zoomies.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Zumiez Inc. v. Richard Jones

Case No. D2007-0024

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 Richard Jones, Toulouse, France.

2. The Domain Name and Registrar

The disputed domain name <zoomies.com> is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January  8, 2007. On January 10, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same date eNom 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 that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February  1, 2007. 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 February  6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2007.

The Center appointed David Perkins as the sole panelist in this matter on March 9, 2007. 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

4.A. The Complainant

The Complainant’s Business

4.A.1 The Complainant was founded in Seattle in 1978. Its principal place of business is now Everett, Washington State.

4.A.2 The Complainant sells skateboarding clothing, skateboards, skateboard accessories and other products including snowboards and clothing worldwide.

4.A.3 The Complainant has 236 retail outlets all bearing the ZUMIEZ signage and that trademark is also used on much of its merchandise.

4.A.4 In the fiscal year 2005, revenues from the goods and services offered by the Complainant in association with the ZUMIEZ mark exceeded US$202 million.

The Complainant’s ZUMIEZ trademark

4.A.5 The Complainant is the proprietor of US Trademark Registration No. 1,779,375 ZUMIEZ in Class 25 for clothing (with first use in commerce dating from August 1992) and Class 42 for retail clothing store services (with first use in commerce dating from October 1991).

4.A.6 In March 2000 the Complainant registered the domain name <zumiez.com>, which receives more than 400,000 visitors per month.

4.B The Respondent

4.B.1 In the absence of a Response, all that is known about the Respondent is that he is the registrant of the domain name in issue <zoomies.com>, which was registered on June 19, 2001.

4.B.2 It appears from the Complaint that the domain name in issue resolves to a website which advertise precisely the same range of goods as those sold by the Complainant, namely skateboards and related equipment, skateboarding clothing, skateboarding footwear and accessories, snowboards and related equipment, snowboarding clothing and snowboarding footwear and accessories. The Respondent’s website links to suppliers of these goods, who are direct competitors of the Complainant. The Respondent’s website also links to pornographic sites.

5. Parties’ Contentions

5.A. Complainant

5.A.1 Identical or Confusingly Similar

5.A.1.1 The Complainant’s case is that its ZUMIEZ trademark is phonetically identical to the Respondent’s “zoomies” domain name.

5.A.1.2 Because the domain name in issue is phonetically identical to its ZUMIEZ trademark, the Complainant says that the domain name is confusingly similar to that mark. It is merely an alternative spelling and Internet users searching for the Complainant’s website using the phonetic spelling would be likely to be confused.

5.A.1.3 In support of that proposition, the Complainant cites a number of decisions under the Policy where differently spelt but phonetically identical or similar domain names have been held to be confusingly similar to the Complainant’s trademark.

5.A.1.4 Complainant also says that because the domain name in issue resolves to a website selling competing goods to those of the Complainant sold under or by reference to its ZUMIEZ trademark, likelihood of confusion is enhanced.

5.A.2 Rights or Legitimate Interests in respect of the domain name

5.A.2.1 The Complainant says that it has neither licensed nor otherwise authorized the Respondent to use the ZUMIEZ trademark or its phonetic equivalent.

5.A.2.2 Because the Respondent must have known of the ZUMIEZ brand and mark before using the domain name for a website selling products competing with the Complainant’s ZUMIEZ products, the Complainant says that the Respondent’s use of the domain in issue has not been bona fide.

5.A.2.3 The Complainant cites in this respect National Association of Professional Baseball Leagues, Inc d/b/a Minor League Baseball .v. John Zuccarini,WIPO Case No. D2002-1011, where the domain name in issue was the misspelling <minorleaugebaseball.com>. That domain name was used to redirect traffic to a pornographic website. In a contested Complaint, the three member Panel finding no rights or legitimate interests in the domain name in issue said.

“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site. Nor does it constitute a legitimate non-commercial or fair use of the domain name without intent for commercial gain misleadingly to divert consumers.”

5.A.2.4 In the absence of a Response, there is no evidence that the Respondent is commonly known by the domain name in issue.

5.A.2.5 As to making a legitimate non-commercial or fair use of the domain name, the same use that does not amount to bona fide use applies. This is the redirecting of consumers to other websites offering goods competing with those sold by the Complainant under or by reference to the ZUMIEZ trademark. The Complainant again relies on WIPO Case No. D2002-1011 cited above.

5.A.3 Registration and Use in Bad Faith

5.A.3.1 Here the Complainant’s case is that by using the domain name in issue, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its “www.zoomies.com” website, by creating a likelihood of confusion with Complainant’s ZUMIEZ mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

5.A.3.2 As evidence, the Complainant points to the fact that ZUMIEZ and “zoomies” are phonetically identical, which in itself is indicative of bad faith registration. The Complainant refers again to WIPO Case Nos. D2004-0123; D2000-0548 and D2000-1013 noted in paragraph 5.A.1.3 above. The Complainant also cites Staples, Inc, Staples the Office Superstore, Inc., Staples Contract & Commercial, Inc. v. Staple.com, WIPO Case No. D2003-1028, where it was held by a three member Panel that using <staple.com> to attract Internet users to the Respondent’s website by creating a likelihood of confusion with Complainants’ STAPLES trademark and directing traffic away from the Complainants’ site for commercial gain fell fairly and squarely within the circumstances contemplated in paragraph 4(b)(iv) of the Policy. The facts of that case were that the domain name in issue linked to the website of a member of the Complainant’s Affiliate Program [Smart Biz] and thence to the Complainant’s own website. Where a purchaser from that website was directed to it through the Affiliate’s website the Affiliate was credited with Commission. The Panel’s Decision read (in material part):

