Westmore · UDRP DecisionZackstrades.com
The Panel ordered transfer of zackstrades.com after finding that it incorporated the ZACKS trademark in its entirety, that the Respondent had not rebutted the Complainant’s prima facie showing of no rights or legitimate interests, and that the domain was used for an apparent stock-trading and research website in a manner intended to create confusion for commercial gain. The Panel also accepted the significance of a website link directing users to the Complainant’s SEC materials.
The timeline behind zackstrades.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind zackstrades.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
The case illustrates how a domain combining an entire financial-services mark with a closely related term can support all three UDRP elements when it is used for an overlapping commercial website. The apparent use of the trademark owner’s regulatory materials was especially significant because it strengthened the impression that the website was affiliated with or operated by the trademark owner.
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 Zacks Investment Research, Inc. v. Privacy Service Provided by Withheld for Privacy ehf / Maximina Cureau Case No. D2021-4166 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 Privacy Service Provided by Withheld for Privacy ehf, Iceland / Maximina Cureau, U.S. 2. The Domain Name and Registrar The disputed domain name <zackstrades.com> (“Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2021. On December 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 14, 2021, 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 14, 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 on December 14, 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 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2022. The Center appointed Douglas M. Isenberg as the sole panelist in this matter on January 20, 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. 4. Factual Background Complainant states that it “has been offering independent research and investment related content” since 1978; that it “provides professional investors with financial data and analysis which allows customers to make better investment decisions for proprietary accounts and the investment accounts of clients”; and that its “research services are used by thousands of analysts at hundreds of brokerages in order to provide their clients with reliable investment information.” Complainant states that it uses the domain name <zacks.com> for its “primary website” and the domain name <zackstrade.com> “through a separate company” to “allow[] individual investors both U.S. and international to actively trade.” Complainant further states, and provides relevant evidence to support, that it is the owner of multiple trademark registrations that consist of or include “zacks,” including U.S. Reg. No. 5,652,428 (registered January 15, 2019) for ZACKS, for use in connection with “[f]inancial research and information services.” This registration is referred to hereafter as the ZACKS Trademark. The Disputed Domain Name was created on September 10, 2021, and is being used in connection with a website that appears to offer stock trading and research. 5. Parties’ Contentions A. Complainant Complainant contends, in relevant part, as follows: - The Disputed Domain Name is confusingly similar to the ZACKS Trademark because the Disputed Domain Name “adds only the non-distinctive term ‘trades’ to the” ZACKS Trademark; “[t]he most dominant feature of the domain name is ‘zacks’ which is the primary component of the Complainant’s name and the” ZACKS Trademark and “[t]he addition of a non-distinctive, descriptive or generic term like ‘trades’ does not change the overall impression of the domain name or avoid confusion.” - Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia , “Respondent is not affiliated or related to [Complainant] in any way and is not licensed by [Complainant] or otherwise authorized to use the ZACKS Trademark[]”; “Respondent is not commonly known by the Infringing Domain Name and has not acquired any trademark or service mark rights in the ZACKS name or mark”; “Respondent registered and uses the [Disputed] Domain Name to unlawfully advertise for a company called either Zack Trades or Zacks Trades”; and “Respondent also attempts to disguise itself as being associated with or that it is actually [Complainant] as shown by the SEC REGULATION hyperlinks which takes users to [Complainant’s] SEC page and opens up to [Complainant’s] SEC filed documents.” - The Disputed Domain Name was registered and is being used in bad faith because, inter alia , it “is used to resolve to a website that claims to offer online trading services” that “compete with the services offered by the Complainant and could dangerously divert potential customers from the Complainant’s business to the website under the [D]isputed [D]om ain [N]ame by attracting Internet users who mistakenly believe that the [D]isputed [D]omain [N]ame is affiliated with the Complainant.” B. Respondent The Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (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. Policy, paragraph 4(a). A. Identical or Confusingly Similar Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the ZACKS Trademark. As to whether the Disputed Domain Name is identical or confusingly similar to the ZACKS Trademark, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only ( i.e ., “zackstrades”) because “[t]he 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 disregarded under the first element confusing similarity test”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“ WIPO Overview 3.0 ”), section 1.11.1. The Disputed Domain Name contains the ZACKS Trademark in its entirety. As set forth in section 1.7 of WIPO Overview 3.0 , “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia , “Respondent is not affiliated or related to [Complainant] in any way and is not licensed by [Complainant] or otherwise authorized to use the ZACKS Trademark[]”; “Respondent is not commonly known by the Infringing Domain Name and has not acquired any trademark or service mark rights in the ZACKS name or mark”; “Respondent registered and uses the [Disputed] Domain Name to unlawfully advertise for a company called either Zack Trades or Zacks Trades”; and “Respondent also attempts to disguise itself as being associated with or that it is actually [Complainant] as shown by the SEC REGULATION hyperlinks which takes users to [Complainant’s] SEC page and opens up to [Complainant’s] SEC filed documents.” WIPO Overview 3.0 , section 2.1, states: “[w]hile 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 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.” The Panel finds that Complainant has established its prima facie case and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has satisfied the second element of the Policy. C. Registered and Used in Bad Faith Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or 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 the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s 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 the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b). Here, Complainant specifically argues that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy, for the following reasons: “Here the Respondent has registered and used an infringing domain name that incorporates the Complainant’s well-known ZACKS trademark, with the addition of the generic term “trades.” The infringing domain name is used to resolve to a website that claims to offer online trading services. These services compete with the services offered by the Complainant and could dangerously divert potential customers from the Complainant’s business to the website under the disputed domain name by attracting Internet users who mistakenly believe that the disputed domain name is affiliated with the Complainant. Further, the use by Respondent could further cause Internet users to mistakenly believe that the services offered on this website are offered by the Complainant, or by an entity affiliated to the Complainant. The likelihood of confusion is exacerbated by the Respondent’s decision to have a banner link on the homepage of its website called SEC REGULATION which goes to Complainant’s SEC pages and regulatory documents. Respondent’s improper activities and motives exacerbates the seriousness of this Respondent’s bad faith registration as it could potentially induce users to provide personal financial information to the Respondent thinking they were providing it to Zacks.” The Panel agrees, just as previous panels have found bad faith under similar circumstances. See, e.g ., CACEIS (Société Anonyme) v. Whois Privacy Corp. , WIPO Case No. D2016-0014 (finding bad faith where “the Disputed Domain Name has been used in connection with a website that appears to be a website for Complainant”); Kurt Geiger Limited v. Ralph Grunwald , WIPO Case No. D2021-1558 (finding bad faith where “Complainant contends that [Respondent was] using the disputed domain name to redirect toward a website that appears to be a website for the Complainant”); and Investor’s Business Daily, Inc. and Data Analysis, Inc. v. Whoisguard Protected, Whoisguard Inc. / Arnoldas Miejauskas , WIPO Case No. D2017-0797 (“Respondent obviously knew of the Complainant’s mark when it registered the disputed domain name and has intentionally attempted to attract Internet users to its website for its own or for third parties' commercial gain by creating a likelihood of confusion with the Complainant’s trademark and misleading Internet users to believe that its website belongs to or is associated with the Complainant”). Accordingly, the Panel finds that Complainant has proven the third element of the Policy. 7. Decision 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 <zackstrades.com> be transferred to Complainant. Douglas M. Isenberg Sole Panelist Date: January 31, 2022
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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