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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Apogee Software Ltd. v. John Zuccarini d/b/a Country Walk
Case No. D2002-0885
1. The Parties
The Complainant is Apogee Software Ltd. of Garland, Texas, United States of America ("U.S.A.").
The Respondent is John Zuccarini, d/b/a Country Walk, of Andalusia, Pennsylvania, U.S.A.
2. Domain Name and Registrar
The domain name at issue is <dukenukem3d.com> (the "Domain Name"). The registrar (the "Registrar") is CSL Computer Service Langenbach GmbH d/b/a Joker.com (<joker.com>) in Duesseldorf, Germany.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on September 24, 2002, and in hardcopy on September 25, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel (the "Panel") is satisfied that this is the case.
On September 25, 2002, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant. On September 25, 2002, the Center sent to the Registrar a request for verification of registration data. On the same day, the Registrar confirmed that it is the Registrar of the Domain Name and that it is registered in the Respondent's name.
Having 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, and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, the Center on October 3, 2002, sent to the Respondent, with a copy to the Complainant, the Complaint and a notification of Complaint and Commencement of Administrative Proceeding. This notification was sent by the methods required under Paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is October 3, 2002.
The Center notified Respondent that the last day for submitting a Response to the Complaint was October 23, 2002. The Center never received a Response. On October 24, 2002, the Center notified the Parties of the Respondent’s default.
On October 30, 2002, the Center appointed the administrative panel (the "Panel"). The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by the Center or the Panel, as a consequence of which the original date scheduled for the issuance of the Panel’s decision was November 13, 2002.
4. Factual Background
Complainant, Apogee Software Ltd., is a manufacturer and seller of computer and video gaming products and services. The trademark DUKE NUKEM is a federally registered trademark in the United States and has been in continuous use since at least as early as 1991. The mark is owned by Complainant.
Complainant’s official website is connected to the domain name <dukenukem.com>. Complainant also maintains related websites such as <dukenukem.net>, <duke3d.com>, and <dukenukemforever.com>.
According to the Registrar, Respondent, John Zuccarini d/b/a Country Walk, registered the Domain Name <dukenukem3d.com> on January 11, 2000.
5. Parties’ Contentions
Complainant contends as follows:
Complainant is engaged in the business of manufacturing video gaming products and providing related services. Complainant is a recognized leader and innovator in the person computer gaming industry.
In 1996, Complainant published and released the "DUKE NUKEM 3D" computer video game, which was the third installment in the well-known and highly successful "DUKE NUKEM" video game franchise. Complainant subsequently released "DUKE NUKEM 3D – ATOMIC EDITION" and "DUKE NUKEM 3D – PLUTONIUM PAK." Since 1995, Complainant has sold more than five million copies of video games bearing the mark and more than two and a half million copies of the "DUKE NUKEM 3D" related games world-wide.
Since 1991, the DUKE NUKEM mark has been used continuously in the United States and around the world by Complainant in association with computer video gaming products. Complainant’s DUKE NUKEM mark is registered on the Principal Register in the U.S. for computer game software for entertainment purposes.
According to the Registrar, Respondent registered the Domain Name on January 11, 2000. On September 3, 2002, after Complainant learned about the registration, Complainant’s counsel sent Respondent a cease and desist letter by certified mail. This letter was returned to Complainant’s counsel as undeliverable. Complainant was, however, unable to determine any other mailing address for Respondent. Upon Complainant’s inability to reach Respondent in an attempt to settle the matter through other means, Complainant proceeded with the Complaint.
Respondent is not related to Complainant, is not a licensee of Complainant, and was never authorized by Complainant to use Complainant’s mark or to apply for any domain name incorporating the mark. The Domain Name does not reflect the name of Respondent’s corporate identity nor does Respondent have any rights to any trade names or trademarks consisting in whole or in part of the mark DUKE NUKEM. Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Respondent has registered the Domain Name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. In addition, Respondent has engaged in a pattern of such conduct, as discussed below. There is little chance that Respondent unknowingly and in good faith picked the name DUKE NUKEM 3D as a domain name.
