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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Zappos.com, Inc. v. Zufu aka Huahaotrade
Case No. D2008-1191
1. The Parties
The Complainant is Zappos.com, Inc., Henderson, Nevada, United States of America, represented by SeГЎn F. Heneghan, United States of America.
The Respondent is Zufu aka Huahaotrade, Putian, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name<shop-zappos.com> is registered with Xiamen ChinaSource Internet Service Co., Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 4, 2008. On August 5, 2008, the Center transmitted by email to Xiamen ChinaSource Internet Service Co., Ltd. a request for registrar verification in connection with the domain name at issue. On August 8, 2008, Xiamen ChinaSource Internet Service Co., Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on August 14, 2008. The Center verified that the Complaint, the amendment to the Complaint together with the additional submission in support of the Complainant’s request to the Panel for English to be language of the proceedings 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 August 19, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 8, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2008.
The Center appointed Mr. Douglas Clark as the sole panelist in this matter on September 23, 2008. 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 filed in English, and submitted a supported request that English be the language of the proceedings, while the registration agreement concerning the disputed domain name is in Chinese. On August 11, 2008, the Center notified the Parties in English and Chinese that the Complainant and the Respondent would both be given an opportunity to submit comments on the Complainant’s language request, the Complainant being granted five days from the date of notification and the Respondent seven days. Among other things, the Respondent was requested to submit any comments, objections and any supporting materials as to why the proceedings should not be conducted in English, otherwise the proceedings would go forward on the basis that the Respondent had no objection to the Complainant’s request that English be the language of the proceedings. The Complainant filed an additional submission to request the language of the proceedings be in English. The Respondent did not file any objection to the language request within the specified due date of August 18, 2008. On August 19, 2008, the Center notified the Parties by email and by fax in English and Chinese as follows:
“Given the provided submissions and circumstances of this case, the Center has decided as follows:
1) accept the Complaint as filed in English;
2) accept a Response filed in either Chinese or English;
3) appoint a panel familiar with both languages mentioned above, if available.”
The Center also notified the Parties that the power to decide the language of the proceedings lay with the Panel to be appointed. The Panel’s decision on the appropriate language is set out in the Discussion and Findings section below.
4. Factual Background
The Complainant incorporated in United States of America, is the owner of trademarks ZAPPOS and ZAPPOS.COM. The Complainant’s ZAPPOS and ZAPPOS.COM trademarks are used in connection with its popular online retail store specializing in footwear, clothing and accessories. The Complainant’s ZAPPOS.COM trademark has been used in connection with these services since as early as 1999. The ZAPPOS mark has been used in connection with its online services since 2003. Several trademarks composing of ZAPPOS or ZAPPOS.COM were registered in United States of America primarily for online retail store services specializing in footwear, clothing and accessories.
The Respondent is the registrant of the disputed domain name <shop-zappos.com>. This disputed domain name is used in connection with a website selling footwear, clothing and assorted accessories. This domain name is still active at the time of the filing of this Complaint.
5. Parties’ Contentions A. Complainant
The Complainant’s main contentions are summarised below:
a) Identical or confusingly similar
The disputed domain name <shop-zappos.com> incorporates the Complainant’s senior marks in full and deviates from the marks only with the addition of the generic and/or descriptive term “shop”, a hyphen and with regard to the ZAPPOS mark, the inclusion of the non-distinctive element “.com”. The Complainant cites several precedents to prove that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks. In particular, when used in the context of a service identical to the Complainant’s service, the disputed domain name is clearly confusingly similar to the Complainant’s trademarks.
b) Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in the disputed domain name because the Respondent has neither used, nor has made any demonstrable preparations to use, the subject domain name or corresponding name in connection with any bona fide offering of goods or services or in a legitimate, non-commercial, fair use manner. On the contrary, the Respondent is currently using the disputed domain name to misdirect consumers attempting to access “www.zappos.com” to”www.shop-zappos.com”, which features goods and services that compete directly with the Complainant. The Respondent’s website is almost identical to the Complainant’s website including the overall “look and feel” of the Complainant’s “www.zappos.com” website as well as incorporating its “POWERED BY SERVICE” slogan. In addition, <shop-zappos.com> includes links to third party websites that feature reviews of the Complainant’s “www.zappos.com” site.
The Complainant also argues that, based on several precedents, the Respondent is not commonly known by either the “shop zappos” or “shop-zappos.com” names.
