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Zumiez, Inc. v. Ling Shun Shing [2005] GENDND 275 (29 April 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zumiez, Inc. v. Ling Shun Shing

Case No. D2005-0239

1. The Parties

The Complainant is Zumiez, Inc., Everett, Washington, United States of America, represented by Christensen O’Connor Johnson Kindness, PLLC, United States of America.

The Respondent is Ling Shun Shing, Shanghai, China.

2. The Domain Name and Registrar

The disputed domain name <zumeiz.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed by e-mail with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2005. On March 4, 2005, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On March 8, 2005, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center on March 9, 2005, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint by e-mail on March 12, 2005. 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”), 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 the Respondent of the Complaint, and the proceedings commenced on March 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was April 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 6, 2005.

The Center appointed Emmanuelle Ragot as the sole panelist in this matter on April 18, 2005. 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 Complaint was submitted in English and the proceedings have been conducted in English.

The Complainant has paid the specified fee to the Center.

4. Factual Background

Complainant claims that it owns a US trademark for “ZUMIEZ” (US registration number 1779379) registered on June 29, 1993. The registration relates to the product of men’s clothing, namely tops, shirts, jackets, pants and shorts and to services of retail clothing store services (certificate of registration / Complaint Annex C).

Complainant also claims that its trademark “ZUMIEZ” is very well known in the United States of America and elsewhere having achieved widespread recognition and secondary meaning through Complainant’s extensive advertising and promotion of the mark (See Complaint Annex D / Sworn affidavit of Brenda Morris at paragraphs 2-11) .

Complainant operates a Website “www.zumiez.com”.

According to the WHOIS database maintained by DirectNIC.com, the Respondent in this administrative proceeding is Ling Shun Shing (Complaint Annex A).

Respondent registered the domain name at issue on September 16, 2002, (Complaint Annex A) and uses the name at issue to link to other clothing and retail clothing services-related Websites that are Complainant’s competitors as well as pornographic site (Complaint Annex F).

5. Parties’ Contentions

A. Complainant

Complainant contends that the “ZUMIEZ” trademark is “fanciful” term having no primary meaning in any known language (Complaints Annex D) and is entitled to broad protection in the light of the case law (See Two Pesos, Inc.v. Taco Cabana, Inc., [1992] USSC 108; 505 U.S. 763, 112 S.Ct.2753, 23 U.S.P.Q.2d 1081, 1083 1992, in Complaint Annex E) and has widespread customer recognition e.g. a query on the Web search engine “www.google.com” for the term “Zumiez” returns over seventeen thousand results, all or substantially all of which refer to “ZUMIEZ” in the trademark sense as a mark associated with the Complainant.

Complainant contends that Respondent has registered a domain name, which is confusingly similar to the trademark and is likely to cause confusion in the market place in which the Complainant has rights.

Complainant contends that respondent has no right or legitimate interests in respect to the domain name at issue, and that Respondent has registered and is using the domain at issue in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainant.

These requirements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interest in respect of the domain name;

(iii) Respondent’s domain name has been registered and is being used in bad faith.

The Complainant must prove in the administrative proceedings that each of the aforesaid three elements are present so as to warrant relief, according to Paragraph 4(a) of the Policy.

The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable pursuant to Paragraph 15(a) of the said Rules.

A. Identity or Confusing Similarity

The Panel finds that Complainant has rights in the mark “ZUMIEZ” based on Complainant’s registration of the mark in the United States Patent and Trademark office (Complaint Annex C).

The Sole Panelist determines that Complainant’s rights in the mark arose long prior to Respondent’s September 16, 2002 registration of the disputed domain name i.e. <zumeiz.com>.

The disputed domain name is identical or confusing similar to the Complainant’s trademark because “zumeiz” is to be considered as a common misspelling.

The only difference is the “i” and “e” transposition, which is such a common mistake in the English language that a childhood nursery rhyme was created to help to avoid it : “I before E except after C unless sounded like A as in neighbor or weigh” (Complaint Annex D).

“ZUMIEZ” trademark could reasonably be misspelled as “zumeiz” - whether this be a misspelling or “typo squatting” need not be determined.

