WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Juraj Králik-ZAJO v. Deep Frontier, Jay Dove
Case No. D2015-1377
1. The Parties
The Complainant is Juraj Králik-ZAJO of Galanta, Slovakia, represented by Róbert Porubčan, Kancelária pre patenty a ochranné známky, Slovakia.
The Respondent is Deep Frontier, Jay Dove of San Diego, California, United States of America (“USA”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <zajo.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 5, 2015. On August 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 13, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2015. The Response was filed with the Center on September 2, 2015. On September 11, 2015, the Center received a supplemental filing from the Complainant.
The Center appointed Clive N.A. Trotman, David E. Sorkin and M. Scott Donahey as panelists in this matter on October 8, 2015. The Panel finds that it was properly constituted. Each member of 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
Since 1996, the Complainant, located in Slovakia, has traded in goods that include sports and other clothing, footwear, baggage including haversacks and trunks, climbing and mountaineering gear, camping equipment, swimwear, saddlery and numerous other things.
The Complainant has used the trade name “Zajo” for clothing and equipment for hiking since July 1, 1996 and asserts rights dating since then in the unregistered trademark ZAJO with a figurative rabbit design. Initially the Complainant did not have a registered trademark for ZAJO but has since filed or been granted registration for the following trademarks:
ZAJO, with figurative design, Slovakian national trademark, filed June 4, 2004, registered September 9, 2005, registration number 211221, classes 18, 25, 35, 40;
ZAJO, with figurative design, Community trademark (CTM) filed November 4, 2008, registered December 17, 2011, registration number 007389661, classes 11, 18, 20, 25, 35;
ZAJO, word mark, International trademark registered August 24, 2009, registration number 1058791, classes 11, 18, 20, 22, 24, 25, 35.
The Complainant also owns the domain names <zajo.sk>, <zajo.cz>, <zajo.es>, <zajo.ro>, <zajo.at>, <zajo.bg>, <zajo.eu>, <zajo.hu>, <zajo.si>, <zajo.lt>, <zajo.it>, <zajo.fr>, <zajo.gr> and <zajo.de>, which are all redirected to <zajo.net> which was registered on April 4, 2003.
The Respondent Deep Frontier is a California corporation created by Jay Dove in December, 1998. It registered the disputed domain name speculatively on the basis of it being a short, four-letter string of potential value. The disputed domain name was registered on August 2, 2002. The Respondent’s asking price to the Complainant for the disputed domain name in December, 2010 was USD17,000.
5. Parties’ Contentions
The Complainant’s contentions include the following.
The Complainant has produced documentary evidence in support of the trademarks or applications listed in paragraph 4 above. The Complainant says the disputed domain name is identical or confusingly similar to its trademark ZAJO.
The Complainant also asserts rights in the unregistered trademark ZAJO on the basis of continuous usage since July 1, 1996. A substantial volume of evidence has been produced including:
- articles or advertisements reproduced from six editions of a publication “Krásy Slovenska” (Beauty of Slovakia) from May-June 1997 to May-June 1999 under the “Zajo” name;
- sample invoices and lists of all invoices issued from 1996 through 2002 under the name “Zajo”, and a purchase contract with a supermarket;
- documents supporting an international presence of the unregistered trademark ZAJO, including an invoice from Malden Mills, USA, dated August 25, 2001 and invoices to addresses in the Russian Federation, Germany and the Czech Republic;
- a short history of the unregistered trademark ZAJO up to 2009, and two pages of a Google search for “Zajo” conducted on April 29, 2009.
On February 11, 2011, the Complainant succeeded in having another’s Romanian trademark for “Zajo” declared invalid by Office for Harmonization in the Internal Market (“OHIM”) on the basis of the Complainant’s Slovakian national trademark number 211221 and, according to the relevant Decision, on the basis of the Complainant’s “non-registered word trademark “ZAJO” used in the course of trade in the Czech Republic, Germany, Hungary, Austria, Poland, Slovenia and Slovakia ...”.
The Complainant contends, prima facie, that the Respondent has never had any relationship with the name “Zajo” and has no rights or legitimate interests in respect of the disputed domain name. The Respondent’s use of the disputed domain name between 2002 and 2005 was for redirection to the Respondent’s website “www.blueknight.com” which offered shirts for sale, in commercial competition with the Complainant, and therefore was not a bona fide use. The Respondent has never been known by the disputed domain name, which is not presently in use.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. In the period 2002 to 2005, the disputed domain name was used solely to attract Internet users to the Respondent’s website at “www.blueknight.com”. The Respondent never had any intention to use it for any genuine purpose.
The Complainant states its belief that the Respondent was fully aware of the Complainant’s name and business activities when the disputed domain name was redirected to the Respondent’s website. The Complainant used the name “Zajo” long before 2002 when the disputed domain name was registered by the Respondent. “Zajo” is not a name the Respondent would have come up with by accident; in the Slovak language it means “bunny” and is a play on the Complainant’s surname “Králik”, which means “rabbit”.
