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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

AOL Time Warner Inc. v. John Zuccarini

Case No. D2002-0827

 

1. The Parties

The Complainant in this administrative proceeding is AOL Time Warner Inc. ("Complainant" or "AOLTW"), a Delaware corporation with its principal place of business located in New York, New York 10019, USA.

Respondent is John Zuccarini, who uses his own name and the aliases Cupcake Party, CupcakeParty, Cupcake-Party, Cupcake Shows and RaveClub Berlin (collectively "Zuccarini") and who is located in Atlanta, Georgia 30350, USA.

 

2. The Domain Names and Registrars

The thirty-three domain names at issue together with the registrant, registrar and registration date are listed as follows:

Domain Names Registrant Registrar Registration Date

<cartoonnetwerk.com> John Zuccarini CSL GmbH March 13, 2000
<cartoonnetwok.com> John Zuccarini CSL GmbH January 19, 2000
<cartoonnetwor.com> John Zuccarini CSL GmbH March 13, 2000
<cartoonnetworc.com> John Zuccarini CSL GmbH May 8, 2000
<cartoonnetworck.com> John Zuccarini CSL GmbH April 2, 2000
<cartoonnetwrk.com> John Zuccarini CSL GmbH April 2, 2000
<cartoonnetwrok.com> John Zuccarini CSL GmbH January 19, 2000
<carttonnetwork.com> John Zuccarini CSL GmbH April 2, 2000
<carttoonnetwork.com> John Zuccarini CSL GmbH April 2, 2000
<cratoonnetwork.com> John Zuccarini CSL GmbH May 8, 2000
<powerpuffgrils.com> John Zuccarini CSL GmbH July 27, 2000
<powerpufgirls.com> John Zuccarini CSL GmbH February 25, 2000
<sportsillistrated.com> Cupcake Party NSI March 5, 1999
<sportsillastrated.com> John Zuccarini CSL GmbH January 7, 2002
<sportillistrated.com> Cupcake Shows NSI March 21, 1999
<spotsillustrated.com> John Zuccarini CSL GmbH January 7, 2002
<siswimsuit.com> Cupcake-Party NSI March 25, 1999
<siswimsuits.com> Cupcake-Party NSI March 25, 1999
<siswimsuitissue.com> Cupcake-Party NSI March 26, 1999
<siswimsuitedition.com> Cupcake-Party NSI March 26, 1999
<nulsoft.com> RaveClub Berlin CSL GmbH August 12, 2000
<aolmemberprofiles.com> RaveClub Berlin CSL GmbH April 3, 2000
<aolmesenger.com> RaveClub Berlin CSL GmbH April 3, 2000
<aiminstantmessenger.com> RaveClub Berlin CSL GmbH April 6, 2000
<istantmessenger.com> RaveClub Berlin CSL GmbH April 3, 2000
<aolistantmessenger.com> RaveClub Berlin CSL GmbH April 3, 2000
<insantmessenger.com> RaveClub Berlin CSL GmbH April 3, 2000
<aolhoroscopes.com> RaveClub Berlin CSL GmbH July 11, 2000
<aolaimexpress.com> RaveClub Berlin CSL GmbH April 6, 2000
<netscapedownload.com> CupcakeParty NSI June 6, 1999
<netscap.net> John Zuccarini CSL GmbH February 11, 2000
<natscape.net> John Zuccarini CSL GmbH April 6, 2000
<nestcape.net> John Zuccarini CSL GmbH April 3, 2000

The domain names referred to above shall be collectively referred to as the "Domain Names."

 

3. Procedural History

On September 3, 2002, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant via email. On September 4, 2002, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On September 12, 2002, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On September 5, 2002, after the Center sent a Request for Verification to the Registrars requesting verification of registration data, the Registrars confirmed for each of the Domain Names, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On September 12, 2002, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On October 3, 2002, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On November 14, 2002, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

 

4. Factual Background

AOLTW is the world's leading media and entertainment company. Its myriad businesses include interactive services, cable systems, filmed entertainment, television networks, music and publishing. The AOLTW family of companies own some of the best known brand names in the world, including AOL, CARTOON NETWORK, SPORTS ILLUSTRATED, NETSCAPE, INSTANT MESSENGER, CNN, WARNER BROS., TIME, HBO, CINEMAX, PEOPLE, ATLANTIC RECORDS, DC COMICS, and FORTUNE. Of particular relevance to this Complaint are marks owned by AOLTW subsidiaries Cartoon Network LP, LLLP; America Online, Inc.; Time Inc.; and Netscape Communications Corporation.

