Zebrabangladesh.com

The timeline behind zebrabangladesh.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Zebra Technologies Corporation v. Md Forhad Hossain / Crystal Vision Solutions Claim Number: FA2502002139909 PARTIES Complainant is Zebra Technologies Corporation ("Complainant"), represented by Paul A. Borovay of Zebra Technologies Corporation, Illinois, USA. Respondent is Md Forhad Hossain / Crystal Vision Solutions ("Respondent"), Bangladesh. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <zebrabangladesh.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com. PANEL The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. The Honorable Neil Anthony Brown KC as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on February 12, 2025; Forum received payment on February 12, 2025. On February 13, 2025, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <zebrabangladesh.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On February 18, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 10, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@zebrabangladesh.com. Also on February 18, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts. Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. On March 11, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant made the following contentions. 1. The Complainant is a United States company engaged in the provision of computer hardware and software and related goods and services and has been so engaged since at least 1982. 2. The Complainant operates domestically and internationally, including in Bangladesh and provides its goods and services under the trademark for ZEBRA. In particular, the evidence will establish that the Complainant has acquired registered trademark rights in the ZEBRA trademark by virtue of its registration of that mark with the United States Patent and Trademark Office ("USPTO") registered Number 1274816, registered on April 24,1984 and other trademarks for ZEBRA, including ZEBRA with a zebra's head, and derivatives, registered domestically with the USPTO and internationally, including in Bangladesh, (collectively "the ZEBRA trademark"). The Complainant has used that trademark since its registration to offer its goods and services. 3. The ZEBRA trademark has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services. 4. As well as its trademark, the Complainant has registered the domain name <zebra.com> that it uses in its business and in particular for its website at www.zebra.com where it markets its products under the ZEBRA trademark and brand. 5. The Respondent registered the <zebrabangladesh.com> domain name on September 12, 2023 ("the disputed domain name"), well after the Complainant had established its aforesaid trademark rights. 6. The disputed domain name embodies, without the consent of the Complainant, the ZEBRA trademark with the addition of the word "bangladesh", signifying the country Bangladesh and the generic Top Level Domain ".com". 7. The disputed domain name is confusingly similar to the ZEBRA trademark. 8. The Respondent has no rights or legitimate interests in the disputed domain name. That is so because: (a) the Respondent registered the domain name well after the Complainant had acquired its aforesaid trademark rights; (b) the Complainant has never given any licence, permission or authority to the Respondent to use the ZEBRA trademark or any similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent; (c) the Respondent has wholly incorporated the ZEBRA trademark in the domain name to lure internet users into mistakenly believing that it is the Complainant; (d) the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i); (e) the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); (f) the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii) but rather has used the domain name for improper commercial gain; (g) the Respondent has displayed and traded on the Complainant's trademark rights by causing it to resolve to a website and extensively and prominently displaying on that website the ZEBRA trademark, the Zebra head and the word BANGLADESH to lure internet users into mistakenly believing that it is the Complainant or is affiliated with, endorsed by or sponsored by the Complainant, which it is not; and (h) there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name. 9. The Respondent has registered and used the disputed domain name in bad faith. That is so because: (a) the Respondent's foresaid conduct was calculated to induce the Complainant to buy the domain name from it for more than the Respondent's-out-of pocket expenses within the meaning of Policy ¶ 4(b)(i); (b) the Respondent's aforesaid conduct was calculated to and has disrupted the Complainant's business within the meaning of Policy ¶ 4(b)(iii); (c) the Respondent has registered and used the domain name to compete with the Complainant's genuine ZEBRA products by means of generating confusion within the meaning of Policy ¶ 4(b)(iv) for the Respondent's personal commercial gain; and (d) all of the acts, facts, matters and circumstances to be revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith. The evidence will therefore establish that the Complainant has been able to make out all of the grounds it must establish and that it is entitled to the relief that it seeks. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS 1. The Complainant is a United States company engaged in the provision of computer hardware and software and related goods and services and has been so engaged since at least 1982. 2. The Complainant operates domestically and internationally, including in Bangladesh and provides its goods and services under the trademark for ZEBRA. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the ZEBRA trademark by virtue of its registration of that mark with the United States Patent and Trademark Office ("USPTO") registered Number 1274816, registered on April 24, 1984 and other trademarks for ZEBRA, including ZEBRA with a zebra's head, and derivatives, registered domestically with the USPTO and internationally, including in Bangladesh, (collectively "the ZEBRA trademark"). The Complainant has used that trademark since its registration to offer its goods and services. 