WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cepia, LLC v. Marina Blinova
Case No. D2011-1174
1. The Parties
Complainant is Cepia, LLC of St. Louis, Missouri, United States of America, represented by Stinson Morrison Hecker LLP, United States of America.
Respondent is Marina Blinova of Miass, Chelyabinsk, Russian Federation.
2. The Domain Names and Registrar
The disputed domain names <zhuzhupetsfair.com> and <zhuzhupuppy.com> are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2011. On July 12, 2011, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On July 14, 2011, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 5, 2011.
The Center appointed Roberto Bianchi as the sole panelist in this matter on August 9, 2011. 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
According to the copies of registration certificates provided with the Complaint, Complainant owns the following United States federal trademark registrations:
ZHUZHU PETS, Reg. No. 3,808,405, Reg. Date June 22, 2010, Filing Date July 21, 2009, covering the following goods of International Class 28: battery operated action toys; electronic action toys; fantasy character toys; modeled plastic toy figurines; molded toy figures; non-electronic toy vehicles; plastic character toys; plush toys; stuffed and plush toys; stuffed toy animals; stuffed toys; talking electronic press-down toy; talking toys; toy action figures; toy action figures and accessories therefor; toy building structures and toy vehicle tracks; toy buildings and accessories therefor; toy vehicle track sets and roadways and accessories therefor; toy vehicles. First used in commerce: August of 2009.
ZHUZHU, Reg. No. 3,963,252, Reg. Date May 17, 2011, Filing Date January 15, 2010, covering the following goods of International Class 28: battery operated action toys; electronic action toys; fantasy character toys; modeled plastic toy figurines; molded toy figures; non-electronic toy vehicles; plastic character toys; plush toys; remote control toys, namely, motorized plush animals; stuffed and plush toys; stuffed toy animals; stuffed toys; talking electronic press-down toy; talking toys; toy action figures; toy action figures and accessories therefor; toy building structures and toy vehicle tracks; toy buildings and accessories therefor; toy vehicle track sets and roadways and accessories therefor; toy vehicles; toy, namely, battery-powered computer game with led screen which features animation and sound effects; paper party. First used in commerce: August of 2009.
ZHUZHU PUPPIES, Reg. No. 3,963,633, Reg. Date May 17, 2011, Filing Date July 9, 2010, covering the following goods of International Class 28: battery operated action toys and accessories therefor; electronic action toys and accessories therefor; fantasy character toys and accessories therefor; modeled plastic toy figurines and objects and accessories therefor; molded toy figures and objects and accessories therefor; non-electronic toy vehicles; plastic character toys and accessories therefor; plush toys and accessories therefor; motorized plush toys and accessories therefor; motorized plush animals and accessories therefor; stuffed and plush toys and accessories therefor; stuffed toys and accessories therefor; stuffed animals and accessories therefor; talking electronic pressdown toys and accessories therefor; talking toys and accessories therefor; toy action figures and accessories therefor; toy building structures; toy play sets; toy vehicle tracks; toy vehicles. First used in commerce: March 14, 2011.
Complainant also owns several domain names containing the terms “Zhu” or “ZhuZhu” including <zhuzhupets.com>, <zhuzhupetsonline.com>, <myzhuzhupets.com>, <zhuzhupetspuppies.com> and <zhuniverse.com>.
The disputed domain name <zhuzhupetsfair.com> was registered on December 14, 2009.
The disputed domain name <zhuzhupuppy.com> was registered on December 8, 2010.
A Panel visit to the “www.zhuzhupetsfair.com” website conducted on August 16, 2011 showed that the Panel’s browser was being re-directed to the “www.hottoysreview.com” website, where anonymous reviews or comments on the newest “pet toys” are published and where pet toys from Complainant and other sources, including competitors of Complainant, are being offered for sale. The Panel visit to the “www.zhuzhupuppy.com” website conducted on the same day showed a page titled “zhuzhupuppy.com” containing the following sub-titles or topics: “Zhu Zhu Pet”, “Pet Toys”, “Zhu Zhu Hamster”, “Pet Accessories”, “Hamster Toys”, “Toys For Dog”, “Pet Carriers”, “Dog Chew Toys”, “Pet Treats”, “Treat Canisters” and “Pet Lover Gifts”.
5. Parties’ Contentions
A. Complainant
In its Complaint, Complainant contends as follows:
The disputed domain names are confusingly similar to Complainant’s trademarks because they incorporate in its entirety Complainant’s registered ZHUZHU trademark. In particular, the <zhuzhupetsfair.com> domain name incorporates in its entirety Complainant’s ZHUZHU PETS trademark, while the <zhuzhupuppy.com> domain name incorporates Complainant’s ZHUZHU PUPPIES mark.