The Complainant says that the Respondent, by being willing to sell the disputed domain name, demonstrates a lack of genuine interest in it and an intention to capitalize on it unfairly.
The Complainant addresses its difficulty that the disputed domain name was registered two years before Complainant first filed an application for a trademark. The arguments that follow are advanced in support of a finding of bad faith registration and use:
- the Complainant had rights to its unregistered trademark by 2002. At that time it already had a strong international presence. Because the Respondent redirected the disputed domain name between 2002 and 2005 to a clothing-related website, it was the Respondent’s intention to exploit the Complainant’s trademark;
- the Complainant reiterates the conventional reasoning that misleading diversion of Internet users to a website operated by a respondent having no connection with the relevant complainant does not constitute bona fide use of a domain name. The Complainant says redirection in this case is not bona fide because the Respondent is not known as “Zajo”, has no business under the disputed domain name, has no rights in that name, and “Zajo” has no relation to “Blueknight” or “Deep Frontier”;
- the Complainant cites Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and draws parallels including that it is not possible to conceive of any legitimate active use of the disputed domain name, which is being passively held;
- the Complainant asserts that the Respondent’s obligation to use the disputed domain name in good faith is on-going. The Complainant, quoting from the decision in Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786, says inter alia that “if a party uses the domain name in the future so as to call into question the party’s compliance with the party’s representations and warranties, this may be deemed to be retroactive bad faith registration”;
- the Complainant argues that, in this case, because the use of the disputed domain name changed in 2005, renewals since then have constituted new registrations. In particular renewals since 2008, when the Complainant filed its CTM application, have consequently been in bad faith.
The Complainant has cited a number of other previous decisions under the Policy that it considers should support its position.
The Complainant requests the transfer of the disputed domain name.
The Respondent denies the Complaint. The Respondent’s extensive contentions may be summarised as follows.
The Respondent denies that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
In negotiations extending between January 20, 2010 and August 12, 2011, the Complainant identified its trademarks that were registered after the disputed domain name was registered, but did not identify any unregistered trademark. The Complainant has not proven that the word “zajo” has acquired a secondary meaning. The Complainant did not have an exclusive right to use the word “zajo” with respect to clothing and sporting at the time of registration of the disputed domain name.
A delay of 7 years elapsed after registration of the disputed domain name before the Complainant contacted the Respondent, from which it may be inferred that the Complainant did not have an unregistered trademark upon which to base its claim. Furthermore the Complainant has delayed 13 years since the disputed domain name was registered before bringing this Complaint. “Zajo” as a trade name is not a sufficient basis on which to bring a Complaint under the Policy.
The Respondent contends that it has rights or legitimate interests in respect to the disputed domain name. Four letter “.com” domain names have inherent value and the disputed domain name was registered for use, development, and investment.
“Zajo” is a common word and according to the Complainant it means “bunny”. The Respondent provides references to it being a male first name; a surname; a nickname (including that of the Complainant and the Complainant’s father); a place in Mexico, named Zajo Grande; and, in business, by a company, Zajo Limited, duly registered in New Zealand since September 20, 2001.
The Complainant has the burden of proving that it had an unregistered trademark and there is no evidence of such.
The Respondent contends that its acquisition of the disputed domain name, based on a common word, was on the basis of first come, first served, whereupon it had an interest in it. Consequently the Respondent’s ownership of the disputed domain name is absolute for so long as it is renewed and it need not be developed or used but can be sold.
The Respondent denies that the disputed domain name was registered and is being used in bad faith. The Complainant’s claim that the Respondent was aware of the Complainant’s business at the time of registration of the disputed domain name, and exploited the Complainant’s alleged trademark rights, is opinion, speculation, conjecture, and without evidence.
In addition to the disputed domain name, the Respondent also purchased <zija.com> and <zijo.com> as catchy, four letter common words for potential business reasons. The Respondent did not intentionally target or block Complainant’s business or intend to sell the disputed domain name to the Complainant. The Respondent did not know of the Complainant, has not done business in Slovakia and has no associate who speaks Slovak. The Complainant has not sold products in the USA and has not used an unregistered trademark there.
The Respondent did redirect the disputed domain name (and <zija.com> and <zijo.com>) to “www.blueknight.com” from November, 2002 to February, 2005, in respect of T-shirts related to deep sea fish, with no connection with rabbits or bunnies, but the Complainant did not contact the Respondent about it.
On or about June 4, 2004, the Complainant filed a Slovakian trademark application for ZAJO. Since 2005, the Respondent has not actively used the disputed domain name.
