In the recent decision of Ricardo Zema Participacoes Ltda. v. John Laxton, WIPO Case No. D2008-1297, October 23, 2008, a single member Panel was faced with a dispute over the domain www.zema.com. Complainant is the holder of approximately seven (7) trademarks, all registered in Brazil, which encompass the word ZEMA, the earliest of which has a registration date of December 24, 1991. Complainant also owns several domains including www.grupozema.com.br, www.zemaciadepetroleo.com.br, www.consorciozema.com.br, www.autopecaszema.com.br, www.zmaissuper.com.br, www.eletrozema.com.br, www.zemafashion.com.br. Complainant contends that Respondent uses the web site for a parking service and also offers users an opportunity to place a bid for the domain based upon a link at the bottom of the website.
Respondent claims that in December 1998 it registered the disputed domains, along with www.zema.net and in February 2003 registered www.zemas.com and www.zemaz.com in anticipation of opening restaurants. Respondent further explains that it did not pursue that business plan after another similar sounding restaurant opened in Respondent’s immediate geographical area. Interestingly, the Respondent claims makes target arguments about the evidence presented by Complainant.
That Complainant has submitted no evidence whatsoever that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant, as the alleged owner of the trademark or service mark, or that the disputed domain name was registered in order to prevent the Complainant from reflecting the mark in a corresponding domain, or that the disputed domain name was registered by Respondent primarily to disrupt Complainant’s business…. That there is no evidence that Respondent was somehow aware of Complainant’s alleged Brazilian trademark registrations at the time Respondent registered the disputed domain name (1998). That Respondent has never heard of Complainant or any of its purported trademarks and there is no evidence that the user’s of the parked domain have or were likely to have mistyped Complainant’s name. That there is no evidence that Respondent has attempted to sell the domain name. That by Complainant’s own admission, there has been no offer to sell the domain name to Complainant or any other party.
In reviewing the evidence and arguments presented, the Panel considered the three factors enunciated under the UDRP/ICANN policy paragraph 4(a). First, whether the disputed domain was identical or confusingly similar, the Panel explained:
Respondent argues that there are other ZEMA trademarks registered by third parties in the US, and alleges that based on this fact Complainant’s rights are not exclusive. The Policy does not require the non existence of other trademark registrations held by parties other than the Complainant in other jurisdictions. The Policy simply requires that Complainant has rights to a trademark, and that said trademark be identical or confusingly similar to the contested domain name.
As a result, the Panel found in favor of Complainant on this factor. Moving onto the second factor, whether or not Respondent has any rights or legitimate interests in the domain, the Panel determined there was no evidence submitted by Respondent regarding preparations for a restaurant. Instead, the Panel relied upon evidence submitted by Complainant that the parked domain resulted in a diversion of traffic for Internet users for commercial gain. Therefore, the Panel found that Respondent did not have a bona fide offering of goods or services and the second prong was satisfied by Complainant.
When reviewing the last prong, whether or not the domain was registered in bad faith, the Panel made the following findings:
Complainant has argued that Respondent has parked the disputed domain name to divert traffic for commercial gain, by means of implementing pay-per-click advertisements in conjunction with Trafficz. Complainant’s allegations and evidence have not in this Panel’s view been persuasively rebutted by Respondent. In the circumstances, this type of domain name parking, together with pay-per-click constitute bad faith activities for the purposes of the Policy, because they imply an intentional attempt to attract, for commercial gain, users to a specific Website, by creating a likelihood of confusion with Complainant and Complainant’s trademarks as to the source, and/or possible sponsorship, affiliation or endorsement of Respondent’s site, or products or services associated to the pay-per-click practice. (Citations omitted)
As a result, the Panel found that Complainant satisfied the last prong, and ultimately ruled to TRANSFER the disputed domain.
