The Complainant is Zacks Investment Research, Inc., United States of America (“United States”), represented by Latimer LeVay Fyock LLC, United States.
The Respondent is Parker Mitchell, Regal Consulting, LLC, United States.
The disputed domain name <zackstrading.com> (the “Domain Name”) is registered with FastDomain, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2020. On February 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 21, 2020, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2020. The Center received two email communications from the Respondent on February 25, 2020. The Center notified the Parties that it would proceed with appointment on March 17, 2020. The Center received an email communication from a third party on March 17, 2020.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 18, 2020. 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 Complainant is a corporation headquartered in Chicago, Illinois, United States and established under Illinois law. The Complainant (named after its founder, Len Zacks) has been providing independent investment research services to brokerages and other clients since 1978. It also manages over USD 5 billion in client assets through its subsidiary Zacks Investment Management. The Complainant uses domain names reflecting its ZACKS marks such as <zacks.com> (since 1994), <zacksim.com> (since 2003), <zackstrade.com> (since 2008), and <zackspcg.com> (since 2017).
The Complainant holds a number of United States trademark registrations comprised of the name “Zacks”, alone or combined with other terms:
ZACKS (standard characters)
January 15, 2019
ZACKS ULTIMATE (standard characters)
February 26, 2019
ZACKS INVESTOR COLLECTION (standard characters)
February 26, 2019
ZACKS. OUR RESEARCH. YOUR SUCCESS. (standard characters)
June 26, 2018
ZACKS RANK (standard characters)
January 29, 2019
ZACKS CONFIDENTIAL (standard characters)
February 26, 2019
According to the online database of the United States Patent and Trademark Office (“USPTO”), the Complainant applied for registration of the ZACKS mark alone on June 8, 2017, claiming first use in commerce in January 2000.
The Registrar reports that the Domain Name was registered on July 13, 2018, in the name of the Respondent Parker Mitchell, listing the organization as Regal Consulting, LLC, and showing a postal address in Grandville, Michigan, United States. No Response was submitted in this proceeding, and the Panel notes that Regal Consulting, LLC (“Regal Consulting”) is not listed as a registered business entity in the online database operated by the Michigan Department of Licensing and Regulatory Affairs. Thus, it is not clear that any such legal entity exists. There is no further information about Mr. Mitchell or Regal Consulting on the website associated with the Domain Name (the “Respondent’s website”). Accordingly, the Panel will treat Regal Consulting as an alter ego for Mr. Mitchell, and the two will be referred to hereafter collectively as the “Respondent”.
The Respondent’s website is headed “Zack’s Trading” and advertises information on financing and accessing capital markets, forming Nevada corporations, registered agent services, corporate governance, business consulting, and trading stocks. The website is incomplete; there is no content on the pages labelled “Watch List”, “Lessons and Homework”, “About Us”, and “FAQ”. However, the site is set to accept monthly paid subscriptions at different price levels for beginners, intermediate users, and advanced users, “[t]o help motivated individuals achieve their trading goals!”. A telephone number and a Gmail email address are provided to subscribe or contact the site operator, who is not identified on the website. The YouTube link on the website does not link to any content, and the Twitter link is to a Las Vegas sports betting account.
The Complaint attaches a cease-and-desist email sent by its counsel in January 2020 to the email address given in the contact details on the Respondent’s website. The reply a few days later came from a Mr. Dias, which reads in part as follows:
“Well, since I didn’t pay for the site and it’s not in my name and I don’t use it how can I be held accountable for it? I can’t even access it if I wanted to.
Someone I was working with paid someone to put the website up, I have his phone number but that is all.
Yes, that is my YouTube. If it is infringing, I suppose I am lucky it never gained any traction!”
The same email address is still the contact address listed on the Respondent’s website at the time of this Decision. Contacted by the Center after this proceeding commenced, Mr. Dias replied as follows:
“I have 0 ownership of Zackstrading.com. Why am I included in this email?”
The Respondent, as detailed below, ultimately communicated to the Center, only to express its disdain for the Complainant and its willingness to sell the Domain Name.
The Complainant contends that the Domain Name is confusingly similar to its ZACKS marks, for which the Respondent has no permission or other rights or legitimate interests to use in the Domain Name.
The Complainant asserts that the Domain Name was registered “long after Complainant’s adoption and registration of its ZACKS Trademarks and long after Complainant’s registration and use of its ZACKS domain names”. The Complainant argues that the Domain Name is used in bad faith to mislead visitors for commercial gain, falsely suggesting an association with the Complainant, while competing in the same field of providing information about trading and investments.
The Respondent did not submit a substantive response to the Complainant’s arguments but suggested in two profanity-laced emails to the Center that the Complainant should have purchased the Domain Name earlier or could do so now from the Respondent:
“If they would like to buy the domain from me they can buy it … otherwise they can …!”
“Maybe you … should of bought the domain if it was apart of your copy rights, oh wait domains don’t work like that do they... whoever bought it owns it!”
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “[a] Panel shall 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”.
The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. For this purpose, the timing of trademark registration not relevant, although that may be an issue for the second and third elements of the Complaint.
“Zacks” is the distinctive element of the Domain Name, as it is not a dictionary word, and it is identical to the Complainant’s ZACKS mark. The Domain Name incorporates this mark in its entirety and adds the term “trading”, which does not avoid the confusing similarity. The generic Top-Level Domain (“gTLD”) “.com” “is viewed as a standard registration requirement” and as such is disregarded under the first element of the Complaint. Id., section 1.11.2.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s ZACKS marks and concludes that the first element of the Complaint has been established.
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has established its trademark rights, the Respondent’s lack of permissive use, and the Respondent’s use of a confusingly similar Domain Name to advertise competing services. The Respondent has not come forward with a demonstration of rights or legitimate interests, and these are not evident from a perusal of its website.
The Panel concludes, therefore, that the Complainant has established the second element of the Complaint.
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following cited by the Complainant (in which “you” refers to the registrant of the domain name):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Complainant overstates its case by arguing that the Respondent registered the Domain Name “long after Complainant’s adoption and registration of its ZACKS Trademarks and long after Complainant’s registration and use of its ZACKS domain names”. Only one of the Complainant’s six trademarks was actually registered before the Domain Name registration, and that was less than a month prior. But it is true that the Complainant was using ZACKS marks before then, and very visibly online, including domain names quite similar to the Domain Name that the Respondent registered (prominently <zacks.com> and <zackstrade.com>). As the Respondent used the Domain Name for a website advertising information about capital investment and stock trading, in the same field as the Complainant’s multi-billion dollar business, it is probable that the Respondent was aware of the Complainant and chose the Domain Name for its value in attracting Internet users familiar with the Complainant’s distinctive mark.
The Panel finds support for this inference of bad faith in the facts that the Respondent has obscured its identity on the website, has evidently not provided accurate contact information, and has emphatically declined to address the Complainant’s trademark claims. The Respondent expresses the belief that “whoever bought it owns it” regardless of “copy rights” and demonstrates a casual disregard of the trademark rights in which others have invested.
The Panel finds bad faith within the meaning of the Policy and concludes that the Complainant has established the third element of the Complaint.
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 <zackstrading.com> be transferred to the Complainant.
W. Scott Blackmer
Date: March 19, 2020
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