1. Cartoon Network LP, LLLP and Its CARTOON NETWORK and POWERPUFF GIRLS Marks

Cartoon Network LP, LLLP ("Cartoon Network") is a Delaware limited liability limited partnership whose partners are subsidiaries of AOLTW. Since 1992, Cartoon Network has operated a 24-hour cable and satellite television network under the service mark CARTOON NETWORK that features original animated series, as well as classic cartoons from Warner Bros., MGM and Hanna-Barbera. Cartoon Network reaches nearly 150 million households around the world. In the United States, Cartoon Network reaches more viewers aged 2-11 during prime time than any other television network.

As a complement to its television network, Cartoon Network operates an interactive Web site under the domain name <cartoonnetwork.com>. This destination site features interactive games, Cartoon Network programming and content information, and an online store through which users can purchase a variety of CARTOON NETWORK branded apparel and merchandise. Cartoon Network’s Web site averages more than 460 million hits per month, making it one of the most heavily trafficked sites on the Internet, and one of the most trafficked sites by children aged 6 to 14.

Cartoon Network has continuously and exclusively used the CARTOON NETWORK service mark since 1992, to identify its television services and CARTOON NETWORK branded merchandise. Cartoon Network thus owns valid and enforceable service mark and trademark rights in and to its mark. In recognition of these rights, the U.S. Patent and Trademark Office ("USPTO") has issued Cartoon Network thirteen registrations for marks that consist in whole or in part of the CARTOON NETWORK mark, including, e.g., Reg. No. 1,798,899 (for television distribution services) and Reg. No. 1,877,681 (for merchandise). Cartoon Network’s registrations are valid and subsisting in law, were duly and legally issued, are prima facie evidence of the validity of the marks registered, and constitute constructive notice of the ownership of these marks by Cartoon Network. 15 U.S.C. §§ 1057(b), 1072. Three of Cartoon Network’s U.S. registrations are incontestable and therefore constitute conclusive evidence of Cartoon Network’s exclusive right to use the marks shown therein. 15 U.S.C. §§ 1065, 1115(b). Cartoon Network also owns valid and enforceable registrations for its CARTOON NETWORK service mark and trademark in more than 125 countries worldwide.

Each year, Cartoon Network spends substantial sums to advertise and promote the CARTOON NETWORK mark and the goods and services Cartoon Network sells thereunder. As a result, the CARTOON NETWORK mark enjoys strong consumer recognition and is an asset of substantial value to Cartoon Network.

One of Cartoon Network’s most popular features is the original television series The Powerpuff Girls. The series features three young girls with super powers who save the fictional city of "Townsville" from destruction at the hands of a various villains and monsters. Launched in 1998, The Powerpuff Girls is one of the most successful series in television history. To date, the series has generated more than $700 million in sales of POWERPUFF GIRLS branded merchandise, including apparel, backpacks, books, action figures, cups, bedding, and a variety of other products. The popularity of the series has also led to the production and recent worldwide release of a feature-length animated film entitled The Powerpuff Girls Movie.

Cartoon Network has continuously and exclusively used the POWERPUFF GIRLS mark since 1998, in the United States and beyond to identify its cartoon program series and related merchandise. Cartoon Network therefore owns valid and enforceable service mark and trademark rights in the POWERPUFF GIRLS mark. In recognition of these rights, the USPTO has issued Cartoon Network thirteen registrations for marks that consist in whole or in part of the POWERPUFF GIRLS mark, including, e.g., Reg. No. 2,462,068 (for clothing). Cartoon Network further owns valid and enforceable registrations for its POWERPUFF GIRLS mark in more than fifty countries worldwide. Through substantial advertising, promotion and use, the POWERPUFF GIRLS mark enjoys strong consumer recognition and is an asset of substantial value to Cartoon Network.