The Complainant states that it has not licensed or authorized the Respondent to use any of the cited trademarks in any manner. Thus, there is no affiliation, association or business relationship of any kind between the Complainant and the Respondent.
c) Registered and Used in Bad Faith
The Respondent has registered and is using the confusingly similar subject domain name in bad faith under paragraphs 4(b)(iii) and (iv) of the Policy.
The Respondent registered the disputed domain name on March 1, 2008, almost nine years after the Complainant had adopted and began using the ZAPPOS.COM trademark and more than five years after the Complainant adopted and began using the ZAPPOS mark. The Respondent is using the domain name in connection with its own online retail service, in direct competition with the Complainant’s service. This fact is more evidence that not only did the Respondent know of the Complainant’s rights in ZAPPOS and ZAPPOS.COM, but it purposefully took advantage of them.
Such unauthorized offering of services in connection with the domain name is evidence that the Respondent registered and is using the domain name in bad faith under paragraph 4(b)(iii) of the Policy by registering the name primarily to disrupt the Complainant’s business, which is in competition with the Respondent’s services.
Turning to the paragraph 4(b)(iv) claim, the Respondent has registered and is using the subject domain name in bad faith as he attempts to attract, for commercial gain, web users to an online service that competes directly with the Complainant’s online retail store at “www.zappos.com”.
The Respondent registered the domain name with constructive or actual knowledge of the Complainant’s rights in the ZAPPOS and ZAPPOS.COM trademarks. Due to the Complainant’s registration of the mark with the U.S. and Canadian trademark offices, constructive knowledge is conferred onto the Respondent. Moreover, because of the similarity between the content of the Respondent’s website and the business in which the Complainant engages. The Complainant cites numerous decisions of UDRP panels and domestic courts to prove that the Respondent registered the domain name with an actual knowledge of the Complainant’s rights in ZAPPOS and ZAPPOS.COM thus constitutes registration in bad faith. (See Orange Glo International, Inc. v. Jeff Blume, NAF Case No. FA 118313; Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001), etc.)
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the Proceedings
The domain name registration agreement being in Chinese, pursuant to Rules, paragraph 11, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement, i.e. the default language of the proceedings shall be Chinese. However the Complainant submitted arguments along with the Complaint as to why the proceedings should proceed in English.
Below is a summary of the Complainant’s arguments on the issue of the language of proceedings.
a. The Respondent has used an English term in the disputed domain name.
b. The Complainant cites various UDRP decisions in which proceedings were allowed to be conducted in a language other than the language of the registration agreement. In particular, the Complainant directs the Panel to the International Data Group, Inc. v. Lingjun,
WIPO Case No. D2004-0398 decision in that, similar to the case at hand, the Respondent’s website in connection with the cited domain name used the English language exclusively.
c. The Respondent in the proceedings clearly has the ability to understand and communicate in English because the Respondent’s website exclusively conducts business in English.
d. Being a USA entity, the Complainant is not in a position to conduct these proceedings in Chinese without a great deal of additional expense and delay due to the need for translation of the Complaint and the supporting Annexes.
The Complainant cites a number of UDRP decisions in which a panel has allowed proceedings to be conducted in a language other than the language of the registration Agreement if the circumstances showed that the Respondent was capable of responding to the Complainant’s language: Finter Bank Zurich v. Shumin Peng,
WIPO Case No. D2006-0432; Maplin Electronics Limited v. Lee Jeongsoon,
WIPO Case No. D2006-0011; International Data Group, Inc. v. Lingjun,
WIPO Case No. D2004-0398, etc.
Pursuant to paragraph 11 of the Rules, the Panel is granted power to determine the language of proceedings having regard to the circumstances of the case. One important consideration of this issue is the fairness to both Parties in their abilities to prepare the necessary documents and protect their own interests.
The Panel is aware that the Center is receiving an increasing number of complaints where Parties are requesting that a language other than the Registration Agreement be used and that in many such cases, the Respondent defaults in responding to these complaints. The Panel is also aware that the Center has adopted a practice of issuing a consolidated Language of Proceeding notification to the parties whenever a Complaint is received in a language other than the language of the Registration Agreement. It is illustrative in this regard to quote from the language notification issued by the Center to the parties (in both English and Chinese) in the instant proceedings:
“The Complaint has been submitted in English. Pursuant to the Rules, Paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Administrative Panel (once appointed) to determine otherwise.
According to information we have received from the concerned registrar, the language of the registration agreement for the disputed domain name is Chinese.
Instructions to the Complainant
Accordingly, the Complainant is requested to provide at least one of the following:
1) satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or
2) submit the Complaint translated into Chinese; or
[…]
3) submit a request for English to be the language of the administrative proceedings. Such request shall include arguments and supporting material (to the extent not already provided in the Complaint) as to why the proceedings should be conducted in English.
