v.
John Zuccarini and The Cupcake Patrol
a/ka Country Walk a/k/a Cupcake Party
[Indexed as: Encyclopaedia Britannica v. Cupcake Patrol]
[Indexed as: encyclopediabrittanica.com et al.]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0330
Commenced: 4 May 2000
Judgment: 7 June 2000
Presiding Panelist: Jeffrey M. Samuels
Domain name - Domain name dispute resolution policy - Identical - Confusingly similar - US Trademark - No rights or legitimate interests - Bad faith use - Bad faith registration - Bona fide business - Fair use Anti-cybersquatting Consumer Protection Act - Misspellings.
Complainant has earned billions of dollars from selling encyclopedias and other reference-related goods and services under the registered mark ENCYCLOPAEDIA BRITANNICA. Complainant owns U.S. trademark registrations for the term BRITANNICA.
Respondent registered the domain names in dispute: "encyclopediabrittanica.com"; "brtanica.com"; "bitannica.com"; and "britannca.com". These domain names were hyper-linked to either an advertisement web page or to Complainants www.britannica.com web site.
Held, Names Transferred to Complainant.
The domain names in dispute are virtually identical and confusingly similar to Complainants ENCYCLOPAEDIA BRITANNICA mark.
Respondents have no rights or legitimate interests in the domain names in dispute. Respondents did not conduct any bona fide business under their domain names, as there is no evidence that Respondents are making a legitimate noncommercial or fair use of the domain names, "without intent for commercial gain to misleadingly divert consumers."
Evidence of "bad faith" registration and use is based on the following
evidence: (1) Complainants marks are well-known and enjoy a strong
reputation; (2) Respondents have demonstrated a history of registering
domain names consisting of misspellings of widely-known marks or names;
(3) Respondents have been enjoined from engaging in the very conduct at
issue in this proceeding; and (4) Respondents failed to respond to Complainants
efforts to make contact.
The Panel notes that although a finding of "bad faith" intent pursuant
to the "Anticybersquatting Consumer Protection Act" does not compel a determination
that a domain name was registered and used in "bad faith" pursuant to Policy
guidelines, such a finding is accorded substantial weight in the Panel
proceedings.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Laws referred to
Anticybersquatting Consumer Protection Act
Cases referred to
Shields v. Zuccarini, 2000 U.S. Dist. Lexis 3350 (March 22, 2000)
Panel Decision referred to
--
Jeffrey M. Samuels, Panelist: -
1. Procedural Background
On April 25, 2000, the WIPO Arbitration and Mediation Center received
from Complainant, Encyclopaedia Britannica, Inc., a Complaint for decision
in accordance with the Uniform Policy for Domain Name Dispute Resolution,
adopted by the Internet Corporation of Assigned Names and Numbers (ICANN)
on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute
Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and
the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution
Policy.
The instant Administrative Proceeding was commenced on May 4, 2000.
The domain names in dispute are as follows: "encyclopediabrittanica.com";
"brtanica.com"; "bitannica.com"; and "britannca.com".
Respondents John Zuccarini and The Cupcake Patrol failed to respond
to the Complaint within the twenty (20) day period provided for in paragraph
5(a) of the Rules, and a "Notification of Respondents Default," dated
May 24, 2000, was forwarded by WIPO to Respondents.
The joinder of two Respondents in this proceeding is proper because
the registrant of the domain names in dispute is the same person. See Adobe
Systems Inc. v. Domain OZ, Case No. D2000-0057, paragraph 6, p.6 (Administrative
Panel Decision, March 22, 2000.) Annex A to the Complaint, consisting of
a copy of the printouts of a Whois database search of March 30, 2000, indicates
that both John Zuccarini and The Cupcake Patrol share the identical postal
address and the same administrative and billing contact, address, and telephone
number.
2. Findings of Fact
Since the late 1870s, Complainant has sold encyclopedias, dictionaries,
atlases and other reference-related goods and services throughout the U.S.
under the mark ENCYCLOPAEDIA BRITANNICA. The mark was first registered
in the U.S. in August 1950.
Complainant also owns U.S. trademark registrations for the term BRITANNICA
(Reg. Nos. 2,287,468; 1,309,991; and 1,506,869) and has applied to register
the term BRITANNICA.COM. Complainant also has registered or applied to
register the marks BRITANNICA and ENCYCLOPAEDIA BRITANNICA in a number
of other countries, including Canada, France, and the United Kingdom.
Complainant also owns a large number of domain names that include the
term BRITANNICA, such as BRITANNICA.COM and BRITANNICA.NET, as well as
misspellings of the term, such as BRITTANICA.NET and BRITTANICA.COM.
Complainant has sold many billions of dollars worth of encyclopedia,
reference, and other on-line goods and services under its marks throughout
the U.S. and has heavily advertised and promoted its marks. There is no
question that Complainants marks are famous.
