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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cinnabon, Inc. v. John Zaffarano
Case No. D2002-0618
1. The Parties
1.1 The Complainant is Cinnabon, Inc., a Washington corporation with its principal place of business in Atlanta, Georgia, United States of America.
1.2 The Respondent is John Zaffarano d/b/a John Zaffarano Company ("Zaffarano"), whose principal place of business is in Pompano Beach, Florida, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <cinnabun.com>, which domain name is registered with Go Daddy Software, Inc., 14455 North Hayden Road, Suite 226, Scottsdale, AZ 85260, United States of America.
3. Procedural History
3.1 A complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on July 3, 2002. The Center sent the Complainant an acknowledgment of Receipt, dated July 5, 2002.
3.2 On July 5, 2002, a Request for Registrar Verification was transmitted to the registrar, Go Daddy Software, Inc. The registrar confirmed by reply e-mail that the domain name at issue is registered with Go Daddy Software Inc.; confirmed that the person identified as the Respondent is the current registrant of the domain name; provided the full contact details for the domain name registrant; confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect, and; indicated the current status of the domain name.
3.3 The 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the Center that the Complaint is in formal compliance with the requirements of the Policy, the Uniform Rules, and the Supplemental Rules. The Complainant paid the required fees for a single-member Panel on time and in the required amount.
3.4 Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the Center issued to the Respondent on July 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (including a copy of the filed Complaint), to both the postal and email addresses of the Respondent, as provided by the Registrar. Copies of this notification were sent to the Complainant, the Registrar and ICANN on the same date. The Center did not receive any response to the notification sent to the electronic or postal addressees of the Respondent. Having reviewed the communications records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.5 Having received no response from the Respondent within the specified time in the Notification of Complaint, on August 5, 2002, the Center issued to both parties a Notification of Respondent Default. On August 20, 2002, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date. This Notification informed the parties that the Administrative Panel would be comprised of a sole panelist, Mr. Perry J. Viscounty, Esquire.
4. Factual Background
4.1 The Complaint asserted, and provided evidence in support of, and the Administrative Panel finds established, the following facts.
The Complainant’s Activities
4.2 Cinnabon, Inc. ("Cinnabon") is in the business of franchising bakeries, and, in connection with this business, owns a number of trademarks federally registered in the United States, as well as in a number of international countries, including the mark CINNABON. Cinnabon and its predecessors-in-interest have used this mark since 1994. Cinnabon also operates a worldwide website at the registered domain name <cinnabon.com>.
Respondent’s Identity and Activities
4.3 John Zaffarano Company, which is not a franchisee or licensee of Cinnabon, registered the disputed domain name, <cinnabun.com,> for a website using the server facilities of Go Daddy Software. As of June 17, 2002, the only content posted on this website was a notice that "this domain name is available for purchase through the John Zaffarano Company" with a contact telephone number.
4.4 On June 17, 2002, John Zaffarano contacted a representative of Cinnabon and offered to sell the domain name to Cinnabon for the price of $9,510.00.
4.5 On June 19, 2002, Cinnabon provided Zaffarano with a copy of the draft of this Complaint, as well as an assignment form requesting he assign his rights to this domain name to Cinnabon, the legitimate owners of the federally registered trademark CINNABON. Zaffarano was advised in this letter that the instant Complaint would be filed if he did not agree to assign his rights to this domain name at his costs for registering the domain name.
4.6 Zaffarano contacted Cinnabon’s representative, Lisa P. Morse, who returned his telephone call on July 2, 2002. Zafarrano indicated at that time he was using the website, but would agree to assign the domain name to Cinnabon for a reasonable amount acceptable to both parties. Ms. Morse informed Mr. Zaffarano that Cinnabon would pay the cost of his registration fee. Mr. Zaffarano rejected this offer.
4.7 At the time the Complaint was filed, the domain name <cinnabun.com> was the site of a database of links to various websites. The site included links to a number of commercial websites offering various services, from free vitamins to credit cards. It is apparent this website was created after Zaffarrano’s receipt of the June 19, 2002 letter from Cinnabon.
5. Contentions of the Parties
5.1 The Complainant contends that it has trademark rights in CINNABON.
5.2 The Complainant contends that The domain name <cinnabun.com> is confusingly similar to Cinnabon’s registered trademark for CINNABON, as well as to its website <cinnabon.com>. The Complainant further contends that the words CINNABON and CINNABUN are so similar that it is conceivable that consumers could easily be directed to the <cinnabun.com> website when searching for the <cinnabon.com> website by virtue of a simple misspelling.