Respondent’s bad faith in registering the Domain Name is further evidenced by Respondent’s use of the Domain Name. Respondent’s Domain Name does not resolve to a website, but rather direct-links users to several pornographic websites and "pop-up" advertisements including <hankypanky.com>. The mark DUKE NUKEM does not appear on any of the web pages that are automatically opened when the website is accessed, nor is there a viewable web page at the address. Thus, by using the Domain Name, Respondent has intentionally attempted to attract Internet users to its website or other on-line locations for Respondent’s own commercial gain, namely the viewing of the advertising sold by Respondent and the related pornographic sites. Respondent is intentionally drawing visitors based on the popularity of the DUKE NUKEM video game franchise. This evidence unequivocally depicts bad faith by Respondent.
In sum, Respondent is using the Domain Name that is identical to Complainant’s protected mark, and such use is in bad faith. Respondent’s actions have served to intentionally divert potential customers from Complainant’s website. Because Respondent has no legitimate interests or rights in the Domain Name, it is violating Complainant’s trademark rights.
Respondent failed to submit a Response to the Complaint.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The 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 Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
Complainant’s mark DUKE NUKEM is a federally registered trademark in the United States. The evidence presented by Complainant demonstrates that Complainant’s mark has been used extensively by Complainant for approximately 11 years. The Panel is convinced that the mark is well known in the computer video gaming field. The Panel thus finds, given the totality of unrebutted evidence, that the mark DUKE NUKEM is protected by federal and common law.
The Panel next looks to whether the Domain Name is confusingly similar to Complainant’s mark. The Panel finds that the Domain Name <dukenukem3d.com> is, in part, identical to Complainant’s mark DUKE NUKEM and is thus confusingly similar to Complainant’s mark.
The standard of confusingly similar has been reached and the requirement of Paragraph 4(a)(i) is met.
C. Rights or Legitimate Interests of the Respondent
Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name. The Domain Name is identical to Complainant’s mark, and Complainant did not grant Respondent a license to use Complainant’s mark. Thus, a prima facie case has been made by Complainant.
Respondent’s failure to respond to the Complaint allows the inference that the evidence would not have been favorable to Respondent. So, unfortunately, does Respondent’s history of improperly filing domain names as a cybersquatter. Accordingly, the Panel finds that Respondent has no legitimate interests in the Domain Name. Therefore, the requirement of Paragraph 4(a)(ii) is met.
D. Bad Faith
Complainant alleges that Respondent registered and used the Domain Name in bad faith. Respondent has made no use of the Domain Name except to direct-link Internet users to pornographic websites and advertisements. In fact, as discussed below, Registrant has been involved in numerous domain name proceedings based on his registration of hundreds of misspelled domain names. Thus, it is clear from Respondent’s use of the Domain Name that Respondent has acted in bad faith. In addition, Registrant’s registration of other trademarked domain names, as discussed below, further portrays the malicious intentions of Respondent.
The Panel finds that Respondent’s registration and use of the Domain Name was in bad faith and thus, the requirement of Paragraph 4(a)(iii) is met.