2. America Online and Its AOL, AOL INSTANT MESSENGER, AIM, INSTANT MESSENGER, and NULLSOFT Marks

American Online, Inc. ("AOL") is a Delaware corporation with its principle place of business in Dulles, Virginia. AOL is the world's leader in interactive services, Web brands, Internet technologies and e-commerce services. AOL’s flagship product is America Online (or "AOL"), a service that allows Internet users to access the Internet as well as a variety of proprietary content including news, weather, calendars, games, horoscopes, advice, maps and ticketing services. With more than 34 million members around the world, the AOL service is the world’s largest online community. AOL is also the Internet’s number one music destination, with more than one million songs streamed from the AOL service every day. AOL’s home on the Web is located under the domain name <aol.com>.

AOL has continuously and exclusively used its AOL service mark in the United States and beyond since at least as early as 1985, to identify its online services as well as software related to its service. AOL therefore owns valid and enforceable service mark and trademark rights in the AOL mark. In recognition of these rights, the USPTO has issued AOL twenty-six registrations for marks that consist in whole or in part of the AOL mark, including Reg. No. 1,977,731 for the word mark AOL to identify telecommunications, computer and Internet services. These registrations are valid and subsisting in law, were duly and legally issued, are prima facie evidence of the validity of the marks registered, and constitute constructive notice of the ownership of these marks by AOL under the U.S. Lanham Act, 15 U.S.C. §§ 1057(b), 1072. Three of AOL’s U.S. registrations are incontestable and therefore constitute conclusive evidence of AOL’s exclusive right to use the marks shown therein. 15 U.S.C. §§ 1065, 1115(b). AOL also owns valid and enforceable registrations for its AOL service mark and trademark in more than 100 countries worldwide.

To maintain and enhance its position as market leader, AOL spends substantial sums each year to advertise, promote and market its services. These efforts have included television, radio, print, direct mail, and Internet advertising. Over the past five years, AOL has spent millions of dollars advertising and promoting its AOL service. As a result of such substantial advertising, promotion and use, the AOL mark enjoys strong consumer recognition and serves in the minds of the consuming public to identify AOL alone.

In addition to its pioneering Internet service, AOL was also a pioneer in the development of real time Internet communications tools. Real time communications services are Internet based services that permit Web users to detect when friends and family are online and to communicate with them in real time. Real time communications services are faster than e-mail and more convenient than making a phone call. In 1997, AOL introduced a state-of-the-art real time Internet communications service under the service marks INSTANT MESSENGER and AOL INSTANT MESSENGER, also known as "AIM." AOL offers this service free of charge to all Internet users. AIM allows users to send real time messages to other AIM members, regardless of whether the message recipients are also subscribers to the AOL service. AIM currently boasts more than 140 million registered users worldwide, making it the most popular real time messaging service on the Web today.

AOL has continuously and exclusively used the service marks AOL INSTANT MESSENGER, INSTANT MESSENGER and AIM since 1997, to identify its real time Internet communications service. As a result of AOL’s widespread promotion and use of each of these marks, the public has come to associate the marks with AOL alone. AOL therefore owns valid and enforceable rights in each of the marks under U.S. law, and AOL acquired such rights well prior to the acts of Respondent complained of herein. The USPTO has issued AOL Reg. Nos. 2,423,367 and 2,423,368 for the AIM mark, and trademark applications are currently pending before the USPTO for AOL’s AOL INSTANT MESSENGER and INSTANT MESSENGER marks (Serial Nos. 75-460,306 and 75-460,305 for the former, and Serial Nos. 75-496,386 and 75-497,543 for the latter.)

Through its wholly-owned subsidiary Nullsoft, Inc. ("Nullsoft"), AOL offers a variety of downloadable software products under the trademark NULLSOFT, including NULLSOFT WINAMP, a widely used audio player for the Windows platform. AOL and is predecessors have continuously and exclusively used the trademark NULLSOFT in commerce since at least as early as 1997, to identify their NULLSOFT software products. In recognition of AOL’s rights in the mark, the USPTO has issued AOL Certificate of Reg. No. 2,443,680 for the NULLSOFT mark. AOL licenses Nullsoft on an exclusive basis to use the mark to identify its software products.