3. The Respondent registered the <zebrabangladesh.com> domain name on September 12, 2023 ("the disputed domain name"), well after the Complainant had established its aforesaid trademark rights. 4. The Respondent has caused the disputed domain name to resolve to a website that infringes the Complainant's trademark, passes itself off as the Complainant, uses the ZEBRA, the ZEBRA head and related trademarks and the expression ZEBRA BANGLADESH, and offers products purporting to be genuine ZEBRA products, all to lure internet users into mistakenly believing that it is the Complainant or is authorized by it to sell Zebra products in Bangladesh. 5. By reason of the matters aforesaid, and as established by the evidence, the disputed domain name is confusingly similar to the ZEBRA trademark, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and used in bad faith. 6. Accordingly, the disputed domain name should be transferred from the Respondent to the Complainant. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (2) Respondent has no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith. In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"). Identical and/or Confusingly Similar The first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. In particular, the evidence has established that the Complainant has acquired registered trademark rights in the ZEBRA trademark by virtue of its registration of that mark with the United States Patent and Trademark Office ("USPTO") registered Number 1274816, registered on April 24,1984 and other trademarks for ZEBRA, including ZEBRA with a zebra's head, and derivatives, registered domestically with the USPTO and internationally, including in Bangladesh (collectively "the ZEBRA trademark"). The Complainant has used that trademark since its registration to offer its goods and services. The aforesaid facts have been established by documentary evidence that the Panel has examined and finds to be in order. The Complainant has thus established its trademark rights and hence its standing to bring this proceeding. The next question that arises is whether the disputed domain name is identical or confusingly similar to the Complainant's ZEBRA trademark. The Panel finds that the disputed domain name is confusingly similar to the ZEBRA trademark for the following reasons. The disputed domain name embodies, without the consent of the Complainant, the ZEBRA trademark with the addition of the word "bangladesh" standing for "of or in Bangladesh" and the generic Top Level Domain ".com". When a domain name includes a trademark, as in the present case, it is more likely than not that the domain name is confusingly similar to the trademark. In the present case it is obviously so. Thus, internet users would read the domain name as invoking the ZEBRA trademark and as dealing with the Complainant's goods and services offered in Bangladesh under the trademark and as being either a domain name of the Complainant itself or one that has been registered with its consent. The addition of the word "bangladesh" has the result that the domain name would be interpreted by internet users as signifying the goods and services of the Complainant offered in Bangladesh. That is because the addition of a geographic or generic expression such as "bangladesh" will not negate a finding of confusing similarity that is otherwise present on the evidence, which in the present case it is. Thus, internet users would read the domain name as invoking the ZEBRA trademark, as dealing with the Complainant's well-known goods and services offered under the trademark in Bangladesh and as being a domain name of the Complainant itself or a domain name that has been registered with its consent. The addition of the generic Top Level Domain ".com" is ignored in making the comparison, because all domain names must have such an extension. The Panel therefore finds that the disputed domain name is confusingly similar to the ZEBRA trademark under Policy ¶ 4(a)(i). The Complainant has thus made out the first of the three elements that it must establish under the Policy. Rights or Legitimate Interests It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)). The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations. Several of these considerations overlap, but the substance of them in combination is as follows. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name on all of the grounds relied on by the Complainant: (a) the Respondent registered the domain name well after the Complainant had acquired its aforesaid trademark rights; the first and most significant of the is that the Respondent took the Complainant's trademark without any permission and used it as the central feature of the domain name that it then registered; not only had the trademark been owned and used by the Complainant for many years, but the domain name was similar to the trademark and confusingly so; that confusion was emphasised and intentional because it was also very similar to the Complainant's own domain name <zebra.com>, the only difference being that the Respondent has added the expression "bangladesh"; the disputed domain name was thus in substance a copy of the Complainant's trademark and clearly effected for the improper purpose of trading on the Complainant's trademark; thus, there is no way in which that creation could give rise to a right or legitimate interest in the very domain name used to implement the Respondent's improper purpose; (b) the Complainant has never given any licence, permission or authority to the Respondent to use the ZEBRA trademark or any similar mark and there has never been any affiliation or relationship between the Complainant and the Respondent; thus, it could not be suggested that the domain name was registered or used with any sort of permission or consent of the Complainant; (c) the Respondent has wholly incorporated the ZEBRA trademark in the domain name to lure internet users into mistakenly believing that it is the Complainant; it has done this by the formulation of the domain name itself; (d) the Respondent has displayed and traded on the Complainant's trademark rights by causing the domain name to resolve to a website that is seen in Exhibit D and which extensively and prominently displays the ZEBRA trademark, the ZEBRA with a zebra's head