WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zapata Holding v. Derek Gross
Case No. D2016-0441
1. The Parties
The Complainant is Zapata Holding of Le Rove, France, represented by Inlex IP Expertise, France.
The Respondent is Derek Gross of Florida, United States of America (the “United States”) self-represented.
2. The Domain Name and Registrar
The disputed domain name, <frankyzapata.com> (the “Domain Name”), 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 March 4, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 7, 2016, 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 March 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2016. The Response was filed with the Center on April 5, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 14, 2016. 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 French company formed by Mr. Franky Zapata to exploit his Flyboard® ‘waterfly’ watersport device, which has attracted much international media and Internet attention. The invention created a new watersport and led to the organization of the first Flyboard® World Cup in Qatar in 2012.
The Complainant is the registered proprietor of a number of trade mark registrations for a device mark featuring the letters “ZR” and the words “Zapata Racing”, including French registration number 083575115 filed on May 14, 2008 and registered on June 22, 2012. The United States registration for the same mark (No. 4315266) was applied for on February 17, 2012 and registered on April 9, 2013 . These registrations are in class 12 and cover “motor-driven water vehicles”.
The Domain Name was registered by the Respondent on December 6, 2014, the ‘creation’ date featuring in the Registrar’s WhoIs database. On the papers in the case file it appears to have been connected to either a parking page of the Registrar or an error page.
On February 25, 2016 the Complainant’s representative emailed the Respondent requiring the Respondent to transfer the name to the Complainant. The Respondent replied the same day saying: “He can purchase the domain from me for USD 5,000 if he wants it.” He followed that message up with other messages, one saying: “he could have purchased the domain, but he decided to buy frankyzapata.fra [sic] instead of .com” and another reading as follows:
“I didn’t get any emails from Ms Zapata. She said on facebook that she would. I gave her mine email address. You must have gotten from her. But I’m willing to sell my domain for the price of USD 5,000. It is not illegal to buy domain names. He decided to buy the .FRA [sic] domain. Why didn’t he buy the .com instead or both.”
On March 2, 2016 the Respondent emailed the Complainant’s representative saying: “Still waiting to hear back from you on my offer. I can sell this domain to someone else. I’m sure someone else might like to have this domain name to attract business when people search the name.”
On March 4 and 5, 2016 there was an exchange of emails between the Registrar and the Respondent (following notification of this case by the Complainant’s representative) in which the Respondent said to the Registrar: “How can you put a dispute on my domain. I purchased it and you sold it to me. If Franky Zapata wants the domain, he can but it from me. I told them that already. What is the dispute then?”
On March 8, 2016 the Respondent emailed the Center in the following terms:
“To whom it may concern, About the dispute on frankyzapata.com. I purchased this domain last year. Franky Zapata owned frankyzapata.fra [sic]. Franky could have purchased the .com when he purchased the .fra. that was his choice. Why didn’t he purchase the .com? I offered to sell them the domain and I never heard from them until I got this dispute filed. I’m still willing to sell it to them. Derek Gross”
Also on March 8, 2016 the Respondent emailed the Complainant’s representative indicating that if Franky Zapata did not want the Domain Name, the Respondent would use it for his watersports business. The Complainant’s representative replied that the money demand was totally unacceptable and that the dispute procedure under the Policy would give the Respondent an opportunity of presenting his case.
Later that day the Respondent followed up with the following response (verbatim):
“First of all I NEVER blackmailed anyone. Blackmail would be pay me or I’m going to do this. I didn’t even tell Franky I purchased the domain name He contacted my son and asked if he owned it He told them I did. They said they would contact me I never heard from them, until I got letter from lawyer. I’ve had the domain name for about a year now and NOT once have I contacted Franky and asked him for ANYTHING.
When I was contacted, I told lawyer that I was willing to sell him the domain. I didn’t once tell him them no. If he wants it, he can buy it. People sell domain names all the time.
I want it very clear that I never blackmailed or even contacted Franky Zapata on this issue. Derek.”
Later still he followed up with another email featuring a screenshot of a Sedo.com webpage purporting to show that <exam.com> was on offer at USD 149,500, which compared well with his pricing of the Domain Name at USD 5,000.
5. Parties’ Contentions
The Complainant contends that the Domain Name is identical to the name of the founder of the Complainant’s company and is confusingly similar to a trade mark in which the Complainant has rights. The Complainant contends that the Respondent has no rights in respect of the Domain Name. Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith.
The Response was submitted to the Center on April 5, 2016 by way of an email in the following terms:
“I’m not a lawyer and I don’t have the time or what to spend the money for a lawyer to reply to this dispute. Below is my reply.
1. I purchased frankyzapata.com over a year ago (Dec 2014) with no plans for it at the time. I never put up the domain online or contacted Franky about selling the domain. My son and I own a Flyboard business, we are heavily involved in the industry. When Franky reached out to me, I thought he wanted to purchase it. I immediately offered him that opportunity.
2. When I researched different domains to purchase, I noticed that Franky purchased frankyzapata.fra I purchased the .com version of it. Currently the .fra is not being used.
3. I legally paid for this domain and have plans to use it immediately. I purchased two other domains at the same time. Derekgross.com and Medianumber1.com. I wanted to buy Benmerrell.com for my son buy someone already owns it. Ben is world ranked number 4 in the world now. Ben is know all over the world as well. They have pictures of Ben flying in multiple countries and preforms shows all over the world as well. I guess I need to file a complaint against whom ever owns benmerrell.com.