The Complainant approached the Respondent on January 20, 2010, to enquire whether the disputed domain name was for sale, which the Respondent said it was not. The correspondence continued until the Respondent stated an asking price of USD17,000 on December 7, 2010. The Complainant offered USD 1,000.
In addition to the examples given above of the uses of the word “zajo”, the Respondent provides evidence of the businesses names Alexander Zajacko Zajo (registered January 17, 2014), Attila Zajacko ZAJO (January 17, 2014), and ZajoTrans, s.r.o. (July 19, 2012), each registered with the Ministry of Justice of the Slovak Republic; and Zajo Kids, an Italian company established in 2004 that sells children’s clothes. Furthermore the WIPO Global Brand Database lists the Bulgarian name and trademark SUPER hit Zajo Bajo, registered December 22, 2012.
The Respondent contends that the Complaint is barred by the doctrine of laches.
The Respondent requests the Panel to make a finding of Reverse Domain Name Hijacking.
6. Discussion and Findings
A. Procedural Matters
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute resolution service provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 12 of the Rules provides that the Panel has sole discretion to request further statements or documents from either of the Parties. The Complainant’s unsolicited Supplemental Filing of September 11, 2015 was sent to the Panel by the Center with the case file. Proceedings under the Policy are expected to be conducted expeditiously (Rules, paragraph 10(c)). As observed by the panelist in Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703, in a different context: “A Complainant should ‘get it right’ the first time and should have provided all the information necessary to prove its case from the material contained in the Complaint and its annexes alone. There is no right of reply under the Rules.” Having perused the Supplemental Filing, the Panel decided that it did not add significant new evidence that could not have been included with the original Complaint. In accordance with paragraphs 10 and 12 of the Rules the Supplemental Filing is not admitted to this proceeding, but in any event it would not change the outcome if admitted.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy is written in the present tense and requires that the Complainant “has” rights in a trademark. It is sufficient that the Complainant has rights in the three trademarks listed in Section 4 above, notwithstanding that they were registered later than the disputed domain name.
The disputed domain name, <zajo.com>, is clearly identical to the word element ZAJO of the Complainant’s trademarks and the Panel so finds under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainant has asserted prima facie that the Respondent has never had any relationship with the name “Zajo” and has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy lists three examples that shall establish rights or legitimate interests in a disputed domain name by demonstrating, namely:
“(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.”
The provisions of paragraph 4(c) of the Policy are illustrative and the Respondent is not limited to them in the establishment of rights or legitimate interests.
The Respondent claims to have rights and legitimate interests in the disputed domain name essentially because “zajo” is a common word, name or nickname and that registration of <zajo.com> was freely available on the basis of first come, first served on August 2, 2002. The Complainant has itself explained that, in the Slovak language, the proprietor’s personal name “Králik” means “rabbit”, and “zajo” means “bunny”. The Concise Oxford Dictionary defines “bunny” as “pet name for rabbit” (etc.). Thus it may reasonably be concluded that the disputed domain name incorporates a generic or descriptive word.
The establishment of rights or legitimate interests may in certain circumstances be negated if there has been bad faith registration and use of a disputed domain name, and the Panel will consider the question of bad faith before returning to rights or legitimate interests.
D. Registered and Used in Bad Faith
The Complainant has the onus of proof under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 provisions of paragraph 4(b) of the Policy are without limitation and registration and use in bad faith may be found otherwise by the Panel. The words in paragraph 4(a)(iii) of the Policy “your domain name has been registered and is being used in bad faith” are generally interpreted in the conjunctive, requiring proof that the registration of the disputed domain name and its use were in bad faith.
The Complainant argues that by August 2, 2002, being the date on which the disputed domain name was registered, the Complainant had a substantial business presence and a de facto (or common law) trademark for ZAJO extending back to July 1, 1996. The evidence produced in support of this contention is voluminous, including articles or advertisements in “Krásy Slovenska” (Beauty of Slovakia), and numerous invoices, none of which the Panel doubts. On the other hand, for reasons known only to the Complainant, it did not apparently file a Slovak national trademark application until June 4, 2004, and did not file a more broadly promulgated CTM application until November 4, 2008, these dates being respectively some 8 and 12 years after the Complainant commenced business. The Panel is not persuaded that, on the balance of probabilities, the Complainant has proven that the Respondent had any knowledge of the existence of the Complainant at the time of registration of the disputed domain name, or that the Respondent targeted specifically the Complainant when doing so.
The Complainant has argued that the principles expressed in the decision in Telstra (supra), relating to the domain name <telstra.org>, are applicable in the present circumstances. Previous decisions under the Policy are not as such precedential, although panels generally seek to decide similar cases similarly. In Telstra, the panelist took into account factors including the passive holding of the relevant domain name, that the trademark TELSTRA (an invented word) was strong and internationally famous, and the deviousness of the respective respondent as to its true identity and contact details, and said: “taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.”