3. Time and Its SPORTS ILLUSTRATED and SI Trademarks

Time Inc. ("Time") is the world’s leading magazine company. Founded in 1923, Time, directly and through its subsidiary companies, publishes approximately 140 regular-frequency titles with an approximate readership of 298 million readers worldwide. Among its many magazine titles are the famous periodicals Time, People, Sports Illustrated, Field & Stream, Golf Magazine, and Popular Science.

Time launched Sports Illustrated in 1954. Since that time, Sports Illustrated has become the most frequently read weekly sports magazine in the world. Current readership of the magazine exceeds 20 million individuals weekly. Sports Illustrated has twice won the prestigious National Magazine Award for General Excellence from the American Society of Magazine Editors.

Building on the strength of the SPORTS ILLUSTRATED brand name, Time has launched a variety of targeted sports magazines under the brand, including Sports Illustrated Women and Sports Illustrated for Kids. Sports Illustrated’s presence on the Internet is located at the URL "cnnsi.com", where Time has teamed with its sister company Cable News Network since 1997, to offer a leading sports news and information Web site under the service marks CNN/SPORTS ILLUSTRATED and CNNSI.

By virtue of its exclusive and continuous use of the SPORTS ILLUSTRATED trademark since 1954, Time owns valid and enforceable rights in the mark. In recognition of these rights, the USPTO has issued Time twenty-two registrations for marks that consist in whole or in part of the SPORTS ILLUSTRATED mark, including Reg. No. 754,203 (for a weekly magazine). These registrations are valid and subsisting in law, were duly and legally issued, are prima facie evidence of the validity of the marks registered, and constitute constructive notice of the ownership of these marks by Time in accordance with 15 U.S.C. §§ 1057(b) and 1072. Ten of these registrations are incontestable and therefore constitute conclusive evidence of Time’s exclusive right to use the marks shown therein. 15 U.S.C. §§ 1065, 1115(b). In addition to its registrations within the United States, Time owns valid and enforceable registrations for its SPORTS ILLUSTRATED mark in more than 70 countries worldwide.

Time has used the mark SI (an abbreviation of "Sports Illustrated") for many years to identify its Sports Illustrated family of magazines, its Web site, and a variety of other goods.

By virtue of Time’s exclusive and continuous use of the SI mark for years, Time owns valid and enforceable rights in the mark. In recognition of these rights, the USPTO has issued Time Certificate of Registration No. 1,863,715 for the mark SI FOR KIDS (for periodical publications). This registration is valid and subsisting in law, was duly and legally issued, is prima facie evidence of the validity of the mark registered, and constitutes constructive notice of the ownership of the mark by Time. This registration is incontestable pursuant to 15 U.S.C. § 1065.

One of Sports Illustrated’s most popular issues is its annual swimsuit edition, which features some of the world’s most beautiful women modeling swimsuits in various locations around the world. First published in 1964, the edition has an annual circulation of 4.5 million copies.

The enormous popularity of the swimsuit edition has led to Time’s manufacture and sale of a variety of merchandise related to the editions, including videos, television programs, trading cards, and other goods. Time has also created a special Web site devoted to its swimsuit edition that is prominently linked from, and promoted by, the home page of the CNNSI.COM Web site. (See "http://sportsillustrated.cnn.com/ features/ 2002/swimsuit/").

4. Netscape and Its NETSCAPE Service Mark

Netscape Communications Corporation ("Netscape"), based in Mountain View, California, is a leading provider of open source software that links people and information over the Internet and intranets. It is also a premier provider of Enterprise software solutions. Netscape pioneered and continues to develop world-class Web browsers in 23 languages, including the famous browsers Netscape Navigator and Netscape 7.0. Through its Netscape.com Web site, Netscape provides users of the Web at large with interactive tools, services, and content, including a broad cross section of leading online content from Time.com, CNN, CNN Sports Illustrated, CNN Money, People.com, InStyle.com, and Entertainment Weekly. Netscape.com is one of the ten most visited daytime destinations online, with 52 million registered users and an average of 50 million page views per day.

