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Recent Case Notes & Commentary

ONUS IS ALWAYS ON COMPLAINANT


Ziip Inc v. Hagop Doumanian

 

FORUM Claim Number: D2023-5217

 

February 5, 2024

 

RATIO

 

Relief was denied to the Complainant in this case on the grounds that it had failed to establish that the Respondent had registered the domain name <ziip.com> in bad faith and that the domain name was being used by the Respondent in bad faith. Further, the domain name was registered by the Respondent prior to the date of adoption of the trademark on the basis of which the Complainant had bought the complaint, therefore, the Complainant had no grounds for the claim, as the Respondent had legitimate rights and interests in the domain name.

 

BACKGROUND

 

Ziip Inc (the “Complainant”), is a US Company that markets app-connected electrical devices for aesthetic facial treatments under the ZIIP mark. The Complainant owns the trademark ZIIP (word mark), under registration no. 4791168 registered with the USPTO on August 11, 2015, claiming date of use since April 29, 2015. The Complainant operates its primary business website at the domain name <ziipbeauty.com>, and claims that its founders invented the world’s first app-connected facial toning device, which has been used by celebrities and featured in the press. The Complainant claims to have invested substantially in popularising the brand ZIIP and states that the trademark has gained recognition as being connected to the Complainant.

 

The Respondent is a professional domainer, engaged in the business of acquiring and selling short domain names, that consist of generic, descriptive, misspelt and acronymised words.

 

The domain <ziip.com> being the Disputed Domain Name, was registered on April 1, 2000, and the evidence in the record indicates that, as of 2003, the registrant was identified as “Jack Doumain” or “J.D”. At the time of the complaint, the Disputed Domain Name resolved to a website featuring pay-per-click (“PPC”) links for “app software”, “open zip application”, and “roller banner”. On the same web page, the disputed domain name was offered for sale for USD 68,000.

 

The Respondent states that historical records from November 2015 indicate that an organization called Netico, Inc., using the same email as the Respondent, was the registrant of the disputed domain name as of the year 2003.  Netico, Inc. was a company established in 2000, dissolved in 2021 and re-established in 2022. The Respondent was the President of this company from its formation.  The domain name records indicate that the registrant of the disputed domain name was “Jack Douman” identified by the initials “J.D.” which is the same as the Respondent.

 

The Respondent has further challenged the Complainant’s ownership of the ZIIP trademark registration, stating that the registration identifies the owner as Ziip, LLC, with an address in Wyoming, whereas the Complainant is identified as Ziip, Inc., with an address in California. Moreover, publicly available information indicates that Ziip, Inc. was incorporated in Delaware only in the year 2020.  At this time, the Complainant knew or ought to have known that the disputed domain name was already registered by the Respondent.  The Complainant provides no evidence of its existence between 2015 and 2020.

 

The Disputed Domain Name has been used to redirect to third-party marketplace websites since 2012, when it was first listed for sale. The Respondent stated that it has never solicited the Complainant nor interfered with its business.

 

DECISION

 

Identical and/or confusingly similar

 

The Panelist found that the Complainant had established its rights in the trademark ZIIP. Even though the Complainant had registered its trademark long after the Respondent had acquired the Disputed Domain Name, it would not matter as the first element of the UDRP Policy does not require that the trademark must have been registered prior to the domain name in question. Therefore, the disputed domain name was identical or confusingly similar to the Complainant’s trademark and the first element in a domain dispute matter was satisfied.

 

Rights or legitimate interests

 

Considering the Panel’s conclusions with regard to registration of the Disputed Domain Name and Use in Bad Faith in the following paragraph, there was no need to make a finding under this second element.  

 

Registration and Use in Bad Faith

 

In the present case, the Disputed Domain Name was registered on April 1, 2000, whereas the Complainant’s trademark was registered on August 11, 2015. The Complainant has not provided evidence of its use of the ZIIP mark as of that date from 2000. The Complainant has tried to claim that the actual registration of the Disputed Domain Name took place on March 1, 2023, when there was an update in the Whois records of the domain, but has failed to provide any evidentiary proof of such claims. The Complainant has failed in fulfilling its requirement to prove that the Disputed Domain Name was registered and is being used in bad faith.

 

Based on the evidence provided by the Respondent, the Panel concluded that the disputed domain name has at all time been controlled by it albeit under different corporate identities. Moreover, the Respondent has provided evidence that the Disputed Domain Name was made available for sale in 2012 and 2013, predating the Complainant’s establishment of trademark rights in 2015.

 

Therefore, the Complainant had failed to satisfy the third element in a domain dispute matter as well.

 

ORDER

 

Having failed to establish all the three elements necessary in a domain disputes matter, relief was denied to the Complainant.