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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autosales Incorporated dba Summit Racing Equipment v. John Zuccarini
dba Cupcake Patrol
Case No. D2001-0230
1. The Parties
1.1 The Complainant is Autosales Incorporated, dba Summit Racing Equipment, a corporation organized and existing under the laws of the State of Ohio, United States of America, having its principal place of business at 1200 Southeast Ave., Akron, Ohio, United States of America.
1.2 The Respondent is John Zuccarini, aka Cupcake Patrol, an individual having an address at Music Wave Investments Ltd., Saffrey Square, Suite 106, P.O. Box N-4140, Nassau, Bahamas.
2. The Domain Name and Registrar
The domain name at issue is <sumittracing.com>, which domain name is registered with CORE - Internet Council of Registrars, based in Geneva, Switzerland ("CORE").
3. Procedural History
3.1 A Complaint was submitted electronically and in hardcopy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 12, 2001.
3.2 On February 19, 2001, CORE notified the WIPO Center that the domain name at issue is registered with CORE, is currently in active status, and that Cupcake Patrol is the current registrant of the name. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.3 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.4 No formal deficiencies having been recorded, on February 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, CORE, and ICANN), setting a deadline of March 17, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.5 A Response was received on March 10, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on March 13, 2001. The Response failed to include the certification required by Uniform Rules, Rule 5(b)(viii), and thus the Panel is entitled to disregard it in its entirety. However, the Panel makes an exception and elects to receive it in this case.
3.6 On March 22, 2001, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Projected Decision Date was April 5, 2001. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
4.1 Complainant registered the service mark SUMMIT RACING EQUIPMENT in connection with retail store and mail order services featuring high performance, racing and after-market accessories for land vehicles with the United States Patent and Trademark Office ("USPTO") effective June 11, 1996. The registration application was filed on June 28, 1995, and shows a first use in commerce in 1968. Complaint, Annex 3.
4.2 Complainant has other U.S. marks and applications, and has foreign applications pending in numerous non-U.S. jurisdictions for the mark SUMMIT RACING EQUIPMENT. Complaint, Annexes 4 and 5.
4.3 On December 27, 1995, Complainant registered the domain name "summitracing.com", which currently resolves to a website at which Complainant offers its products for sale.
4.4 Respondent registered the domain name at issue on May 31, 2000. Complaint, Annex 6.
4.5 Respondent uses the domain name at issue to resolve to a website that links to or incorporates many other commercial websites, none of which are affiliated with Complainant. Complaint, Annex 17.
4.6 Respondent has registered numerous other trademarks for use as domain names. Complaint, Annexes 7-16.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered a domain name which is identical or confusingly similar to the service mark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent contends that the Policy, the Uniform Rules, and the Supplemental Rules violate the Constitution of the United States, as well as other unnamed Constitutions and unidentified State and Federal Laws. Respondent then acknowledges that this is not the proper forum in which to raise such arguments.
Respondent contends that Complainant's mark consist of generic terms, that Respondent does not infringe Complainant's mark, and that Complainant has not demonstrated that it has suffered any harm by Complainant's use of the domain name at issue.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Since the Complainant and Respondent are domiciled in the United States, the Panel will apply only the Policy, the Rules, and Panel decisions interpreting the Policy and the Rules in deciding this matter. SGS Societe Generale de Surveillance S.A. v. Inspectorate, ICANN Case No. D2000-0025.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
(2) that the Respondent has no rights legitimate interests in respect of the domain name; and,
(3) that the domain name has been registered and is being used in bad faith.
The fact that the domain name at issue incorporates a misspelling of the Complainant's mark does not alter the fact that the domain name at issue is confusingly similar to the mark in which Complainant has rights. Respondent is obviously engaging in "typosquatting," a practice that has been condemned and domain names of this type have been found to be confusingly similar to the marks that they mimic. See, e.g., American Media Operations, Inc. v. Erik Simons, ICANN Case No. AF-0134; AOL v. Asian On-Line This Domain For Sale, ICANN Case No. FA 00040000094636. Yahoo! Inc. v. Zviely, et al, ICANN Case No. D2000-0273.
Complainant has alleged and Respondent has failed to deny that Respondent has no legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-007; Bronson Plc v. Unimetal Sanayai ve Tic.A.S., WIPO Case No. D2000-0011.
Respondent is trading on the value established by Complainant in its marks to attract users who misspell or mistype Complainant's mark when entering the URL, which includes Complainant's, domain name. Clearly, Respondent is deriving economic benefit from this practice, either by attracting users to Respondent's website, where goods and services are offered, or by the receipt of compensation from the owners of other websites for delivering users to those sites. This constitutes bad faith registration and use as defined by ¶4(b)(iv) of the Policy: "[T]he following circumstances …. shall be evidence of the registration and use of a domain name in bad faith . . . by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website 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 website or location or a product or service on your website or location."
While a user who arrives at the site may promptly conclude that it is not what he or she was originally looking for, Respondent has already succeeded in its purpose of using the service mark to attract the user with a view to commercial gain. National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, ICANN Case No. D2000-0118.
While Respondent contends that Complainant's mark is generic, Respondent offers no evidence to this effect. Respondent's contention that the domain name at issue does not infringe Complainant's mark. This Panel is not charged with making such a decision, nor is it equipped to do so. Finally, Complainant is not required under the Policy or the Uniform Rules to demonstrate that it has suffered harm resulting from Respondent's conduct. The Policy requires only that Complainant establish each of the three elements set out in paragraph 4(b), which this decision previously enumerated. The Response did not address itself to any of these three elements.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is confusingly similar to the mark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain name at
issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <sumittracing.com> be transferred to the Complainant.
M. Scott Donahey
Dated: March 30, 2001