Respondent is not affiliated with Complainant. Respondent makes no use of the disputed domain names in connection with a bona fide offering of goods and services. Instead, Respondent uses the disputed domain names to direct traffic to a variety of different children’s product sales pages on the third party website “www.amazon.com”. Respondent does not have a license agreement with Complainant to market or distribute products using the trademarks. Respondent’s use of the disputed domain names to identify its business on the Internet causes confusion by implying an affiliation between Respondent and Complainant. Consumers are likely misled into believing that there is a relationship between Complainant and Respondent.
Respondent has no relationship with Complainant. Respondent cannot claim reseller status to establish a legitimate interest. Respondent does not directly offer Complainant’s products, and refers users to the “www.amazon.com” website. Respondent does not use the “www.zhuzhupetsfair.com” site to only sell the trademarked goods. In fact, Respondent’s site attempts to sell a variety of different competing products including children’s costumes, character toys, stuffed animals and character toy accessories, including competing branded toys such as Lalaloopsy, Furry Frenzies, Sing-a-majig, Snuggimals, Piggyppies, Squinkies, Wowies, and Zooble toys. The Furry Frenzies toys by competitor Hasbro are confusingly similar to Zhuzhu Pets’. In order to establish a bona fide offering of goods and services under paragraph 4(c)(i) of the Policy, Respondent must show that the site is used only to sell the trademarked goods as opposed to a variety of different competing goods.
Although the “www.zhuzhupetsfair.com” website does not sell goods directly, it does purport to sell goods through a link to the “www.amazon.com” website.
Respondent has not been commonly known by the disputed domain names. Respondent also cannot demonstrate a legitimate noncommercial use. Respondent’s use of the disputed domain names is clearly for intended commercial gain by inducing consumers to purchase competing products. In fact, while the ZHUZHU, ZHUZHU PETS, ZHUZHU PUPPIES and ZHUZHU BABIES trademarks are frequently displayed on the sites, the menu bar of the “www.zhuzhupetsfair.com” site lists only Furry Frenzies, Snuggimals and Wowee Alive Animals.
While the “www.zhuzhupuppy.com” website focuses only on ZhuZhu Puppies products, Respondent does not have a legitimate interest as a reseller with respect to that site. Respondent is not an authorized reseller of ZhuZhu Puppies products. Further, the “www.zhuzhupuppy.com” website uses a form of the ZHUZHU PUPPIES mark without modification. Respondent’s rampant use of unauthorized logos and product photos combined with a lack of any disclaimer on the home page clearly cause confusion as to source and lack of legitimate interest.
Respondent intentionally attempted to attract for commercial gain, Internet users to Respondent’s websites or other online location by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites, or of products or services on Respondent’s websites. The intent to attract users is clearly demonstrated in the various references to the ZHUZHU PETS marks, including Complainant’s ZHUZHU PUPPIES, ZHUZHU, and ZHUZHU BABIES marks and unauthorized copies of copyrighted advertising and packaging material on the top banner of the “www.zhuzhupetsafair.com” website.
With respect to the “www.zhuzhupetsafair.com” website, this intent combined with the multiple competitor sales clearly illustrates bad faith intent to bait and switch Complainant's customers into purchasing competitor products. With respect to the “www.zhuzhupuppy.com” website, the intent to attract users is clearly demonstrated in the various references to the ZHUZHU PUPPIES mark and the failure to disclose the relationship between the website operator and Complainant, because there is no reseller relationship between Complainant and Respondent. Further, because the “www.zhuzhupuppy.com” website is operated by the same person who also operates “www.zhuzhupetsfair.com”, and is a target link from the ZhuZhu Puppies page of the “www.zhuzhupetsfair.com” website, it is clear that Respondent intended to attract users for commercial gain.
A likelihood of consumer confusion exists between the legitimate owner of Complainant's trademarks and Respondent, establishing bad faith.
B. Respondent
Respondent did not reply to Complainant’s contentions, and is in default.
6. Discussion and Findings
Under Policy, paragraph 4(a), a complainant must make out its case that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
By providing copies of registration certificates, Complainant has shown that it has rights in the ZHUZHU, ZHUZHU PETS and ZHUZHU PUPPIES trademarks.
The disputed domain names incorporate Complainant’s ZHUZHU mark in its entirety. The <zhuzhupuppy.com> domain name incorporates a slightly modified version of Complainant’s ZHUZHU PUPPIES mark, where the plural has been replaced by the singular form “puppy”. The <zhuzhupetsfair.com> domain name incorporates Complainant’s ZHUZHU PETS mark entirely, adding the common or generic term “fair”. It is well established that adding generic or common terms in a domain name incorporating a mark is inapt to distinguish the domain name from such mark.
The Panel concludes that the disputed domain names are confusingly similar to Complainant’s ZHUZHU, ZHUZHU PETS and ZHUZHU PUPPIES marks.