On October 19, 1999, Complainant announced the debut of its web site
at www.britannica.com. It appears that Respondents registered the domain
names in dispute on or about October 22, 1999. (See May 4, 2000 letter
to WIPO from CORE Registrar indicating that domain name "encyclopediabrittanica.com"
was registered on October 22, 1999.)
Respondents use the brtannica.com and bitannica.com domain names to
hyperlink to advertisement web pages hosted by both Respondents and Complainant
(See Annexes F and G) and the "enyclopediabrittanica.com" and "britannca.com"
domain names to hyperlink to Complainants www.britannica.com web site.
On January 31, 2000, Complainant sent an e-mail to Mr. Zuccarini requesting
that he "cease and desist" from use of the domain name "encyclopediabrittancia.com".
See Annex D. On February 17, 2000, Complainants attorney sent a letter
to Mr. Zuccarini, at the postal address provided to the Internet Council
of Registrars, demanding transfer of the domain name to Complainant. See
Annex E. The letter was returned as "undeliverable."
Respondents, according to the complaint, have registered in excess
of 1,300 domain names, many of which are misspellings of widely known and
famous marks or celebrity names, including COSMOPOLITON.COM, OPHRAWINFREY.COM,
and JENEFERLOPEZ.COM. See Annex H.
Attached as Annex J to the Complaint is a copy of the decision of the
U.S. District Court for the Eastern District of Pennsylvania granting a
preliminary injunction under the "Anticybersquatting Consumer Protection
Act" (15 U.S.C. paragraph 1125(d)) against John Zuccarini, trading as Cupcake
City, for his bad faith registration of domain names which are substantially
similar to plaintiffs marks. See Shields v. Zuccarini, 2000 U.S. Dist.
Lexis 3350 (March 22, 2000). In that case, the Court found that Zuccarini
had registered domain names consisting of misspellings of plaintiffs mark
and hosted web sites at these domain names featuring ads for other sites
and credit card companies. Zuccarini received between ten and twenty-five
cents from advertisers for every click. In entering a preliminary injunction,
the district court found "overwhelming evidence that Zuccarini acted with
a bad-faith intent"1 and that he "conducts no bona fide business and offers
no goods or services that have anything to do with *** any of the other
sites he has registered."
3. Conclusions
In the instant administrative proceeding, Complainant must prove each
of the following elements: (1) that Respondents domain names are identical
or confusingly similar to a trademark or service mark in which the Complainant
has rights; (2) that Respondents have no rights or legitimate interests
in respect of the domain names in dispute; and (3) that Respondents registered
and use the domain names in dispute in bad faith. The Panel determines
that Complainant has met its burden.
Respondents "encyclopediabrittanica.com" domain name is virtually
identical and confusingly similar to Complainants ENCYCLOPAEDIA BRITANNICA
mark. Respondents domain names brtannica.com, britannca.com, and bitannica.com
are virtually identical and confusingly similar to Complainants BRITANNICA
and BRITANNICA.COM marks.
The Panel further determines that Respondents have no rights or legitimate
interests in the domain names in dispute. As found by the District Court
in Shields, and as the evidence in this proceeding makes clear, Respondents
do not conduct any bona fide business under their domain names. There also
is no evidence that Respondents are making a legitimate noncommercial or
fair use of the domain names, "without intent for commercial gain to misleadingly
divert consumers." See paragraph 4. c.(iii) of the Policy. In fact, the
opposite is true. Taking advantage of consumers known disposition to misspell
domain names, Zuccarini has diverted Internet traffic to his web sites,
thereby earning substantial revenue from advertisers. According to the
Shields court, Zuccarinis click-based revenue now approaches $1 million
per year.
Finally, there is more than ample evidence of "bad faith" registration
and use. As noted by Complainant, the fact that: (1) Complainants marks
are well-known and enjoy a strong reputation; (2) Respondents have demonstrated
a history of registering domain names consisting of misspellings of widely-known
marks or of the names of celebrities; (3) Respondents have been enjoined
from engaging in the very conduct at issue in this proceeding; and (4)
Respondents failed to respond to Complainants efforts to make contact
provide strong support for a determination of "bad faith" registration
and use. It is clear that Respondents, by using the domain names in issue,
have intentionally attempted to attract, for commercial gain, Internet
users to their web site, by creating a likelihood of confusion with Complainants
marks as to the source, sponsorship, affiliation, or endorsement of Respondents
web site, within the meaning of paragraph 4. b. (iv) of the Policy.
4. Relief
In view of the above, the Panel orders that the contested domain names
be transferred to Complainant.
Jeffrey M. Samuels
Presiding Panelist
Dated: June 7, 2000
1. While a finding of "bad faith" intent pursuant
to the "Anticybersquatting Consumer Protection Act" does not compel a determination
that a domain name was registered and used in "bad faith" pursuant to paragraph
4. B. of the Policy, given that the relevant factors under the Act and
Policy, to some extent, differ, such a finding is entitled to substantial
weight.
Domain Name Transferred