The transposition of the letters “i” and “e” of the “ZUMIEZ” mark does not create a new or different mark in which the Respondent has rights. See In re Corning Glass Works, 229 U.S.P.Q.65 (TTAB 1985) (CONFIRM for a buffered solution held likely to be confused with CONFIRMCELLS for diagnostic blood reagents for laboratory use); In re Phillips – Van Heusen Corp., 228 U.S.P.Q.949 (TTAB 1986) (21 CLUB for clothing held likely to be confused with THE “21” CLUB (stylized) for restaurant services). (See Complaint Annex E – Case law).

Furthermore, computer users could reasonably confuse the Respondent’s <zumeiz.com> with the official Complainant’s domain name <zumiez.com> with while looking for Complainant’s Website, since Complainant provides Internet related services.

Given the appearance, sound, connotation and commercial similarity of the domain name and the mark, the Panel finds that Respondent’s domain name <zumeiz.com> and Complainant’s name and trademark “ZUMIEZ” are sufficiently confusingly similar, particularly here where Respondent has provided no evidence of a lack of similarity.

Thus, the Panel finds for the Complainant on the first element. America Online, Inc. v. Intellectual - Assets.com Inc., WIPO Case No. D2000-1043.

B. Rights or Legitimate Interests

The Respondent has provided nothing to support a conclusion that it has a legitimate interest in the subject domain name. The Respondent in not responding to the Complaint has failed to invoke any of the circumstances, which could demonstrate, pursuant to Paragraph 4(c) of the Policy, any rights to and/or legitimate interest in the domain name dispute.

It is the Sole Panelist finding that the Complainant has established that the registered trademark “ZUMIEZ” has been also well known (Complaint Annex D). Furthermore, as a matter of fact and absent evidence to the contrary, the Complainant has not granted any license or otherwise permitted the Respondent to use its trademark or to apply for any domain name incorporating the said mark.

In the case at hand, the Sole Panelist is unable to find any evidence that would establish that the Respondent has rights or legitimate interests in respect of the domain name at stake.

C. Registration and Use in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith.

Anyone of the following behaviors is sufficient to support a finding of bad faith:

(i) circumstances indicating that you have registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant with the owner of a trademark or service trademark 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 a domain name in order to prevent the owner of the trademark or service trademark 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 enforcement of your website or location or of a project or service on your website or location.

As previously mentioned, the Complainant has alleged that the circumstances listed above are present in this matter at least under Paragraphs 4(b)(ii) and 4(b)(iv) of the Policy.

Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name (See all cases cited by the Complainant in Complaint Annex E).

The <zumeiz.com> domain name, registered by the Respondent contains a common typographical error of Complainant’s mark that prevents Complainant from deriving complete economic benefits from its mark in a domain name.

By publishing a portal Website, which advertises among other things, clothing and retail clothing services, the Respondent uses the domain name at issue in this manner that it trades upon the goodwill of Complainant by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Website or location.

By directing users -who may have intended on finding “www.zumiez.com” but mistyped it as “zumeiz” and found Respondent’s portal site- via a link to Zumiez, Inc.’s competitors Websites as well as pornographic sites, such typosquattting is a clear evidence of exactly the bad faith of the Respondent.

While a user who arrives at the site may promptly conclude that it is not what he or she was originally looking for, Respondent has already succeeded in its purpose of using the service mark to attract the user with a view to commercial gain. National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., A/K/achargergirls.net, WIPO Case No. D2000-0118.

In particular, the description of the course of events of the matter made by the Complainant is illustrative of the dubious conduct of the Respondent - who has failed to invoke any circumstances, which could demonstrate his good faith in the registration or use of the domain name in issue.

Relying on the Complainant’s submissions together with supporting documents (detailed above), the Panel considers that the Complainant has established a prima facie case of bad faith of the registration and use of the <zumeiz.com> domain name by the Respondent, not only within the meaning of the provisions of the Policy referred to above, but also within the general and accepted meaning of “bad faith”.

7. Decision

For all the foregoing reasons, the Panel decides that the domain name <zumeiz.com> registered by the Respondent is confusingly similar to the trademark “ZUMIEZ” of the Complainant, that the Respondent has no rights or legitimate interest in respect of the domain name and that the domain name in issue has been registered and is being used in bad faith by the Respondent.

Accordingly, pursuant to paragraph 4(i) of the Rules, the Panel requires that the registration of the domain name <zumeiz.com> be transferred to the Complainant.

Emmanuelle Ragot
Sole Panelist

Dated: April 29, 2005