Netscape has continuously and exclusively used the NETSCAPE trademark and service mark since 1994, to identify its Web browser software and Web site. Netscape therefore owns valid and enforceable service mark and trademark rights in the mark. In recognition of Netscape’s rights, the USPTO has issued Netscape eighteen registrations for marks that consist in whole or in part of the NETSCAPE mark, including Reg. No. 2,027,552 for the NETSCAPE mark to identify its browser software. These registrations are valid and subsisting in law, were duly and legally issued, are prima facie evidence of the validity of the NETSCAPE mark, and constitute constructive notice of Netscape’s ownership of the mark. 15 U.S.C. §§ 1057(b) and 1072. As a result of substantial advertising, promotion and use, the NETSCAPE mark enjoys strong consumer recognition and serves in the minds of the consuming public to identify Netscape alone.

The trademarks and service marks referred to above shall be collectively referred to as the "Trademarks."

 

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has numerous registrations comprising the Trademarks, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the Trademarks. 15 U.S.C. § 1115. Complainant further alleges that many of its registrations are incontestable and conclusive evidence of its exclusive right to use the mark in connection with the stated goods and services. 15 U.S.C. §§ 1065 and 115(b).

ii. Complainant argues that the Domain Names are confusingly similar to the Trademarks, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate various of the Trademarks with the addition of generic terms.

Complainant further argues that AOLTW subsidiaries own valid and enforceable rights in the marks set forth in the table below, and each subsidiary acquired such rights well prior to the dates on which Zuccarini registered and began using the Domain Names. The confusing similarity between Zuccarini’s Domain Names and the relevant AOLTW marks is apparent, as demonstrated by the side-by-side comparison set forth below.

Mark OwnerMarkZuccarini Domain Name
Cartoon NetworkCARTOON NETWORK<cartoonnetwerk.com>
  <cartoonnetwok.com>
  <cartoonnetwor.com>
  <cartoonnetworc.com>
  <cartoonnetworck.com>
  <cartoonnetwrk.com>
  <cartoonnetwrok.com>
  <carttonnetwork.com>
  <carttoonnetwork.com>
  <cratoonnetwork.com>
Cartoon NetworkPOWERPUFF GIRLS<powerpuffgrils.com>
  <powerpufgirls.com>
AOLAOL<aolmemberprofiles.com>
  <aolmesenger.com>
  <aolhoroscopes>
AOLAIM/AOL INSTANT<aiminstantmessenger.com>
 MESSENGER/INSTANT<istantmessenger.com>
 MESSENGER<aolistantmessenger.com>
  <insantmessenger.com>
  <aolaimexpress.com>
AOLNULLSOFT<nulsoft.com>
TimeSPORTS ILLUSTRATED<sportillistrated.com>
 SI<sportsillistrated.com>
  <sportsillastrated.com>
  <spotsillustrated.com>
  <siswimsuit.com>
  <siswimsuits.com>
  <siswimsuitissue.com>
  <siswimsuitedition.com>
  <netscapedownload.com>
  <netscap.net>
  <natscape.net>
  <nestcape.net>

Complainant alleges that Zuccarini freely admits having registered domain names just such as these for the very reason that they are confusingly similar to the famous marks of others, including the SPORTS ILLUSTRATED mark. See Electronics Boutique, 56 U.S.P.Q.2d 1705, n.12 (noting that Zuccarini admitted registering domain names intended to be misspellings of famous names and that he specifically "admitted registering the domain name ‘sportsillustrated.com’ because of its similarity to the magazine Sports Illustrated"); America Online, Inc. v. John Zuccarini, WIPO Case No. D2000-1495 (finding the domain names <aolgams.com>, <aolinstant.com>, <aolinstantmessaging.com>, <aolinstantmessages.com>, <aolmessenger.com>, and <instant-messenger.com> confusingly similar to rights AOL owns in the marks AOL, AOL INSTANT MESSENGER and INSTANT MESSENGER).

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.

Respondent cannot demonstrate rights or legitimate interest in the Domain Names under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.

Complainant further contends that Zuccarini is one of the Internet’s most notorious cyberpirates. Over the past several years, he has registered thousands of domain names that are misspellings of and/or that are confusingly similar to the famous trademarks of others. Representative examples include <disneywolrd.com>, <usatodaysports.com>, <nikoncamers.com>, <tacobelldog.com>, <starwarspics.com>, and <backstretboys.com>. See, e.g., Disney Enterprises, Inc. v. Zuccarini, WIPO Case No. D2001-0489; America Online, Inc. v. Zuccarini, WIPO Case No. D2000-1495.

