WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zippo Manufacturing Company v. Zippoe
Case No. D2012-2246
1. The Parties
Complainant is Zippo Manufacturing Company, Bradford, Pennsylvania, United States of America, represented by Squire Sanders (US) LLP, United States of America (the “United States”).
Respondent is Zippoe, Forth Worth, Texas, United States of America.
2. The Domain Name and Registrar
The disputed domain name <zippoe.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 November 14, 2012. On November 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2012, 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 Complainant on November 20, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 21, 2012.
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 proceedings commenced on November 22, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 12, 2012. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2012.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on January 3, 2013. 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
Complainant is the owner of numerous registrations on the Principal Register of the United States Patent and Trademark Office (USPTO) for the word trademark, and word and design trademark, ZIPPO, including registration number 317,219, dated September 18, 1934, covering pocket lighters, in international class (IC) 34, claiming first use and first use in commerce of November 5, 1933; registration number 432,131, dated August 19, 1947, in IC 34, covering flints for lighters; registration number 436,615, dated February 17, 1948, in IC 6, covering fluid for lighters, and; various subsequent registrations covering goods including pocket knives, key holders, letter openers, sporting equipment, belts with buckles, entertainment services (namely, sponsoring and promoting motorsports events), sunglasses and eyeglass frames, mobile telephone cases, leather goods, computer software for simulating a lighter, and watches and jewelry.
Complainant introduced its ZIPPO lighter products in commerce in the United States in 1933, and has used its ZIPPO mark continuously since that date. ZIPPO lighters became well-known during World War II when used by US military personnel. The ZIPPO trademark has been actively promoted by Complainant. Complainant indicates that its distinctive lighters have appeared in 1500 or more movies, stage plays and television shows. Complainant operates a commercial website at “www.zippo.com’’, and has registered a number of zippo-formative domain names that resolve to its main website.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. The Registrar reports that the disputed domain name was registered to Respondent on February 23, 2010.
Complainant did not provide evidence of use of the disputed domain name by Respondent. Complainant furnished a cease-and-desist letter to Respondent dated March 29, 2012 which implies that as of March 29, 2012, Respondent was operating a website using the disputed domain name. The Complaint leaves unclear whether Respondent was making use of the disputed domain name at the time this proceeding was initiated.
As of January 13, 2013, the disputed domain name directs Internet users to a website headed “Zippoe is Social Real Estate” that includes listings of real property in various parts of the United States. Under the heading “Investment Properties” there is listed numerous times a property in Canon City, Colorado, that is accompanied by a photograph of Mike Onaolapo, the individual who is listed as the administrative and technical contact for Respondent in the record of registration of the disputed domain name. The website includes videos that appear to be sponsored by certain commercial sellers of real property. The website appears to employ a standard template, and does not provide information concerning its owner/operator other than the term “Zippoe”.
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it has rights in the trademark ZIPPO based on long use in commerce in the United States (and in other countries), and as evidenced by numerous registrations at the USPTO.
Complainant contends that the disputed domain name is confusingly similar to its trademark, adding only “a silent ‘e’ to the end”.
Complainant argues that its ZIPPO trademark is famous, and that Respondent is diluting the strength of its mark by blurring.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because: (1) Respondent must have been aware of Complainant’s well-known trademark when it registered the disputed domain name; (2) Complainant has not found any trademark or trade name registrations in the name of Respondent corresponding to the disputed domain name or ZIPPO, and (3) Respondent’s use of the ZIPPO mark for its domain name “directly infringes and dilutes” Complainant’s trademark rights, and is illegitimate.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent is intentionally attracting Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s trademark; (2) Complainant’s trademark is so famous that Respondent could make no legitimate use of the disputed domain name, and mere registration of the disputed domain name is prima facie proof of bad faith; (3) in light of the fame of Complainant’s trademark, Respondent was obligated to perform a trademark search prior to registering the disputed domain name, and its failure to do so demonstrates bad faith use; (4) Complainant has attempted to contact Respondent on multiple occasions, and Respondent has failed to respond, constituting further proof of bad faith.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its records of registration. Respondent did not reply to e-mail notification. The express courier delivery service engaged by the Center successfully delivered the notification to Respondent at the physical address provided in its record of registration, with proof of signature by Respondent. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of rights in the trademark ZIPPO based on long use in commerce in the United States and as evidenced by registration at the USPTO (see Factual Background supra). Complainant enjoys a presumption of rights in the trademark based on registration. Respondent has not challenged Complainant’s assertion of trademark rights. The Panel determines that Complainant has rights in the trademark ZIPPO in the United States.