7. Implications of This Case
The Panel would like to take this opportunity to discuss salient issues of trademark and Internet law that are implicated by this case. Respondent is famous for egregious and malicious registration of domain names. Respondent has repeatedly registered domain names, including many valuable trademarks of famous companies, for his own commercial benefit. In fact, there are more than 45 WIPO decisions involving bad faith registration of domain names by Respondent. Such examples include: WIPO Case No. D2002-0487 (Registrant registered <britannicaonline.com>); WIPO Case No. D2000-0578 (Registrant registered <wallstreetjounal.com> and <wallstreetjournel.com>); WIPO Case No. D2000-0928 (Registrant registered <yahholigans.com>, <yahoemail.com>, <yahofinance.com>, <yahogames.com>, <yaholligans.com>, <yahomaps.com>, <yahooagans.com>, <yahoochatt.com>, <yahoogans.com>, <yahoogreatings.com>, <yahoogretings.com>, <yahoogrettings.com>, <yahoolagains.com>, <yahoolagians.com>, <yahoolaigains.com>, <yahoolgains.com>, <yahoolgians.com>, <yahooliagans.com>, <yahooligains.com>, <yahooligians.com>, <yahoomesenger.com>, <yahoomessager.com>, <yahoomessinger.com>); WIPO Case No. D2000-1285 (Registrant registered <saksfithavenue.com>); WIPO Case No. D2000-1004 (Registrant registered <abecrombie.com>, <abercrombe.com>, <abercromie.com>, <abacrombie.com>, <abercrombiefinch.com>, <ambercrombiefitch.com>, <abercrombi.com>, <abercombie.com> and <abercrombieandfitch.com>); WIPO Case No. D2000-1495 (Registrant registered <aolgams.com>, <aolinstant.com>, <aolinstantmessaging.com>, <aolinstantmessages.com>, <aolmessanger.com>, <msninstantmessenger.com>, <instant-messenger.com>, <icqgreatings.com>, <winnamp.com> and <1001winampskin.com>); WIPO Case No. D2001-0654 (Registrant registered <backstreeboys.com>, <backsreetboys.com>, <backstreetboyspics.com>, <backstreetboyspictures.com>, <bakstreetboys.com>, <backstretboys.com>, <bacstreetboys.com>, <backtreetboys.com>, <backstreetsboys.com>, <backsteetboys.com>, and <backstreetboyz.com>); WIPO Case No. D2001-0700 (Registrant registered <starwarspics.com>, <starwarspictures.com>, <starwarssounds.com>, <starwarstrailer.com>, and <starwarswallpaper.com>); WIPO Case No. D2001-1260 (Registrant registered <nordstom.com>); WIPO Case No. D2002-0354 (Registrant registered <officmax.com>); and WIPO Case No. D2002-0582 (Registrant registered <poterybarn.com>).
In addition to the numerous WIPO domain name dispute cases, the Federal Trade Commission brought an action against Respondent earlier this year seeking "permanent injunction relief and monetary relief for alleged unfair and deceptive acts or practices by [Respondent] in connection with [Respondent’s] concerted course of activity involving the redirecting of consumers from their intended destinations on the World Wide Web to his own Web pages, where he then obstructs consumers from those pages through a series of Web pages that display advertisements for goods and services, for his financial gain." Federal Trade Commission v. John Zuccarini, Civil Action No. 01-CV-4854 (E.D.P.A. 2002). The U.S. District Court permanently enjoined Respondent from redirecting and obstructing consumers on the Internet. See id. In addition, the court fined Respondent $1,897,166. See id.
These repeated examples of Registrant’s malicious registration of well known trademarks speak to the very purpose behind the WIPO. The Registrant’s actions show why it is necessary for an organization such as the WIPO to have the power to sanction such bad faith use of domain names. Without such an organization wielding enforcement and sanction powers, persons such as the Respondent would continue to register domain names that incorporate well known companies’ trademarks. Such persons would, in effect, trample the foundations of trademark law and would benefit, in essence, by unabashedly stealing the goodwill of others, even for a short time until UDRP proceedings are resolved.
Companies expend large amounts of effort, time and resources in order to bring value to their trademarks. Persons such as the Respondent should not be permitted to prey on such companies simply because Internet domain name law has not caught up with trademark protection law.
The Panel, having found that the Domain Name is identical and confusingly similar to Complainant’s mark, that Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name has been registered and is being used in bad faith, finds in favor of Complainant.
The Panel directs that the Domain Name <dukenukem3d.com> be transferred to the Complainant.
Maxim H. Waldbaum
Dated: November 13, 2002