Such considerations may include for example the language used in pre-Complaint correspondence between the parties, the identity of the parties, the nationality and place of residence of the parties, and any other evidence of familiarity with the requested language. Should the Complainant already have submitted such request in its Complaint, it is requested to confirm that it has nothing further to add to it.
Please note however, that should the Complainant decide to pursue the latter option (3), neither the Center nor the Administrative Panel will be precluded from requiring, on its own or in light of submissions that may be received from the Respondent on this issue, that the proceedings take place in the language of the registration agreement and requesting that all documentation in the proceedings not in that language be translated into Chinese.
Should the Complainant fail to provide the Center by [five days from date of notification] with at least one of the above-referred three options, the Complaint will normally be deemed withdrawn, without prejudice to the submission of a new Complaint by the Complainant.
Any submission by the Complainant to the Center in reply to this notification, must be copied to the Respondent in accordance with the Rules, Paragraph 2(b) and 2(h). Such communication may be submitted electronically to the Center at domain.disputes@wipo.int (and to the extent not available electronically, in hard copy).
Instructions to the Respondent
In all cases, if the Respondent is intending to participate in these proceedings, and/or has any comments on the Complainant’s submission replying to this notification, the Respondent is requested to submit these to the Center by August 18, 2008.
Specifically in the case of the Complainant submitting (or indicating that it will submit) a request for the language of proceedings to be English, and the Respondent objects to such request, the Respondent is invited to indicate that objection for the record, and to submit any arguments/supporting materials (in light of the considerations enumerated in paragraph 3) above) as to why the proceedings should not be conducted in English.
Please note that if we do not hear from you by this date, we will proceed on the basis that you have no objection to the Complainant’s request that English be the language of proceedings.
Any submission by the Respondent to the Center that is required as a result of this notification, must be copied to the Complainant in accordance with the Rules, Paragraph 2(b) and 2(h). Such communication may be submitted electronically to the Center at domain.disputes@wipo.int (and to the extent not available electronically, in hard copy).
Yours sincerely,
[name of relevant case manager]”
In light of the Complainant’s provided submissions regarding language of proceedings, and the Respondent’s lack of objection or reply thereto, the Center determined to proceed on the following basis, to:
1) accept the Complaint as filed in English;
2) accept a Response in either Chinese or English;
3) appoint a Panel familiar with both languages mentioned above, if available.
In notifying the Complaint, the Center also noted that, “in accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Having provided both parties with an opportunity to comment, any subsequent communications received by the Center from the parties regarding the language issue will be a matter for consideration at the discretion of the Panel (on appointment). The Panel may choose to write a decision in either language, or request translation of either party’s submissions.”
The Center thereafter proceeded to issue its case-related communications to the parties in both English and Chinese.
The Panel notes in particular that although the Center has made a preliminary determination to accept the Complaint in the language filed, the ultimate determination of the language of proceedings is quite properly left by the Center to the Panel.
This Panel views this as a fair and practical procedure to overcome delays and unnecessary additional translation costs that can be put on a Complainant who has advanced a reasonable prima facie case for proceeding in a particular language being forced to translate their Complaint into the language of the Registration Agreement in circumstances when the Respondent has failed to show any active interest in the proceedings let alone respond to a specific invitation to comment on the Complainant’s request. Indeed, in the Panel’s view a Respondent’s failure to respond to these notices should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint. That is not to say, there will not be cases, where the Panel will not consider this appropriate and after balancing all the factors of the case make other determinations as to the appropriate language of the proceeding or how to proceed. However, a clear default by a Respondent who has been informed in their own language of the proceedings, and of the preliminary acceptance of the Complaint in a particular language, would certainly be a strong factor in support of a Panel subsequently determining that there should be consistency between the language of the Complaint as originally accepted and the language of proceedings as ultimately determined by the Panel.
Ultimately, a Panel’s determination of the appropriate language of proceedings necessarily balances questions of fairness to the parties with considerations of cost and expedition. As one Panel put it:
“The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.”
Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park,
WIPO Case No. D2003-0989.
The question is, therefore, how to deal with the procedural time difference between the receipt by a Provider of what prima facie appears to be a reasonable and supported request for the language of proceeding to be the language of the Complaint, and the appointment of a Panel to determine that question. The question becomes particularly acute in circumstances where the Respondent itself apparently has no interest in the proceedings. This is because, where a translation of a Complaint is requested prior to the appointment of Panel, considerations of cost and expedition tend to be rendered moot by the time the Panel is appointed to determine the issue.