The disputed domain name directly incorporates Complainant’s ZIPPO trademark and adds the letter “e”. Complainant’s trademark is a distinctive coined term. Adding the vowel “e” to that term does not substantially change the appearance of the term, nor does it appear to affect the sound in pronunciation. The coined term has no dictionary meaning (aside from any possible references to Complainant’s trademark), and neither does the disputed domain name. Because of the strong similarity in visual impression and sound between the trademark and the disputed domain name, the Panel determines that the disputed domain name is substantially similar to the trademark.1
The Panel determines that Complainant has rights in the trademark ZIPPO and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.” (Policy, paragraph 4(c))
Complainant has alleged that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent must have been aware of Complainant’s well-known trademark when it registered the disputed domain name; (2) Complainant has not found any trademark or trade name registrations in the name of Respondent corresponding to the disputed domain name or ZIPPO, and (3) Respondent’s use of the ZIPPO mark for its domain name “directly infringes and dilutes” Complainant’s trademark rights, and is illegitimate. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not responded to the Complaint, and has not asserted a basis on which it might have rights or legitimate interests in the disputed domain name. The Complaint leaves unclear whether Respondent made active use of the disputed domain name before the initiation of this proceeding. The Panel considers Respondent’s current use of the disputed domain name to be evidence of its intended use.
There is no apparent link or connection between the term “Zippoe” used to identify Respondent’s “Social Real Estate” website and its content. There is no apparent link between the term “Zippoe” and any party (such as Respondent’s administrative and technical contact) associated with the website. The website appears to be created from a form template. It lacks content specifically associated with a party using the name “Zippoe”, such as a real estate business that would ordinarily be expected to be connected with a real estate website. There is no contact information for an identified business.
The trademark ZIPPO is a distinctive coined term that is well known among consumers in the United States. Respondent has provided no explanation or justification for using that term in connection with the website associated with the disputed domain name. In light of the substantial likelihood that Respondent registered and is using the term “zippoe” as a means to take advantage of the goodwill inherent in Complainant’s well-known trademark, and the absence of any justification for using that term which is substantially similar to Complainant’s trademark as its domain name and website identifier, the Panel considers that Respondent has failed to establish rights or legitimate interests in the disputed domain name.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
In order to prevail under the Policy, Complainant must demonstrate that the disputed domain name “has been registered and is being used in bad faith” (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy states that “for the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.” Among those circumstances are: (iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] web site or location or of a product or service on [respondent’s] web site or location.”
Respondent registered and is using the disputed domain name which is substantially similar to Complainant’s well-known distinctive trademark to direct Internet users to Respondent’s website. At Respondent’s website, there appear various real estate listings as well as videos from third parties concerning commercial real estate. Respondent is presumably earning income from its website based on the inclusion of those listings and links. Respondent is attracting Internet users for commercial gain by making use of Complainant’s well-known and distinctive trademark to secure Internet traffic by creating confusion as to whether Complainant is the source, sponsor, affiliate or endorser of Respondent’s website.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of 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 disputed domain name, <zippoe.com>, be transferred to the Complainant.
Frederick M. Abbott
Date: January 13, 2013
1 For purposes of the Policy, the generic top-level domain identifier ”. com” is not material to analysis of confusing similarity in a context such as this.