WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zacks Investment Research, Inc. v. Caesar Luiz
Case No. D2021-4186
1. The Parties
The Complainant is Zacks Investment Research, Inc., United States of America (“U.S.”), represented by Latimer LeVay Fyock LLC, U.S.
The Respondent is Caesar Luiz, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <zacktrades.com> is registered with Sav.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on the same day, 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.
The Center sent an email communication to the Complainant on December 17, 2021 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 amendment to the Complaint also on December 17, 2021.
The Center verified that the Complaint together with the amendment to 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 December 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2022.
The Center appointed Zoltán Takács as the sole panelist in this matter on January 17, 2022. 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.
The language of this administrative proceeding is English, that being the language of the registration agreement.
4. Factual Background
The Complainant, founded in 1978 by Len Zacks is an American company dedicated to the production of independent research and investment-related content.
The Complainant provides professional investors with financial data and analysis to help make better investment decisions for proprietary accounts and the investment accounts of clients.
One of the Complainant’s subsidiaries is Zacks Trade, an online broker dedicated to traders and investors all over the world.
The Complainant owns a number of ZACKS-formative trademarks, as well as, inter alia, the U.S. Registration No. 5,652,428 for the word mark ZACKS, registered on January 15, 2019 for financial research and information services of class 36 of the Nice Classification.
Since September 11, 1994 the Complainant owns the domain name <zacks.com>, which links to its primary website. The Complainant also owns the domain name <zackstrade.com>, which was registered on May 15, 2008.
The disputed domain name was registered on August 19, 2021, and resolved to a webpage offering trading capabilities for crypto currency and other assets.
5. Parties’ Contentions
The Complainant contends that the disputed domain name, which removes the letter “s” from, and adds the term “trades” to its ZACKS trademark is confusingly similar to it.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii), or (iii) of the Policy.
The Complainant claims that the Respondent’s registration of the disputed domain name that misspells its ZACKS trademark and use of it in relation to competing services and illegal activity amounts to bad faith registration and use.
The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that;
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the 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
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced proper evidence of having registered rights in the ZACKS trademark and for the purpose of this proceeding, the Panel establishes that the U.S. Trademark Registration No. 5652428 satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined the presence of the Complainant’s trademark rights, the Panel next assesses whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark.
According to section 1.7 of the WIPO Overview 3.0, the standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
According to section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.
According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test.
In the Panel’s view, removal of the letter “s” from, and addition of the dictionary word “trades” as suffix to the Complainant’s trademark does not prevent a finding of confusing similarity under the first element, since the disputed domain name contains sufficiently recognizable aspects of the relevant mark. See section 1.9 of the WIPO Overview 3.0.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds prior rights in the ZACKS trademark.
The Panel finds that the Complainant has never authorized the Respondent to use its trademark in any way, and its rights in the trademark precede the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In addition, the Panel notes that according to the website at the disputed domain name, a company called “Zack Trades” purports to offer its services through it. However, there is no evidence supporting the existence of this entity, neither the legitimacy of its activities through the disputed domain name. The Panel notes the similarities in the composition of the Complainant’s domain name <zackstrade.com> and the disputed domain name, and the fact that the Complainant through its domain name allows individual investors to actively trade, while the disputed domain name claims to offer trading capabilities for cryptocurrencies. Finally, the Panel notes the Complainant’s claim that the testimonials reproduced on the website at the disputed domain name are identical to those on similar websites.
The Respondent failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. The Respondent could have challenged the Complainant’s assertions, but has not done so.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
(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 website or other online 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 nature of the Complainant’s trademark, and its activities, together with the composition and use of the disputed domain name suggests that the Respondent could not have accidentally registered a domain name that corresponds to the Complainant’s trademark.
A basic Internet search against the disputed domain name primarily returns the Complainant and its businesses, which in the Panel’s view demonstrates that the Respondent was aware of the Complainant’s trademark and business when registering the disputed domain name and has seemingly used it for competing services aiming to confuse Internet users and create a false impression of an association with the Complainant and its activities within the meaning of paragraph 4(b)(iv) of the Policy.
The Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that paragraph 4(a)(iii) of the Policy is satisfied.
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 <zacktrades.com> be transferred to the Complainant.
Date: January 31, 2022