With respect, the present case is found to be distinct from Telstra. The Complainant’s trademark is evidently based on a common word and does not appear to be a distinctive or invented word. Whilst it may indeed be impossible, in the context, to conceive of any legitimate unauthorised use of a trademark having the strength and degree of protection of TELSTRA, the same cannot reasonably apply to a word evidently translating to “bunny”. Contrary to the scenario in Telstra, it is at least possible to foresee plausible legitimate use of the disputed domain name. A registrant need not have any reason but it is noted that “Zajo” is a word with generic meaning, a first name, a surname, part of the name of 5 European and one New Zealand businesses, and part of the place name Zajo Grande, Mexico. See for instance the recent decision of the 3-member panel in Ritchey Design, Inc. v. Whois Privacy Services Pty Ltd aka Domain Vertical Axis, Inc. / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-0744, in respect of the domain name <ritchey.com>. See also the decision of the 3-member panel in Trade Me Limited v. Vertical Axis Inc, WIPO Case No. D2009-0093: “The Policy was not intended to permit a party who elects to register or use a dictionary term as a trademark to thereafter bar others from using the term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner.”
The Complainant, citing Octogen (supra), has argued that the Respondent failed to comply with its obligations to the Registrar to not infringe the rights of others, and says bad faith registration may be construed. The Panel is not persuaded that the Respondent has infringed the rights of others within the meaning of its agreement with the Registrar.
The Complainant has advanced the construction that the Respondent’s renewals of the registration of the disputed domain name have created new registrations, those renewals since 2008, when the Complainant filed its CTM application, having constituted registration in bad faith. Paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) refers to this concept. The Panel does not accept the Complainant’s construction, partly on the grounds that the registration date of August 2, 2002 for the disputed domain name is historical fact, and partly because the Panel has failed to find evidence that the disputed domain name, based on a common word, was registered in bad faith.
In summarising the issues of registration in bad faith, the Panel finds no evidence that the Respondent’s primary intention was to transfer the disputed domain name specifically to the Complainant in the terms of paragraph 4(b)(i) of the Policy, since as a generic domain name it was available to anyone, and it is noted that at least one company named Zajo Limited was registered 5 years before the Complainant registered its business. Trading in domain names for profit is a legitimate activity, absent specific circumstances to the contrary. There is no evidence that the Complainant was targeted within the meaning of paragraphs 4(b)(ii) and 4(b)(iii) of the Policy.
In the terms of paragraph 4(b)(iv) of the Policy the Complainant asserts that the redirection of the disputed domain name in the period 2002-2005 to the Respondent’s website at “www.blueknight.com”, which sold T-shirts, constituted use in bad faith. September 2005 was when the Complainant was granted registration of its Slovakian national trademark and 4 years before its international trademark was registered. The Respondent has denied nefarious intent in the redirection to its website or that its goods were in competition with the Complainant’s, and says its 4 letter domain names <zija.com> and <zijo.com> were similarly redirected. The monetisation of warehoused domain names is common practice. The Panel has not seen sufficient evidence on which to decide whether the redirection of the disputed domain name targeted specifically the Complainant’s unregistered trademark and constituted use in bad faith, or if it did, whether there would be grounds for concluding that the initial registration had been made in bad faith for that purpose.
On the totality of the evidence the Panel finds that the Complainant has failed to prove, on the balance of probabilities, that the disputed domain name was registered in bad faith. There is not sufficient evidence for the Panel to find use of the disputed domain name in bad faith.
Returning to the question of rights or legitimate interests in the disputed domain name, in the absence of proven bad faith, the Panel finds that the Complainant, which retains the ultimate burden of proof notwithstanding the provisions of paragraph 4(c) of the Policy, has failed to prove that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Respondent has proposed that the Complaint is barred by the doctrine of laches. The Policy does not impose any time bar on the bringing of a complaint, and in any case there is no evidence or suggestion that the Complainant delayed in order to inconvenience the Respondent. The bringing of a spirited Complaint some 13 years since the registration of the disputed domain name, 12 years after the Complainant registered <zajo.net> and presumably discovered that the disputed domain name had been taken, 11 years after the Complainant filed its first trademark application and 5 years after the Complainant first contacted the Respondent with a view to acquiring the disputed domain name, is indicative of a common circumstance of regret at failing to register a domain name when the opportunity existed.
E. Reverse Domain Name Hijacking
Paragraph 1 of the Rules states:
“Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
Paragraph 15(e) of the Rules states in part:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
Having regard to all the circumstances the Panel considers that the Complaint was brought in good faith and was strenuously and sincerely argued. A finding in favour of the Respondent does not amount to attempted Reverse Domain Name Hijacking on the part of the Complainant.
For the foregoing reasons, the Complaint is denied.
Clive N.A. Trotman
David E. Sorkin
M. Scott Donahey
Date: October 20, 2015