serve to reinforce the association with it. The disputed domain name is accordingly confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out specific circumstances (without limitation) whereby a respondent can demonstrate that it has rights or legitimate interests in a disputed domain name. These are if:
(i) before any notice to it of the dispute, it has used, or made 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) the 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) the respondent is 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.
In respect of ground (ii) there is no evidence that either of the Respondents have commonly been known by the disputed domain name. Ground (iii) is also inapplicable; the use by the Respondents of the website to which the disputed domain name points is plainly commercial, as is explained below.
Whether the disputed domain name is used in connection with a bona fide offering of goods or services requires detailed consideration of the screen prints of the Respondent's website provided by the Complainant, evidently taken on June 4, 2015. The homepage is headed "Zippo Lighter Products" (in a non-stylised font), then "Zippo Lighters and Zippo Collectibles" and then "We are Zippo Lighter Products". The opening paragraph beneath explains: "We stock a large selection of Zippo Windproof Lighters, Accessories and Collectibles. We carry only Genuine Zippo Lighters and Accessories that are made right here in the USA". The site invites the visitor to "check here often as our Inventory changes Daily. Some fast moving items may only be in stock for a few days". There is an invitation to "Start your Collection Today!". The remaining pages comprise photographs of the various product lines of the Complainant's lighters which are offered for sale, such as "Automotive", "Blu Collection", "Elegance" and so on.
At the very foot of the home page of the site (the fifth page of the screen prints) are the words;
"Zippo and the Zippo logo are registered trademarks of Zippo Manufacturing Company, Bradford PA., USA. Zippo Lighter Products is not associated with Zippo Manufacturing Copyright © 1996-2014 Zippo Lighter Products".
There is nothing in the screen prints of the Respondents' website which the Complainant has produced which suggests that they are trying to mislead visitors to the site by claiming a wrongful association with the Complainant. Even without taking the disclaimer into account, the Panel considers that a person visiting the website is not likely to conclude that it is operated by the Complainant or even by an authorized distributor – a website operated by either of those parties is unlikely in the Panel's view to need to point out that the stock carried is genuine. The Panel notes that there is no evidence from the Complainant that any goods sold by the Respondents are not genuine. Nor is there evidence of any confusion caused to customers of the Complainant who may have incorrectly assumed that the Respondents' website is associated with, or authorized by, the Complainant, (notwithstanding that well over six years have elapsed between the date of registration of the disputed domain name and the filing of the Complaint). The Panel does not attribute much weight to this issue, however, as evidence of customer confusion in these circumstances does not always reach the brand owner nor is it clear at what precise date the Respondents commenced trading.
Whether a reseller or distributor of trademarked goods can have rights or legitimate interests in a domain name which contains such a trade mark is considered at paragraph 2.3 in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"). A decision referred to in WIPO Overview 2.0 which addressed this issue in some detail is Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In that case the panel found that, for an offering to be regarded as bona fide, it must meet, at least, the following requirements:
- the respondent must actually be offering the goods or services at issue. In these proceedings, whilst evidence from the Respondents would have been helpful, there is nothing to suggest that the products offered at the Respondents' website are fake nor has the Complainant provided any evidence to support such a contention;
- the respondent must use the site to sell only the trademarked goods. Examination of the screen prints of the Respondents' website (provided in the Complaint) do not show any products offered for sale other than those of the Complainant;
- the website must accurately disclose the registrant's relationship with the trademark owner. The Respondents' website fulfills this requirement, albeit the disclaimer is not prominently placed;
- the respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. The Complainant does not assert that the Respondents have registered any other ZIPPO-related domain names, nor does a search in publicly-available databases seem to show other registrations or UDRP decisions involving the Respondent.
The Oki Data decision, however, concerns an authorized reseller. The Respondents are plainly not authorized by the Complainant. The position of non-authorised resellers was considered in Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481. The respondent in that case was selling used Porsche motor vehicles. He was not authorized to do so by the complainant. Nonetheless, the panel applied the Oki Data principles and denied the complainant's request for a transfer of the two domain names in issue, <porsche-buy.com> and <porschebuy.com>.