Zuccarini registers his domain names in anticipation that consumers will mistakenly enter the names in their browser address windows, usually as typographical or spelling errors. See, e.g., Shields v. Zuccarini, 254 F.2d 476, 483, n.7 (3d Cir. 2001). Zuccarini’s domain names drive unwary Internet users to commercial Web sites Zuccarini owns or controls that display advertisements for various goods and services, including pornography, online casinos, sweepstakes, lotteries, psychics, and instant credit. See, e.g., Shields, 89 F.Supp.2d at 635; see also Complaint in Federal Trade Commission v. Zuccarini, Civil Action No. 01-CV-4854 (E.D. Pa.) at paragraph 22 (attached as Exhibit 2 to Stewart Decl.). Zuccarini’s sites then "mousetrap" users in a seemingly endless succession of "pop-up" advertising windows. When the users attempt to extricate themselves by closing the windows or clicking on their browsers’ "Back" buttons, Zuccarini’s sites cause yet additional advertising windows to open. See, e.g., Shields, 89 F. Supp.2d at 635. Only by laboriously closing every window, or rebooting the computer, can trapped users eventually free themselves from Zuccarini’s sites. In many instances, Zuccarini’s sites launch the Web sites the Internet users are actually trying to reach, thereby encouraging the users to wade through all of his pop-up windows rather than reboot, and thereby also misleading the users into believing that the owners of the target sites sponsor or endorse the pop-up advertisements. See Electronics Boutique, 56 U.S.P.Q.2d 1705.

Complainant states that Zuccarini has testified that he can earn between ten and twenty-five cents for every click on one of the advertisements placed on his sites. Id. By Zuccarini’s own estimate, this practice has generated him annual revenues of nearly $1 million. Id. at 640, n.7.

The U.S. Federal Trade Commission has sued Zuccarini in the United States District Court for the Eastern District of Pennsylvania alleging that his actions violate Section 5 of the Federal Trade Commission Act. FTC v. Zuccarini, Civil Action No. 01-CV-4854. In an Order dated April 9, 2002, the Court permanently enjoined Zuccarini from registering or using domain names that are confusingly similar to the marks of others and from redirecting consumers on the Internet. Despite the entry of this Order, Zuccarini has continued his conduct unabated.

Among the many domain names Zuccarini has registered are numerous domain names that are misspellings of and/or confusingly similar to well-known marks owned by AOLTW subsidiaries Cartoon Network, AOL, Time, or Netscape (hereinafter the "AOLTW Domain Names"). Zuccarini is using almost all of the AOLTW Domain Names in the same manner he was using the domain names that were addressed by the courts in the FTC, Shields, and Electronics Boutique cases. Indeed, Zuccarini’s Cartoon Network related domain names are specifically identified by the FTC in its Complaint against Zuccarini as evidence that Zuccarini’s pernicious conduct includes preying on children to drive them to adult content sites.

All of the CARTOON NETWORK, AOL, AIM and INSTANT MESSENGER related domain names at issue in this case, and two of the SPORTS ILLUSTRATED related domain names, currently redirect Internet users to the URL "www.amaturevideos.nl" and then, after a brief pause, to the adult site "www.hanky-panky-college.com". When a user attempts to close out of these windows or clicks on the "Back" button in his/her browser software, Zuccarini mousetraps the user with a stream of additional advertising sites, including adult content sites, a casino gambling site, and a portal site named "YES YES YES."

Complaint contends upon information and belief that Zuccarini profits from the advertisements and sites he has linked to his AOLTW Domain Names in the same manner he profits from the domain names at issue in the Shields and other cases identified above; namely, through advertisers’ affiliate programs.

