WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies

Case No. D2000-1369

 

1. The Parties

The Complainant is e-Duction, Inc, U.S.A.

The Respondent is John Zuccarini, doing business as The Cupcake Party and Cupcake Movies, U.S.A.

 

2. The Domain Name and Registrar

The domain name at issue is <eduction.com>. The domain name is registered with Network Solutions, Inc.

 

3. Procedural Background

Complainant filed its Complaint under the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on October 11, 2000 and in hardcopy on October 12, 2000. On October 23, 2000, the Center formally commenced this proceeding. Respondent timely filed a Response and elected a three-member Administrative Panel. On December 28, 2000, after clearing for potential conflicts, the Center appointed the Panel.

 

4. Factual Background

Complainant is a corporation organized under Delaware law. Its business involves credit card services used by various employers. An employer may offer Complainantís services as an employee benefit, by which employees may pay for purchases, interest free, through deductions from future paychecks. Although it established its business under another name, Complainant adopted the E-DUCTION mark and filed service mark and trademark applications for the mark in early 2000 in the United States, Canada, and the European Community. Complainant alleges that it had spent in excess of $400,000 for E-DUCTION marketing initiatives at the time of filing the Complaint, and expects to spend in excess of $4 million in 2001.

Respondent is an individual operating under the names The Cupcake Party and Cupcake Movies. The Panel takes arbitral notice of the multiple successful proceedings initiated against Respondent and his related companies in the past, under both the Policy and, in the United States, under the Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. ß 1125(d). See, e.g., Hewlett-Packard Co. v. Cupcake City, Case No. 0002000093562 (NAF Mar. 31, 2000); Bama Rags, Inc. v. Zuccarini, Case Nos. 0003000094380 & 0003000094381 (NAF May 8, 2000); Hewlett-Packard Co. v. Zuccarini, Case No. 00040000994454 (NAF May 30, 2000); Encyclopedia Britannica, Inc. v. Zuccarini, Case No. D2000-0330 (WIPO June 7, 2000); Spiegel Catalog, Inc. v. Zuccarini, Case Nos. AF-0237 a-d (eResolution July 28, 2000); Diageo P.L.C. v. Zuccarini, Case No. D2000-0541 (WIPO Aug. 22, 2000); Dow Jones & Co., Inc. v. Zuccarini, Case No. D2000-0578 (WIPO Aug. 28, 2000); Yahoo!, Inc. v. Cupcake Patrol, Case No. D2000-0928 (WIPO Sept. 29, 2000); Shields v. Zuccarini, 89 F. Supp. 2d 634 (E.D. Pa. 2000); Electronics Boutique Holdings v. Zuccarini, 2000 WL 1622760 (E.D. Pa. Oct. 30, 2000); Abercrombie & Fitch Stores, Inc. v. Zuccarini, Case No. D2000-1004 (WIPO Nov. 1, 2000); Minolta Co. v. Cupcake City, Case No. D2000-1291 (WIPO Jan. 18, 2001); Kidman v. Zuccarini, Case No. D2000-1415 (WIPO Jan. 23, 2001).

 

5. Partiesí Allegations

Complainant alleges that it has rights in the mark "E-DUCTION" because it has used the mark in commerce since 2000 and because of its pending trademark applications (one of which, the Panel notes, has since been approved by the U.S. Patent and Trademark Office ("PTO") and published for opposition). (Footnote 1)

Complainant further alleges that Respondent has no rights or legitimate interests in the domain name at issue. Complainant states that Respondent is a well-known "typosquatter" who registers identical trademarks as part of domain names, as well as common misspellings of trademarks and celebrity names, and even ordinary words, in order to profit from public confusion. Complainant alleges that many of Respondentís websites, including that for the domain name at issue, feature advertisements for other sites and credit card companies, with "pop-up" ads that attempt to force visitors to click on advertisements in order to exit. Complainant alleges that visitors are "mousetrapped" into clicking on the ads, providing Complainant with revenue, even though they do not desire the goods or services offered. Complainant relies on the Shields case, in which the District Court for the Eastern District of Pennsylvania found that Respondent was "literally in the business of profiting on the publicís confusion," and that his large revenue stream suggests that he deceives many people. 89 F. Supp. 2d at 639, 640 n.7.

With respect to the <eduction.com> domain name, Complainant alleges that Respondent does not use it in connection with a bona fide offering of goods or services and is not commonly known by any remotely similar name. Complainant alleges that, before the Complaint was filed, <eduction.com> redirected visitors to a site where at least 9 pop-up ads appeared, including several credit card offers. According to Complainant, many of the ads linked to other sites with some connection to Respondent. Complainantís exhibits include printouts from the various websites reached when attempting to access <eduction.com>. Complainant alleges that, as a result of this use, a visitor never arrives at an "eduction" website, and that none of the redirected or pop-up sites reference "eduction" or any variation of the term. In fact, Complainant contends that Respondent uses the same pop-up ad practice on many of his other sites, such as <backstreetboyspics.com>. As a result of Respondentís approximately 3,000 domain name registrations, Complainant asserts that Respondent cannot show legitimate interests in so many domain names, including the domain name at issue.

Finally, Complainant alleges that Respondent registered and used the domain name in bad faith. Complainant contends that launching at least nine different pop-up websites when users type in <eduction.com> not only diverts Complainantís customers to another website, but also causes source confusion between Complainantís credit card services and Respondentís credit card advertisements. Complainant points to the numerous instances in which Respondent was found to have registered and used domain names, including misspellings, in bad faith.