It is of note that the panel reached this decision notwithstanding the fame of the complainant's PORSCHE mark, commenting: "the Panel notes that the Policy was designed to prevent the extortionate behavior commonly known as cybersquatting. Particularly, the Policy was not designed to establish for the holder of a strong trademark a bar to entry of any online competitors or other online legitimate sellers. Whether the use of Complainant's trademark on Respondent's websites constitutes trademark infringement is not for the Panel to decide. If Complainant wishes to pursue that issue, other forums are available".
The Complainant has helpfully referred to findings and comments made by panels in previous decisions under the UDRP in support of its contentions. However, it is important not to detach those remarks from their specific factual context. By way of example, the Complainant referred to the decision in Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110, in which the panel said that the appropriate approach for determining whether the respondent had a legitimate interest in the domain name <belupo.com> was: "Complainant makes the allegation and puts forward what he can in support (e.g., he has rights to the name, Respondent has no rights to the name of which he is aware, he has not given any permission to Respondent). Unless the allegation is manifestly misconceived, Respondent has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy". However, this was in the context of the respondent having put forward a manifestly spurious justification for its registration of the domain name which pointed to a website which had evidently been created solely to try and stave off a successful complaint by the complainant. As the panel explained; "Furthermore Respondent's use of the domain name cannot be justified by its explanation that the word BELUPO is an abbreviation of "Beautiful Landscapes of Upper Podravina". The abbreviation is illogical and the words seem to be chosen at random. The word BELUPO does not constitute a logical, easy traceable, indication for a non-commercial website showing landscapes of Podravina". In contrast, the Respondents' website appears to offer genuine products.
The Complainant has also referred to the decision in LEGO Juris A/S v. Howtogetrealmoneyonline.com, WIPO Case No. D2012-0832, in which the panel said that merely sponging off the complainant's world famous trade mark did not amount to legitimate use of a domain name. However, in the Lego decision, the activity complained of was that "the Respondent has intentionally chosen a domain name based on a registered trade mark in order to generate traffic to a site that contains sponsored links to amazon.com for sale of LEGO products etc". Once again, the nature of the website in these proceedings is very different.
By way of further example, the Complainant draws attention to the decision in Geoffrey, LLC v. Toys R.Russ and Days of '49, WIPO Case No. D2011-0830, in which the panel found that "because Complainant's marks are famous and well-known through extensive promotion and use starting in 1960, there is a strong presumption that no one besides Complainant has any rights or legitimate interests to use them or any variations that would be considered confusingly similar". However, those remarks were made in the context of a case in which the respondent had registered a series of domain names similar to the complainant's TOYS R US mark, each of which pointed to the same sex site, and had sought to justify the registrations on a wholly implausible pretext.
The Panel concludes, in the present proceedings and in contrast to the factual matrix against which the decisions referred to above were determined, the Complainant has not made out a prima facie case that the Respondents lack rights or legitimate interests. This is not a result of any deficiency in the Complaint. Rather, the known facts simply do not support such a finding. In determining whether the Respondents' use of the disputed domain name is bona fide, all material factors, both for and against, need to be taken into account. It counts against the Respondents, as the Complainant has rightly asserted, that it did not respond to the Complainant's cease and desist letter and that the real registrant, Fred Martin initially hid behind the veil of the privacy service provided by Perfect Privacy LLC. It also counts against the Respondents that they did not respond to this Complaint. These actions, separately and cumulatively, are more usually indicative of a registrant which has either no legitimate interest in the domain name it has registered and/or has registered it in bad faith. But, notwithstanding the fact that the Respondents did not reply to the Complaint, the Panel is required to consider all the information before it in considering whether the Complainant's case is made out. This includes, in this specific context, the form of the website used by the Respondent and the considerations which were helpfully set out in the Oki-Data decision and applied in the Porsche decision referenced above. Applying those criteria, point clearly towards a finding of a good faith offering of goods by the Respondents.
The Panel accordingly concludes that before any notice to it of the dispute, the Respondents had used, or made 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. Accordingly, the Complainant has not established that the Respondents have no rights or legitimate interests with respect to the disputed domain name.
C. Registered and Used in Bad Faith
In the light of the finding that the Complainant has not established a lack of rights or legitimate interests on the part of the Respondent in the disputed domain name, it is not necessary to consider the Complainant's case in relation to bad faith registration and use.
For the foregoing reasons, the Complaint is denied.
Date: August 12, 2015