trademark, the expression Zebra Bangladesh, the word Bangladesh and such product descriptions as Zebra Barcode Scanners, Zebra ID Card Printers Zebra General Purpose Hands-Free Scanners and Zebra Accessories, all to lure internet users into mistakenly believing that it is the Complainant or is affiliated with, endorsed by or sponsored by the Complainant, and that is authorized to sell goods and services that are the same as or similar to the genuine goods of the Complainant, which it is not and in competition with the Complainant; by that means the Respondent has also been passing itself off as the Complainant; (e) the Respondent has not used the domain name for a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i); it is not bona fide to steal a trademark, concoct a domain name that suggests that it is an official domain name of the trademark owner and use it on a website to pretend that it is the Complainant or authorized by the trademark owner to sell products the same as or similar to those of the Complainant and in competition with it; this is more mala fide than bona fide; (f) the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); there is no evidence that the Respondent is known by the domain name and the evidence shows that it is unlikely that the Respondent is known by any name other than its own; (g) the Respondent has not used the domain name for a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii) but rather has used the domain name for improper commercial gain; there is nothing legitimate about the Respondent's aforesaid conduct; it is commercial rather than noncommercial as it is clearly being done to make money, and it is not fair, either to the Complainant or to internet users in general; (h) the Respondent's website also carries logos of accepted credit providers, an email address for contact, a chat room and invitations to "login" and "register", all no doubt included to entice internet users to part with their financial and personal information; and (i) there is no other ground on which it could conceivably be shown that the Respondent has a right or legitimate interest in the disputed domain name. The Complainant has therefore made out a very persuasive case for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name. All of these matters make out the prima facie case against the Respondent. The Respondent has not filed a Response and is in default and has thus not rebutted the prima facie case against it. The Complainant has therefore made out the second of the three elements it must establish under the Policy. Registration and Use in Bad Faith It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in the Policy ¶ 4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression. The Complainant has submitted that the Respondent has registered and used the disputed domain name in bad faith on several grounds. In view of the evidence discussed above, which is equally applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat, it is clear that the Complainant has made out all of the grounds relied on. The Respondent has clearly been motivated by bad faith in the registration and use of the domain name and in particular in the deception of potential buyers and internet users in which the Respondent has engaged, amply demonstrated by the evidence referred to above. In particular, it is clear from the evidence that, as the Complainant has submitted: (a) the Respondent's foresaid conduct was calculated to induce the Complainant to buy the domain name from it for more than the Respondent's-out-of pocket expenses within the meaning of Policy ¶ 4(b)(i); the brazen nature of registering and using the domain name as aforesaid suggests that the real intention of the Respondent was to embarrass the Complainant, generate concern about the use of its good name and trademark and the sale of the same or similar products to those of itself under its name and trademark and its probable loss of custom as a result, that it is open to the Panel find, as it does, that the Respondent was minded to try to sell the domain name to the Complainant for more than its out-of-pocket expenses and as high as it could extract; (b) the Respondent's aforesaid conduct was calculated to and has disrupted the Complainant's business within the meaning of Policy ¶ 4(b)(iii); clearly, the effect of the Respondent's scheme must have been to reduce the Complainant's business and divert as much of it as possible to the Respondent via its deceptive website; (c) the Respondent has registered and used the domain name to compete with the Complainant's genuine ZEBRA products by means of generating confusion within the meaning of Policy ¶ 4(b)(iv) for the Respondent's personal commercial gain; it was in the interests of the Respondent to cause as much confusion as possible so that the Complainant's customers and potential customers would think that the Respondent's website was an official ZEBRA website and that the products on sale were genuine ZEBRA products; and (d) all of the acts, facts, matters and circumstances to be revealed by the evidence have shown that the Respondent registered and used the disputed domain name in bad faith. Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the ZEBRA trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. It is clear that, from the beginning, the Respondent set about targeting the Complainant, tried to set up an allegedly rival source of products in the same field and location as the Complainant and sought to mislead internet users to believe that the products offered on its website were genuine and authorized products of the Complainant, which they were not. The Complainant has thus made out the third of the three elements that it must establish. The Complainant has also cited several prior UDRP decisions that support all of its contentions The Complainant has therefore established all of the elements that it must show under the Policy and it is entitled to the relief it seeks, namely transfer of the disputed domain name. DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <zebrabangladesh.com> domain name be TRANSFERRED from Respondent to Complainant. The Honorable Neil Anthony Brown KC, Panelist Dated: March 12, 2025 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.