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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Zedge Ltd. v. Moniker Privacy Services/Aaron Wilson

Case No. D2006-1585

 

1. The Parties

The Complainant is Zedge Ltd., London, United Kingdom of Great Britain and Northern Ireland, represented by Bird & Bird Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondents are Moniker Privacy Services, Florida, United States of America and Aaron Wilson, Butschwil, Switzerland (collectively, the “Respondent”).

 

2. The Domain Name and Registrar

The disputed domain name <zedge.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2006. The Respondent named in this Complaint was Moniker Privacy Services. On December 15, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On January 16, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response stating that Mr. Aaron Wilson is listed as the registrant and providing the contact details. In response to an e-mail communication from the Center indicating that the Registrant information provided by the Registrar is different to the entity named in the Complaint as the Respondent, the Complainant filed an amended Complaint on January 22, 2006. The Amended Complaint named Aaron Wilson as the current Respondent, and Moniker Privacy Services as the original Respondent. The Center verified that the amended 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 January 26, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 15, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2007.

The Center appointed Torsten Bettinger as the sole panelist in this matter on February 23, 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

The Complainant in this administrative proceeding is a Limited Corporation incorporated in England and Wales on April 21, 2004 and operating an internet portal which specializes in mobile telephones and personalization tools and services for mobile telephones. The Zedge portal was created on April 14, 2003, under the Norwegian domain name <zedge.no>. The Complainant has furthermore registered the domain name <zedge.net> on January 9, 2003, and began to use this domain name for its websites in early 2006.

The Zedge Portal currently has over 3.7 million registered users and an average of 1.5 million unique visitors per month.

The Complainant is registered owner of the trademark no. 2410591 ZEDGE registered with the United Kingdom Trade Mark Office on January 9, 2006 for classes 38 and 42.

At the time of filing the Complaint, the listed registrant of record was Moniker Privacy Services, a privacy service offered by the Registrar to owners of domain names. t some point after the filing of the Complaint, apparently between December 18, 2006, and January 16, 2007, the listed registrant of record was changed to the name of Mr. Aaron Wilson.

 

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.

In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant argues that

- the domain name is identical to the Complainant’s trademark because the generic top level domain identifier “.com” can be ignored for the purposes of the Policy.

In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant contends that

- The Respondent has no authorization or license to use the ZEGDE mark in his domain name and that the Respondent is not commonly known by the domain name;

- it is in no way connected with or endorses the website to which the domain name resolves;

- The Respondent’s website operates a revenue producing click through advertising service based on products and services identical or at least very similar to the Complainant’s services including Sponsored Links from the Complainant’s competitors and that such use is not a bona fide offering of goods and services.

In reference to the element in paragraph 4(a)(iii) of the Policy, the Complainant contends that

- the domain name was transferred to the Respondent after the original Complaint against Moniker Privacy Services was filed in order to delay the proceedings and frustrate the Complainant. As such transfer is prohibited by Rule 8(a) of the Policy it constitutes bad faith acquisition of the domain name;

- the domain name was used in connection with a parking site before and after the transfer which constitutes bad faith use of the former Registrant as well as the current;

- the Respondent is (and the former Respondent was) using the domain name in order to gain pay-per-click fees generated by third parties links and therefore attracts users to the Respondent’s website for financial gain which constitutes bad faith under paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

The original registrant identity and subsequent change described above suggest that this is a case in which a privacy service may be in use, and that an underlying or beneficial registrant of the disputed domain name may exist.

Previous panels have for example in comparable cases been prepared to treat both the initially listed registrant and the subsequently disclosed registrant as Respondent. See e.g. TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620 and WWF-World Wide Fund for Nature aka WWF International v. Moniker Online Services LLC and Gregory Ricks, WIPO Case No. D2006-0975.

In the present case, Moniker Privacy Services does appear to have been correctly identified in the Complaint as the listed registrant of record in the Whois at the time the Complaint was filed. The registrar appears to have subsequently disclosed the identity of the underlying/beneficial registrant, Mr. Aaron Wilson, who has also been named by the Complainant in the amended Complaint as a Respondent. Accordingly, it is in the Panel's view appropriate for both of these to be included as Respondent in the present case, and the Panel will for convenience refer to them collectively as the Respondent except as otherwise noted.

A. Identical or Confusingly Similar

The test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors, usually considered in trademark infringement (See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-l698; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110; Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2001-0843; AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327; BWT Brands, Inc. and British American Tobacco (Brands), Inc. v. NABR, WIPO Case No. D200l-l480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D200l-0505).

The disputed domain name wholly incorporates the Complainant’s trademark ZEDGE.

It is well established that the specific top level of a domain name such as “.com”, “.org” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429).

The Panel thus finds that the domain name <zedge.com> is identical to the ZEDGE mark in which the Complainant has exclusive rights and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy requires the Complainant to prove that the Respondent has no right or legitimate interest in the disputed domain name. However, it is consensus view among Panelists that if a complainant makes a prima facie case that a respondent has no rights or legitimate interests, and Respondent fails to show evidence to the contrary, then the a respondent may lack a right of a legitimate interest in the domain name.

The Complainant asserted that the Respondent has neither a license nor any other permission to use the Complainant’s trademark ZEDGE and that the Respondent’s use of the domain name for a parking website is neither a bona fide offering of goods and services not a legitimate non-commercial use. The Panel thus finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name which is identical the Complainant’s mark.

Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or any other circumstances giving rise to a right or legitimate interest in the domain name.

Respondent is using Complainant’s trademark to divert Internet users to a parking website with links to commercial websites offering telecommunications goods and services in direct competition with the Complainant.

The use of the domain name as a parking website is not a bona fide non-commercial use pursuant to paragraph 4(c)(iii) of the Policy.

Further, nothing in the record suggests that the Respondent is making any other legitimate non-commercial use of the domain name or registered the domain name as a descriptive, non-source identifying domain name in order to inform about the Complainant’s services or related matters.

Under these circumstances, the Panel takes the view that the Respondent has no rights or legitimate interests in the domain name and that the requirement of paragraph 4(a)(ii) is also satisfied.

C. Registered and Used in Bad Faith

The Panel is also convinced that the Respondent registered and has been using the domain name in bad faith.

The Panel finds that the domain name is being used in bad faith under 4(b)(iv) of the Policy. Screen shots of the Respondent’s web page at “www.zedge.com” show that use of the domain name redirects user to a parking website that provides links to third parties which compete with the Complainant. These parking websites typically offer domain name holders to earn click through fees for redirecting Internet users to competing websites and thus capitalizing on the goodwill of third parties trademarks.

This qualifies as bad faith under paragraph 4(b)(iv) in that the Respondent’s use of the domain name attempts to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website.

Moreover, the Respondent’s default in this proceeding reinforces an inference of bad faith. If the Respondent had arguments that it registered the domain name in good faith, and had good faith bases for using the domain name, it should have asserted them.

Accordingly, the Panel concludes that the Respondent registered and used the domain names <zedge.com> in bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy has been met.

 

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 <zedge.com> be transferred to the Complainant.

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Torsten Bettinger
Sole Panelist

Dated: March 14, 2006