Zuccarini’s use of the AOLTW Domain Names is causing real and immediate injury to both AOLTW’s subsidiaries and to the public. Numerous consumers have complained of Zuccarini’s actions to AOLTW’s subsidiaries. By way of example, Complainant offers Exhibit 3 of the Sams Declaration, which is a true and correct copy of a representative sample of the types of e-mails Cartoon Network has received. This particular e-mail, which was received on July 29, 2002, is from an individual who reported that his girlfriend’s son had attempted to go to Cartoon Network’s Web site but mistakenly typed the URL "www.cartoonnetwrk.com" into the addressing window of his browser. The boy’s mistake caused the <hanky-panky-college.com> site to appear. According to the e-mail sender, the boy’s mother was "quite traumatized, as several sex oriented pop-up advertisements began to take control of her desktop, in the presence of her child." Other examples of complaint e-mails Cartoon Network has received were attached as Exhibit 4 to the Sams Declaration.

Complainant notes that Zuccarini has lost at least three federal court cases and dozens of UDRP actions involving conduct that is identical to the conduct complained of herein.

At least one of the UDRP actions Zuccarini lost involved AOL marks that are also at issue in this action (namely the AOL, AOL INSTANT MESSENGER and INSTANT MESSENGER marks). See America Online, Inc. v. John Zuccarini, WIPO Case No. D2000-1495 (ordering transfer of the domain names <olgams.com>, <aolinstant.com>, <aolinstantmessaging.com>, <aolinstantmessages.com>, <aolmessenger.com>, and <instant-messenger.com>).

Complainant cites the Shields case involved conduct that is virtually identical to the conduct complained of herein. The court in that case found that Zuccarini "conducts no bona fide business" under the domain names he had registered. See, e.g., Shields, 89 F.Supp.2d at 640; accord Encyclopedia Britannica, Inc. v. Zuccarini, WIPO Case No. D2000-0330 (June 7, 2000).

Zuccarini likewise conducts no bona fide business under any of the AOLTW Domain Names, and he has never received consent, express or implied, from any of AOLTW’s subsidiaries to register or use any of the domain names. Zuccarini’s only use of the domain names has been to trade unlawfully upon the substantial consumer recognition and goodwill AOLTW’s subsidiaries have developed in their marks. See, e.g., Electronics Boutique, 56 U.S.P.Q.2d 1705 (affirming finding that "Zuccarini’s ‘business’ consists entirely of trading on the goodwill developed by [plaintiff]"); Shields, 89 F.Supp.2d at 640 (finding that Zuccarini "conducts no bona fide business"). Such use does not give rise to rights or legitimate interests of any kind in the Domain Names. See, e.g., America Online, Inc. v. Zuccarini, WIPO Case No. D2000-1495 (finding that Zuccarini has no rights or legitimate interests in the domain names <aolgams.com>, <aolinstant.com>, <aolinstantmessaging.com>, <aolinstantmessages.com>, <aolmessenger.com>, and <instant-messenger.com>); Encyclopedia Britannica, Inc. v. Zuccarini, WIPO Case No. D2000-0330 (finding that Zuccarini has no rights or legitimate interests in the domain names <encyclopedia brittanica.com>, <brtanica.com>, <bitannica.com>, or <britannca.com>, which Zuccarini used in the same manner he has used the domain names at issue in this action).

iv. Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).

Complainant alleges that the Policy includes four circumstances that constitute evidence of registration and use of a domain name in bad faith. See Policy 4(b). These four circumstances are not exhaustive, and panels may consider other circumstances which support finding that the respondent acted in bad faith. See, e.g., Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) (noting that the circumstances described in 4(b) are "without limitation" and that "other circumstances can be evidence" of bad faith).

Complainant argues that as in the Encyclopedia Britannica proceeding, there is "more than ample evidence of bad faith" in this case. Encyclopedia Britannica, Inc. v. Zuccarini, WIPO Case No. D2000-0330 (June 7, 2000). Zuccarini has plainly attempted to attract, for commercial gain, Internet users to his and other online locations by registering and using domain names that are confusingly similar to the famous marks of AOLTW’s subsidiaries. Zuccarini’s actions are designed to deceive Internet users into believing that AOLTW’s subsidiaries are associated or affiliated with, or sponsor or endorse, the parties whose goods and services are advertised in Zuccarini’s "pop-up" windows, to Zuccarini’s profit and AOLTW’s substantial detriment. Zuccarini’s actions thus constitute a textbook case of bad faith registration and use under the Policy, paragraph 4(b)(iv).