To this Panel it therefore appears as a reasonable and practical solution for the Center to have in place a practice in which it conducts a preliminary assessment of whether, having regard both to the Complainant’s request and the Respondent’s reaction thereto (if any), there appears to be a prima facie reasonable basis for proceeding in a language other than the language of the Registration Agreement, which would warrant consideration by a Panel of the appropriate language of proceedings. If having sought comments from both parties the answer on balance to that question is yes, it makes sense to this Panel for the Center to proceed as described above. That is to say, to accept the Complaint in the language as filed, to accept a Response in either language, and to put the matter through for determination by a Panel familiar (wherever possible) with both languages. Ultimately, the determination of the language of the proceedings remains with the Panel. As noted above, a default by the Respondent after having been notified of the proceedings and being requested to comment or object to the language request; should be a strong factor for the Panel to proceed in line with the Center’s decision on language.
In this case, the Panel notes that the disputed domain resolves to a website is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English. If it is not, there were ample opportunities for the Respondent to raise his objections on the choice of language, but the Respondent did not file any response by the applicable deadline to object the Complainant’s request for adopting English as the language of proceedings. It was expressly stated in the notification of language of the proceedings transmitted from the Center that if the Respondent did not file any response by the due date, the proceedings would go forward on the basis that the Respondent has no objection to the Complainant’s request that English be the language of the proceedings.
The Panel has reviewed the decisions of UDRP panels cited in the Complaint. Numerous decisions have found that where the Respondent can clearly understand the language of the Complaint, and the Complainant would be disadvantaged by being forced to translate, the language of proceedings can remain the language of the Complaint, even though it is different to the language of the Registration Agreement.
As noted, the Respondent is clearly competent in English which is shown by the fact that the website “www.shop-zappos.com” only operates in the English language. Considering both Parties have been given a fair opportunity to present their case and there can be no unfairness to the Respondent given its competence in English, the Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English.
6.2 Substantive Elements of the Policy
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(i) The domain name is identical or confusingly similar to the Complainant’s trademark or service mark; 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.
A. Identical or Confusingly Similar
The Complainant submitted trademark certificates for trademarks ZAPPOS and Zappos.Com registered in the United States of America and Canada primarily for online retail store services featuring shoes, socks, and other clothing and accessories. The Panel finds that the Complainant has trademark rights in the above marks.
By comparing the disputed domain name and the above trademarks, the Panel notes that the disputed domain name incorporates the Complainant’s trademarks in full and deviates from the marks only with the addition of a generic word “shop” and a hyphen. The Complainant cited numerous decisions of UDRP panels to prove that the addition of a generic word and the use of a hyphen do not distinguish a domain name from another party’s trademark. The Panel finds that considering both Parties offering similar online retail products, the additional word “shop” does not negate the confusing similarity between the domain name and the Complainant’s trademarks. On the contrary, it does suggest that it is related to the Complainant’s website “www.zappos.com”, which is likely to cause consumers’ confusion.
Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel notes that the “www.shop-zappos.com” website incorporates the Complainant’s Slogan as well as registered trademark POWERED BY SERVICE and has the similar overall “look and feel” of the Complainant’s website offering online retail store service. Therefore, the additional use of the generic word “shop” to “zappos” and the high similarity between both Parties’ websites will suggest that the Respondent’s website is the official “www.zappos.com” website, or at least an affiliated or associated or business, which will cause consumer’s confusion.
Therefore, pursuant to Policy, the Panel has not found any evidence to suggest that the Respondent has any legitimate interest in the domain name.
Accordingly, the Panel finds that the Complaint has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The following facts are clear from the evidence filed and were not disputed by the Respondent:
1. The disputed domain name was registered well after the first commercial use and registration of Complainant’s marks ZAPPOS and ZAPPOS.COM;
2. The Respondent’s website contains links to third party websites that features reviews of the Complainant’s “www.zappos.com” site;
3. the Respondent offers identical or similar services in the same channel of trade, namely online retail store for clothing and accessories; and
4. the Respondent’s website has the highly similar “look and feel” to that of the Complainant’s.
On the basis of the above facts, the Panel finds that the Respondent must have known of the Complainant before registering the domain name and is continuing to use the domain name to unfairly attract business. Accordingly, the Panel finds that the Respondent registered and is using the domain name in bad faith.
Accordingly, the Panel concludes that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <shop-zappos.com> be transferred to the Complainant.
Douglas Clark
Sole Panelist
Dated: October 15, 2008
