Westmore · UDRP DecisionZagamerica.com
The Panel ordered transfer of <zagamerica.com>. It found the domain confusingly similar to Complainant’s registered ZAG mark, found no rights or legitimate interests based on Complainant’s unrebutted prima facie case, and found registration and use in bad faith on a balance of probabilities. Bad faith was a close call because evidence of the asserted renown of the ZAG marks was exceedingly weak, but the Panel relied on the domain’s combination of ZAG with “America,” matching Complainant’s company name, Respondent’s silence, and evidence that the domain was offered for sale.
The timeline behind zagamerica.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
This decision illustrates a close-call bad-faith finding where direct evidence of trademark renown and targeting was weak. The outcome rested on the combined weight of the domain’s correspondence to the complainant’s company name, the explicit offer-for-sale indicators, and the respondent’s failure to rebut allegations of knowledge or provide a legitimate explanation.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Zag America, LLC v. DomainNameNexus.com - This Domain is For Sale Case No. D2021-1669 1. The Parties Complainant is Zag America, LLC, United States of America (“United States”), represented by Hashtags AVOCATS société d'avocats, France. Respondent is DomainNameNexus.com - This Domain is For Sale, United States. 2. The Domain Name and Registrar The disputed domain name <zagamerica.com> (the “Domain Name”) is registered with Name.com, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on May 31, 2021, 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 June 8, 2021. 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 Respondent of the Complaint, and the proceedings commenced on June 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 2, 2021. The Center appointed Robert A. Badgley as the sole panelist in this matter on July 8, 2021. 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 describes itself as “an international entertainment company that develops world-class television series, films and digital platforms.” Complainant states that it owns “world-class entertainment works under the ZAG HEROEZ label, such as Miraculous: the adventures of Ladybug and Black Cat, and Power Players (2019).” Complainant operates a commercial website at “www.zag-inc.com”. Complainant holds various trademark registrations in various jurisdictions, such as the word mark ZAG with registration no. 4637199, dated April 6, 2020, with the French Institut national de la propriété industrielle (INPI), or the word mark ZAG HEROEZ, with registration no. 5753187, registered on May 14, 2019, with the United States Patent and Trademark Office. Complainant asserts, without providing actual evidence, that “the ‘ZAG’ marks enjoy a significant reputation in the field of entertainment, in particular television, animation and video games.” The Domain Name was registered on January 7, 2020. The name of the registrant in the WhoIs record (i.e., Respondent in this case) includes the phrase “This Domain is For Sale.” There is no evidence in the record that the Domain Name has ever resolved to an active website. Rather, for some period of time the Domain Name resolved to a landing page which announces that the Domain Name is for sale. On the date of this decision, the Panel has visited the website at the Domain Name and notes it resolves to a portal site with a few hyperlinks in various languages, such as the link “Bijoux Pour Femme” (“Women’s Jewelry”). None of these links appears to relate to the entertainment industry. According to Complainant, Respondent holds 11,064 domain name registrations. This fact is of little relevance, though, as Complainant does not indicate whether any of the domain names in Respondent’s portfolio is confusingly similar to any third party’s trademark. On October 1, 2020, Complainant’s counsel sent Respondent a cease-and-desist letter, asserting Complainant’s trademark rights and demanding a transfer of the Domain Name. It does not appear that Respondent ever replied to this cease-and-desist letter. 5. Parties’ Contentions A. Complainant Complainant contends that it has established all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements, which Complainant must satisfy with respect to the Domain Name: (i) the 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 Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the trademark ZAG through registration demonstrated in the record. The Panel also concludes that the Domain Name is confusingly similar to the ZAG mark, which is clearly identifiable within the Domain Name. The addition of the word “America” does not prevent a finding of confusing similarity between the ZAG mark and the Domain Name. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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. The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Name. Complainant has established a prima facie case that Respondent lacks rights or legitimate interests, and Respondent has not come forward, either in response to the October 1, 2020, cease-and-desist letter or in response to the Complaint in this proceeding, to explain any possible legitimate basis for having registered the Domain Name. The Panel, on this record, cannot perceive any rights or legitimate interests Respondent may have vis-à-vis the Domain Name. Complainant has established Policy paragraph 4(a)(ii). C. Registered or Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes, on this record and on a balance of probabilities, that Respondent has more likely than not registered and used the Domain Name in bad faith. The Domain Name reflects Complainant’s ZAG mark plus the word “America.” Although Complainant does not assert any trademark rights as such in ZAG AMERICA, Complainant’s company name is “Zag America, LLC.” This fact makes it somewhat more likely that Respondent had Complainant in mind when registering the Domain Name. The Panel also notes that Respondent has not come forward to deny the allegations made by Complainant that Respondent “was fully aware of the existence of Complainant’s prior [trademark] rights” when registering the Domain Name. Nor did Respondent deny the allegation that “Respondent could not have ignored the reputation of the Complainant.” One would normally expect an innocent domain name registrant, who is accused of having knowledge of, and targeting, another party’s trademark, to respond to such an allegation. Thus, while Complainant’s actual evidence of the asserted renown of its ZAG trademarks is exceedingly weak, the Panel notes the composition of the Domain Name, and the Panel draws an adverse inference from Respondent’s silence in the face of a clear allegation. On the record presented here, the Panel concludes (and it is a close call) that it is more likely than not that Respondent registered the Domain Name with knowledge of Complainant. The Panel also finds, on a balance of probabilities and on this record, that Respondent probably registered the Domain Name for the purpose of selling it at a profit, in violation of the above-quoted Policy paragraph 4(b)(i). The WhoIs information and the website to which the Domain Name resolved for a time provide some evidence of Respondent’s intent to sell the Domain Name for profit. Complainant has established Policy paragraph 4(a)(iii). 7. Decision For the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <zagamerica.com> be transferred to Complainant. Robert A. Badgley Sole Panelist Date: July 14, 2021
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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