4. My son got a Facebook message from Franky’s wife asking if he owned the domain several months ago. He told her that I owned it. My son contacted me and told me they wanted to talk with me about it. He asked if he could give them my email address. I said yes and I would be willing to sell it to them. I never heard from them.
5. I contacted Franky’s wife via Facebook a couple weeks later and asked if they wanted it. She said she would get back to me.
6. Then I got an emailed letter from their lawyer telling me that they have filed a complaint with you for the domain. When I tried to contact them they didn’t reply, I then said I could sell it to someone if they didn’t want it. The lawyer implied that I was blackmailing Franky.
7. There are many Franky Zapata’s in the world and I would argue they have as much right to take it from me as the one who filed this complaint. So what gives him the right?
8. Domains are bought and sold every day. This is a site from Go Daddy where I purchased this domain. It is not illegal to sell domains. Many sell for more than $5,000 dollars. If Franky doesn’t want to buy it, I’ll be glad to use it in the future for something or sell it to someone else that wants it.”
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is 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 Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Domain Name comprises the name, “Franky Zapata”, and the “.com” generic Top-Level Domain (“gTLD”) identifier. For the purposes of assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy it is permissible to ignore the gTLD identifier where, as here, it serves no more than a technical function.
The Complainant has applied for registration of FRANKY ZAPATA as a Community Trade Mark, but the application was only made on January 13, 2016 and has not yet achieved registered status. Of themselves trade mark applications do not generally give rise to trade mark rights, so this application is of no assistance to the Complainant.
However, on the evidence before the Panel, it is clear that “Franky Zapata” is not only founder of the Complainant company, but is also the inventor of what appears to the Panel to have been a phenomenally successful watersports vehicle namely the Flyboard®, a product which is produced and marketed by the Complainant. Unsurprisingly, the Complainant makes significant commercial use of the name of its founder in the marketing of its products. Thus, the Panel believes it more likely than not that the Complainant will have generated unregistered trade mark rights in respect of the name, “Franky Zapata”, in those territories such as the United States of America where unregistered trade mark rights are recognized.
Thus the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
The Complainant is also the owner of registrations of a device mark comprising the letters “ZR” and the words “Zapata Racing” (for details see section 4 above). Is the Domain Name confusingly similar to that device mark? The only common denominator is the name “Zapata”, but, taken together with the prominence given to the letter “Z” which features above it, it is a prominent and distinctive aspect of the device mark.
The Panel is reminded that the test of identity and confusing similarity under paragraph 4(a)(i) is widely regarded to be a low threshold test designed to verify that the Complainant has a bona fide basis for filing the Complaint. On that footing the Panel finds that the Domain Name is confusingly similar to the Complainant’s aforementioned registered trade mark.
C. Rights or Legitimate Interests
From the emails set out in section 4 above and the Response set out in section 5B above, it is apparent that the Respondent has a watersports business, was at date of registration of the Domain Name aware of the significance of the name “Franky Zapata” in the watersports context and was aware that the Complainant had already registered the equivalent domain name in the “.fr” country code Top-Level Domain.
The Respondent has only put forward one justification for registering the Domain Name, namely that it was available for registration. While it is true that domain name registration is a first-come-first-serve process, that does not mean that one is free to register any name available for registration. In particular, as can be seen from the terms of paragraph 4 of the Policy, a contractual arrangement to which the Respondent signed up when he accepted the Registrar’s terms and conditions, it is generally unacceptable to register domain names comprising the trade marks of another. While it may be that the Respondent was unaware that “Franky Zapata” was a trade mark, as a person engaged in the watersports business he was most certainly all too aware of the importance of Franky Zapata to the industry and the commercial significance of the “Zapata” name in that industry. Indeed, in the view of the Panel he can only have selected the Domain Name with that in mind.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Why did the Respondent register the Domain Name? In paragraph 1 of his Response he says that he had no plans for the Domain Name at time of registration. When approached by the Complainant his immediate response was to offer it for sale for USD 5,000. He now says that he has immediate plans to use it for his watersports business (paragraph 3 of the Response). However, his plans (such as they are) must be rather vague given paragraph 8 of the Response where he says: “If Franky doesn’t want to buy it, I’ll be glad to use it in the future for something or sell it to someone else that wants it.”
The Panel believes it to be more likely than not that the Respondent registered the Domain Name having the commercial significance of the name (which is not a generic name or dictionary word) firmly in mind and in the hope and expectation that he could sell it at a profit to the Complainant. On that basis the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(i) of the Policy.
The Panel regrets that he cannot accept as credible the Respondent’s statement that he, a person engaged in the watersports industry, registered the name of a well-known participant in that industry, with no particular plans. If his purpose was not to sell it, but to use it in his business, it would inevitably lead to confusion with the Complainant’s business, identifying as it does the person behind the Complainant whose name is widely used by the Complainant in the promotion of its business. A matter which the Respondent fully recognized in his email of March 2, 2016: “I can sell this domain to someone else. I’m sure someone else might like to have this domain name to attract business when people search the name.” On that basis the Panel would have found that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The fact that to date the Domain Name may not have been in active use by the Respondent (other than to connect to a parking page of the Registrar) does not assist the Respondent. In the context of this case, the Respondent’s continuing offers to sell the Domain Name to the Complainant is a continuing abusive use. Moreover the threat to sell it to someone else or to use it in relation to his own business is, in the view of the Panel, a threat hanging over the head of the Complainant and, as such, a continuing abusive use of the Domain Name.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <frankyzapata.com>, be transferred to the Complainant.
Date: April 21, 2016