B. Rights or Legitimate Interests
Complainant contends that Respondent is not affiliated with Complainant and that Respondent does not use the disputed domain names in connection with a bona fide offering of goods and services, but to direct traffic to a variety of different children’s product sales pages on the third party website “www.amazon.com”. Complainant adds that Respondent does not have a license agreement with Complainant to market or distribute products using Complainant’s trademarks, that Respondent’s use of the disputed domain names to identify its business on the Internet causes confusion by implying an affiliation between Respondent and Complainant and that consumers are likely misled into believing that there is a relationship between Complainant and Respondent.
Also, says Complainant, Respondent cannot claim reseller status to establish a legitimate interest. Respondent does not directly offer Complainant’s products. Rather, Respondent refers users to the “www.amazon.com” website. Additionally, Respondent does not use the “www.zhuzhupetsfair.com” website to only sell the trademarked goods, but instead attempts to sell a variety of different competing products. As to the “www.zhuzhupetsfair.com” website, Respondent does not sell goods directly, but it does purport to sell goods through a link to the “www.amazon.com” website.
Complainant adds that Respondent has not been commonly known by the disputed domain names, and cannot demonstrate a legitimate noncommercial use of them, since Respondent's use of the disputed domain names is for intended commercial gain by inducing consumers to purchase competing products. Finally, although the “www.zhuzhupuppy.com” website focuses only on ZhuZhu Puppies products, Respondent is not an authorized reseller of ZhuZhu Puppies products.
The Panel finds that these contentions and supporting evidence provided with the Complaint, considered together, amount to a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names. It is the consensus view of UDRP panels that once a complainant makes out a prima facie case, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Since Respondent is in default and has not submitted any comments or evidence in its own favor, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
According to the USPTO database visited by the Panel, the application for the ZHUZHU PETS mark was filed on July 21, 2009 and the mark was first used in August, 2009. The disputed domain name <zhuzhupetsfair.com> was registered on December 14, 2009 and the <zhuzhupuppy.com> domain name was registered on December 8, 2010. Thus, the application and first use of Complainant’s ZHUZHU PETS mark precede by several months the registration of one of the disputed domain names, and by more than one year the registration of the other disputed domain name.
Given that Respondent failed to present the Panel with any explanation for having registered two domain names clearly incorporating Complainant’s ZHUZHU-marks and considering the use made by Respondent of the websites at the disputed domain names, the Panel finds that Respondent in all likelihood was well aware of, and aimed precisely at Complainant’s ZHUZHU-marks and goods when it registered the disputed domain names, i.e. the registration was in bad faith.
In its visit of August 16, 2011 to the websites at the disputed domain names the Panel confirmed that Respondent is re-directing the “www.zhuzhupetsfair.com” website to the “www.hottoysreview.com” website, which offers not only Complainant’s ZHUZHU-trademarked goods but also competing products such as Hasbro’s “Littlest Pet Shop Walkables”. Even if Respondent does not sell the goods from Complainant and other sources directly, it does offer them through links to the “www.amazon.com” website, from which it presumably receives monies by way of referral fees, i.e. for commercial gain.1
A visit conducted on the same day by the Panel to the website at the <zhuzhupuppy.com> domain name showed that Internet users presumably looking for Complainant’s ZHUZHU-marks and products are being offered links or topics such as “Zhu Zhu Pet”, “Pet Toys”, “Zhu Zhu Hamster”, “Pet Accessories”, “Hamster Toys”, “Toys For Dog”, “Pet Carriers”, “Dog Chew Toys”, “Pet Treats”, “Treat Canisters” and “Pet Lover Gifts”, some of which clearly refer to products of Complainant. The fact that these topics presently do not resolve into any active website does not rule out a future activation by Respondent, either of these topics or of the whole website, for instance by re-directing the “www.zhuzhupuppy.com” website to the “www.hottoysreview.com” website, and inserting links to Amazon.com or other reseller, as already done by Respondent on its “www.zhuzhupetsfair.com” website.
Considering all these circumstances, and having in mind that Respondent failed to submit any explanation for its use of the disputed domain names, the Panel agrees with Complainant that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with Complainant's ZHUZHU-marks as to the source, sponsorship, affiliation, or endorsement of its websites or locations or of a product or service on its websites or locations. This is a circumstance of bad faith registration and use pursuant to Policy, paragraph 4(b)(iv).
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 names <zhuzhupetsfair.com> and <zhuzhupuppy.com> be transferred to Complainant.
Roberto A. Bianchi
Sole Panelist
Dated: August 23, 2011
1 In a visit to the “www.amazon.com” website conducted on August 19, 2011, the Panel confirmed that under the “Amazon Associates program” website owners and bloggers can advertise products on their web pages and insert links to Amazon.com. If Internet users follow those links and happen to buy online, associated website owners and bloggers earn up to 15 % of those sales.
