WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zeel Networks, Inc. v. Roger Dashiell / Leonila Roque
Case No. D2020-2655
1. The Parties
The Complainant is Zeel Networks, Inc., United States of America (“United States”), represented by Symbus Law Group, LLC, United States.
The Respondent is Roger Dashiell, United States / Leonila Roque, Philippines.
2. The Domain Names and Registrar
The disputed domain names <zeelsoul.com> and <zzsoul.com> (the “Domain Names”) are registered with Wix.com Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2020. On October 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 13, 2020, the Registrar transmitted by email 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 email communication to the Complainant on October 20, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 23, 2020.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 20, 2020.
The Center appointed Karen Fong as the sole panelist in this matter on December 21, 2020. 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 operates a mobile on-demand spa massage company under the trade mark ZEEL since 2010. The Complainant’s network includes almost 11,000 vetted licensed and insured massage therapists in more than 100 markets in the United States. The Complainant’s business under the ZEEL trade mark has received a lot of media coverage including on television news channels like ABC, NBC, and CBS; magazines and newspapers like Cosmopolitan, Miami New Times, Chicago Tribune, and Business Insider, as well as blogs and social media.
The ZEEL trade mark is registered in the United States, the European Union, Canada, and Australia. The earliest ZEEL trade mark submitted in evidence United States trade mark registration no 4445231 registered on December 3, 2013. The Complainant also uses and has a registration for a stylized Z trade mark which it uses in connection with the booking aspects of its massage business services. The Complainant also has trade mark registrations for the trade marks ZEEL SPA, ZEEL CONCIERGE, ZEEL@WORK, ZEEL@HOME, and THE ZEEL BLOG. These trade mark registrations will individually and collectively be referred to as the “Trade Mark”.
The Complainant owns and operates the website “www.zeel.com”.
The Complaint involves two Domain Names which are registered to two Respondents as detailed below:
Date of Registration
Domain Name 1 was hosted on the Registrar’s WIX platform and connected to a website offering massage services bearing the Trade Marks and content which are copyright materials of the Complainant. This include photographs showing massage therapists wearing the Complainant’s T-shirts bearing the Trade Mark. The massage services included services such as prostate massage, tantric massage and “discreet” billing for an extra charge. The contact email address for Domain Name 1 is firstname.lastname@example.org. This appears to be an email address for someone called Luz Angelica Thung.
October 1, 2020
Domain Name 2 was also hosted by the Registrar’s WIX platform and connected to a website which is very similar to that of Domain Name 1 as outlined above including the offer of the “fringe” massage services detailed above. The contact email address for Domain Name 2 email@example.com. This could be the initials for Luz Angelica followed by the surname Thung and the year 1987.
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the Trade Mark, the Respondents have no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and common control of a single entity or network. The basis of its belief that the registrants are related and under management and common control of a single network are set out in the comments in the table above.
The Respondent did not reply to the Complainant’s contentions.
6. Preliminary Procedural Issue – Consolidation of the Proceeding
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents’ cases and extracted the following general principles:
“1. Consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.”
The Complainant has provided good evidence referred to above to substantiate its case that the Respondents are either one and the same person, entity, or network, and are somehow connected to each other and under common control aimed at intentionally infringing the Complainant’s marks.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules. The Respondents may therefore be referred to as the Respondent.
7. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names were registered and are being used in bad faith.
7.2. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself such that the trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade marks are reproduced in their entirety in the Domain Names. Domain Name 1 comprises the ZEEL trade mark and the addition of the noun “soul”. Domain Name 2 comprises the letter “z” in duplicate and the noun “soul”. The term “soul” is very much commonly used in connection with “massage”, “spa”, “wellness” businesses. The addition of the term “soul” to both the Domain Names together with the fact that both websites connected to the Domain Names offered massage services and used copyright materials of the Complainant shows a clear intention on the part of the Respondent to target the Trade Mark through the Domain Names. See WIPO Overview section 1.15. In any event, the inclusion of the term “soul” in the Domain Names does nothing to dispel the confusion already engendered but rather adds to it.
For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the various generic Top-Level Domain (“gTLD”) suffixes which in this case are “.com”. For the reasons above, the Panel finds that the Domain Names are confusingly similar to trade marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant contends that it is not affiliated with the Respondent and has not licensed or otherwise authorized the Respondent to use the Trade Mark or register the Domain Names or any domain name. It would not appear that the Respondent is commonly known by the Domain Names. The Respondent’s unauthorized use of the Trade Mark in the Domain Names in relation to massage services moreover those of a dubious nature and using copyright materials belonging to the Complainant is not bona fide or legitimate noncommercial or fair use of the Domain Names.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names particularly since the Trade Mark has no other meaning other than its significance as a trade mark belonging to the Complainant, both websites connected to the Domain Names misleadingly bear the Trade Mark and content belonging to the Complainant. Further the fact that the Domain Names are registered in the names of nominally different registrants subject to common control evidences a lack of transparency which is typical of a cybersquatter. It is implausible based on the record as set out above that the Respondent was unaware of the Complainant when it registered the Domain Names.
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Domain Names are also used in bad faith. The websites offer massage services including those which are not considered “legitimate” massage services for licensed therapists or massage establishments. These services have been set up for the commercial benefit of the Respondent. It is highly likely that web users when typing the Domain Names into their browser or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent.
The Domain Names are likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Names. The Respondent employs the reputation of the Trade Mark to mislead users into visiting the websites connected to the Domain Names instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s websites are authorised or somehow connected to the Complainant. The Panel therefore also concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy.
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 <zeelsoul.com> and <zzsoul.com> be transferred to the Complainant.
Date: January 4, 2021