5.3 The Complainant contends that the <cinnabun.com> website has no real connection to the name CINNABUN, with no products offered by that name. The Complainant asserts that the Respondent has intentionally attempted to attract, for commercial gain, internet users to this website, by creating a likelihood of confusion with the CINNABON mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
5.4 The Complainant contends that the Respondent’s domain name has been registered in bad faith and that the continued use of the Respondent’s domain name is likely to cause confusion among consumers both as to ownership of the trademark and sponsorship of the website.
5.5 The Respondent did not file a response to the Complaint.
6. Relevant Provisions of the Uniform Policy
6.1 Paragraph 4(a) of the Uniform Policy requires the Complainant to establish the following three elements in order to obtain relief:
(i) [The Respondent’s] 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 Respondent’s] domain name has been registered and is being used in bad faith.
6.2 Paragraph 4(b) of the Uniform Policy further identifies, in particular but without limitation, four circumstances, which, if found by the Administrative Panel to be present shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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.
7. Findings and Conclusions
Identical or Confusingly Similar Domain Name.
7.1 The domain name at issue is <cinnabun.com>. The Complainant holds a registered trademark for CINNABON. The Respondent’s use of the letter "u" rather than the letter "o" does little to distinguish its domain name from the mark in which the Complainant has rights. In VoiceStream Wireless Corporation v. Click 5, WIPO Case No. D2002-0190 (May 7, 2002), the Panel found that the domain name at issue, <vocestream.com>, was confusingly similar to <voicestream.com>. The Panel noted the high likelihood that consumers who mistyped the domain name would be misdirected to a different site. See also Guinness UDV North America, Inc. v. Dallas Internet Service, WIPO Case No. D2001-1055 (finding <smirnof.com> confusingly similar to <smirnoff.com>); Bally Total Fitness v. Mike Torres a/k/a Dallas Internet Service, a/k/a Global Media Consulting, WIPO Case No. D2001-0546 (finding <ballysfitness.com> confusingly similar to <ballyfitness.com>). The facts of these cases, both of which involve a deviation of only one letter, are analogous to the facts of the instant case. The Panel finds that the domain name <cinnabun.com> is likely to create the impression that the Respondent’s domain name is related to the Complainant. Therefore, the Panel finds that the Respondent’s domain name is nearly identical and confusingly similar to the Complainant’s Marks.
Respondent’s Rights or Legitimate Interests in the Domain Name
7.2 The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. The Respondent has no prior rights in the name <cinnabun> and is not affiliated with the Complainant or authorized by the Complainant to use its mark. The only apparent reason the Respondent might have for selecting the domain name <cinnabun.com> is to trade off of or otherwise benefit from the Complainant’s goodwill. The Panel therefore finds that the Respondent has no rights or legitimate interests in the domain name.
Domain Name Registered and Used in Bad Faith
7.3 Paragraph 4(b) of the Uniform Policy identifies certain non-exclusive circumstances which, when found to exist by the Panel, constitute evidence of bad faith. Among these circumstances is use of the domain name with the intent to attempt to attract, for commercial gain, internet users to a 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 the website. See Paragraph 4(b)(iv). In the instant case, the Respondent’s bad faith is apparent from the fact that it has used a misspelling of the Complainant’s famous mark to attract visitors to its website. On nearly identical facts, a WIPO panel has found bad faith on the basis that "[t]he Respondent exploits mis-typings of the Complainant’s trademark." Williams-Sonoma, Inc. v. Polanski, WIPO Case No. D2001-0236 (April 5, 2001).
7.4 Furthermore, when Respondent registered the domain name at issue he knew or should have known of the existence of Cinnabon stores and the famous CINNABON Marks. See Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000) (Respondent’s knowledge of complainant’s mark at the time of registration of the domain name suggests bad faith); Anheuser-Busch Incorporated v. Gilina Rogers A/K/A Gilinda Granger, WIPO Case No. D2001-0134 (April 4, 2001) (the registration and use of domain names with the intent to lead ordinary consumers to an illegitimate website by creating confusion as to ‘source, sponsorship, affiliation, or endorsement’ demonstrates bad faith).
7.5 In light of the facts discussed above, the Panel concludes that the Respondent’s holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name "is being used in bad faith" by Respondent.
8.1 The Panel decides that the Complainant has proven each of the three elements in paragraph 4(a) of the Uniform Policy. Accordingly, the Panel requires that the domain name <cinnabun.com> be transferred to the Complainant.
Perry J. Viscounty
Dated: September 3, 2002