“Respondent’s use of the disputed domain name since about June 2003 to redirect traffic to Complainant’s website <staples.com> in order to siphon profits to Smart Biz was clearly done with knowledge of Complainants’ rights in the mark STAPLES. It involved intercepting traffic intended for Complainants’ website but mistyped by omitting the final “s”. Respondent stood to gain from this siphoning of profits, through its contract with Smart Biz, which was of value to Respondent only so long as Smart Biz remained an Affiliate of Complainants.

“Such use falls squarely within the circumstances contemplated by the Policy, paragraph 4(c)(iv), being use of the disputed domain name intentionally to attract for commercial gain, Internauts to Respondent’s on-line location by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s on-line location.”

5.A.3.3 This bad faith use is compounded, says the Complainant, where the website to which the Internet user is redirected offers goods competing directly with those of the Complainant trademark owner. In Graco Children’s Products Inc.v. Domains Ventures,WIPO Case No. D2006-0598 the domain name in issue was a misspelling of the GRACO trademark, namely <graycobaby.com>. This was held by the Panel to be “… an implied act of fraud (unfair competition), which is clear evidence of bad faith”. Here, the facts are precisely the same. The <zoomies.com> domain name directs consumers to the “zoomies” website, which redirects the consumer to the website of the trademark owner’s competitors, for example “www.pacsun.com” which is described as “zumiez biggest competitor”, as well as the websites of other competitors, including “www.skateamerica.com”; “www.the-house.com”; “www.360skate.com”; “www.skateboarding.com”; “www.worldindustries.com”; “www.actionvillage.com” and “www.blackholeboards.com”. The Complaint exhibits examples of the above competitor websites.

5.A.3.4 To compound this bad faith use still more, the domain name in issue also links to several pornographic websites. In this respect, the Complainant refers against to WIPO Case No. D2002-1011, noted in paragraph 5.A.2.3.

5.B Respondent

No response has been filed by the Respondent.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

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

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

Identical or Confusingly Similar

6.4 The Complainant is the proprietor of the registered trademark ZUMIEZ.

6.5 The Complainant asserts that the ZUMIEZ trademark is pronounced “zoomies” and there is no evidence to the contrary.

6.6 The domain name in issue is that phonetic equivalent, namely <zoomies.com>.

6.7 Where a domain name is the phonetic equivalent of the Complainant’s trademark, confusing similarity is established. The Complaint cited numerous cases where panelists have made findings of confusing similarity in such cases; see, paragraph 5.A.1.3 above. This Panel considers those cases to have been correctly decided.

6.8 Accordingly, the Complaint meets this requirement of the Policy.

Rights or Legitimate Interests

6.9 The Complainant has convincingly demonstrated that the Respondent cannot establish any one of the circumstance set out in paragraph 4(c) of the Policy.

6.10 Cases under the Policy hold that using a domain name which is similar to the Complainant’s trademark to direct consumers to a website, which then redirects onto sites offering products of the trademark owner’s competitors is not a bona fide use of the domain name. See, for example, WIPO Case No. D2002-1011, noted in paragraph 5.A.2.3. and 5.A.2.5.

6.11 The Panel agrees. Further, the Complainant has not licensed or otherwise authorized the Respondent to use the ZUMIEZ trademark or its phonetic equivalent. Accordingly, the Complaint also meets this second requirement of the Policy.

Registered and Used in Bad Faith

6.12 By the time that the domain name in issue was registered in June 2001, the Complainant had been trading for some 23 years, had been the proprietor of the registered US trademark ZUMIEZ for some 8 years with first use in commerce predating that registration, and had established its own “www.zumiez.com” website some 15 months previously. Furthermore, it cannot be coincidental that the websites to which the domain name in issue redirects offer competitors’ products. The Panel finds the case on registration in bad faith proved.

6.13 As to use in bad faith, the Complainant relies on establishing circumstances falling within paragraph 4(b)(iv) of the Policy. Where the Complainant has – as in this case – established that the Respondent cannot show rights or legitimate interests in the domain name in issue, it may typically follow that use of that domain name will be in bad faith. This case is no exception.

6.14 The cases cited by the Complainant, WIPO Case Nos. D2003-1028 and D2006-0589 [respectively, <staple.com> and <grayco.com> referred to in paragraphs 5.A.3.2 and 5.A.3.3 above], are directly in point. Use of the <zoomies.com> domain name is clearly intended to attract would-be purchasers of ZUMIEZ products to the websites of competitors by creating a likelihood of confusion with the ZUMIEZ (pronounced, “zoomies”) trademark as to the source, sponsorship, affiliation or endorsement of the “www.zoomies.com” website.

6.15 In the circumstances, the Panel finds that the Complaint also meets the third requirement 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 <zoomies.com> be transferred to the Complainant.

David Perkins
Sole Panelist

Dated: March 23, 2007