Zuccarini’s registration and use of the AOLTW Domain Names is also blocking AOLTW’s subsidiaries from owning and using domain names that Internet users are likely to use, by mistake, to reach the subsidiaries’ sites. In light of Zuccarini’s well-established pattern of engaging in the registration of domain names that are confusingly similar or identical to the well-known marks of others, Zuccarini’s actions in blocking Internet traffic from AOLTW's sites further constitutes bad faith registration and use in violation of the Policy, paragraph 4(b)(ii). See Bama Rags v. Zuccarini, NAF Case No. FA 0003000094380 (May 8, 2000).

B. Respondent’s contentions

i. Respondent does not dispute that the Complainant has registrations of the Trademarks.

ii. Respondent does not dispute that the Domain Names are identical or confusingly similar to the Trademarks.

iii. Respondent does not dispute that it lacks rights to or legitimate interests in the Domain Names.

iv. Respondent does not dispute that it registered or used the Domain Names in bad faith.

 

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."

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (WIPO Apr. 10, 2001), n. 3.

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) 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,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends that it has numerous registrations of the Trademarks and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the Trademarks. 15 U.S.C. § 1115. Complainant further alleges that several of its registrations are incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated goods. 15 U.S.C. §§ 1065 and 1115(b).

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. Respondent has not offered any evidence to meet his burden. Respondent has not contested the assertions by Complainant that it has valid registrations of the Trademarks. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the Trademarks.

Identity or Confusing Similarity

Complainant further contends that the Domain Names are identical with and confusingly similar to the Trademarks pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Complaint that the Domain Names are confusingly similar to the trademark.

As numerous courts and prior WIPO panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Sole Panelist notes that the entirety of the Trademarks with additional non-distinctive matter or an intentional misspelling of the Trademarks is included in each of the Domain Names.

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998).

A slight or common misspelling of the a trademark is likely to cause confusion, mistake or deception as to the source, origin, sponsorship or approval of Respondent’s services in that consumers and others are likely to believe Complainant authorizes or controls the website or that the website is associated with or related to Complainant.

Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to theTrademarks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Complainant alleges that Respondent has no relationship with or permission from Complainant for the use of the Trademarks.

Complainant further alleges that Respondent intentionally captures internet traffic for the sole purpose of re-directing that traffic to other websites for which Respondent makes a substantial profit.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant alleges that Respondent cannot demonstrate rights or legitimate interest in the Domain Names under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services, is not commonly known by any of the Domain Names, and seeks commercial gain by diverting customers.

The Complainant has sustained its burden of producing evidence that the Respondent lacks rights to or legitimate interests in the Domain Names.

The file contains no evidence adduce by Respondent to dispute that his use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(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

The Sole Panelist agrees with Complainant that Zuccarini has plainly attempted to attract, for commercial gain, Internet users to his and other online locations by registering and using domain names that are confusingly similar to the famous marks of AOLTW’s subsidiaries. Zuccarini’s actions are designed to deceive Internet users into believing that AOLTW’s subsidiaries are associated or affiliated with, or sponsor or endorse, the parties whose goods and services are advertised in Zuccarini’s "pop-up" windows, to Zuccarini’s profit and AOLTW’s substantial detriment. Zuccarini’s actions thus constitute a textbook case of bad faith registration and use under the Policy, paragraph 4(b)(iv).

The Sole Panelist also agrees with Complainant that Zuccarini’s registration and use of the AOLTW Domain Names is also blocking AOLTW’s subsidiaries from owning and using domain names that Internet users are likely to use, by mistake, to reach the subsidiaries’ sites. In light of Zuccarini’s well-established pattern of engaging in the registration of domain names that are confusingly similar or identical to the well-known marks of others, Zuccarini’s actions in blocking Internet traffic from AOLTW's sites further constitutes bad faith registration and use in violation of the Policy, paragraph 4(b)(ii).

The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraphs 4(b)(ii) and (iv).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Names are confusingly similar to the Trademarks, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Complainant.

 


 

Richard W. Page
Sole Panelist

Dated: December 1, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0827.html

 

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