Respondent alleges that, before he received the Complaint, he had no knowledge of Complainantís existence or any of its trademarks, and that Complainant lacks proof of the fame of its mark.

He contends that he is in the business of "warehousing and utilizing domains primarily of a generic nature" and that he has never sought to sell or transfer any such domains. Response at 4. He alleges that he registered the domain name at issue on August 25, 1999, and has utilized the domain continuously since then to link to some of his other sites, which sites deal with content relating to education or commercial ventures associated with education.

Respondent alleges that he has a legitimate interest in the domain name at issue, because it is an intentional misspelling of the word "education" and the web site is intended to assist the user in his or her education, "particularly in learning to spell the word Ďeducation.í" Response at 4. He contends that his other domain names involving misspellings of "education," including <edcation.com>, <educatin.com>, and <eduation.com>, have all had this purpose. He further alleges that his use of the domain name in commerce predated that of Complainantís mark (and its website <e-duction.com>). He also alleges that he is in the process of further developing the domain name at issue as an education portal.

Respondent contends that his ownership of a large number of domain names does not make him a "cybersquatter." He states that his domain names are either generic or misspellings, are not for sale, and are being utilized in his business. Moreover, he alleges that he has consistently refused to sell his domains to avoid the possibility of being accused of cybersquatting.

Respondent alleges that Complainant lacks proof of alleged confusion as to source or sponsorship. He further denies "mousetrapping" visitors, alleging that the banner ads on many of his sites do not require users to click on them to leave, and alleging that <eduction.com> does not feature such ads.

Finally, Respondent alleges that he did not register or use the domain name in bad faith when, unaware of Complainantís then non-existent mark, he registered a misspelling of the generic word "education."

 

6. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(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;

(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and used in bad faith.

This is an unusual case. Respondent registered the domain name before Complainant established trademark rights. Unlike many of the other assertions in Respondentís submission, (Footnote 2) his claim that he was unaware of Complainantís business or not-yet extant mark at the time of registration thus is credible, as is his assertion that he registered <eduction.com> because it was a misspelling of "education." Moreover, Respondentís initial intentions were not to attempt to profit by mistakes as to Complainantís mark, which is the case when he registers misspellings of registered marks or famous names, but rather, to profit from the misspelling of a generic word, which misspelling happens to be identical to Complainantís mark.

Even if Respondent has since used the domain name in bad faith, the fact that the mark did not exist at the time of his registration means that the registration was not in bad faith. This case thus presents the relatively novel question of whether bad faith use alone, without bad faith registration, is sufficient to justify transfer. For the reasons discussed below, because the Policy requires both bad faith use and bad faith registration, the Panel concludes that it must deny the Complaint.

A. <Eduction.com> is Confusingly Similar to E-duction.

Respondent does not contest that "eduction" is identical or confusingly similar to "E-DUCTION." He does, however, argue that Complainantís trademark rights are weak because the mark is newly adopted and as yet unregistered, and Complainant has provided no evidence that it is widely recognized. Nonetheless, Complainant has represented to this Panel that the mark is in use and has claimed, before the PTO, first use since March 2000. Moreover, by virtue of the PTOís approval of at least one of Complainantís pending applications, the PTO has, apparently, determined that the mark is inherently distinctive. See eAuto, L.L.C. v. Triple S. Auto Parts, Case No. D2000-0047 (WIPO, Mar. 24, 2000). Respondent does not dispute these facts, and thus the Panel concludes that Complainantís use of its mark is sufficient to give it common law trademark rights.

B. Respondent Lacks a Legitimate Interest in the Domain Name.

Whether Respondent has a legitimate interest in a misspelling of a generic word is an interesting question. Some uses of typographic-error domain names can plainly be legitimate: for example, when trademark owners register misspellings to avoid losing customers to mistakes, or to stave off Respondent and his like.

It is also possible that a site relating to the misspelled word could be a legitimate use. In this regard, the Panel rejects Respondentís claim that his use of the site was somehow "educational." Education does not consist of diverting visitors to numerous other websites containing multiple advertisements for credit cards, music downloads, and other things. In fact, Respondentís practice of redirecting visitors through other sites prevents those visitors from understanding that they have committed a spelling error, and might only convince them that "education.com" is a bad place to visit. Although Respondent alleges that no such pop-up ads are present at <eduction.com>, the Panel is convinced that Respondent has simply removed the ads from the site (and related "education" misspelling sites) after notice of the pendency of this dispute. (Footnote 3) See Complaint Annex G (pop-up ad printouts generated from accessing eduction.com on August 27, 2000). Notably, though Respondent makes representations about the current status of the website, he does not deny that, prior to this dispute, he used pop-up ads to redirect away from the domain name at issue. Even if Respondent may be correct that a sophisticated Internet user would not be "mousetrapped" into clicking through those ads, the Panel finds that Respondentís conduct before notice of this dispute was not reasonably connected to "education" in any sense.

More broadly, a use that merely operates to redirect mistaken typists to other sites is not enough to create a legitimate use without a greater connection between the domain name and the redirected site. Examples of a sufficient connection, beyond mere correction of a misspelling through automatic redirection, might include redirection from a laudatory domain name that could reasonably be used to describe a wide range of things, including the goods or services offered on the redirected site, or redirection to a site offering services or goods incorporating the mark used in the redirecting domain name (e.g., <goofy.com>, which redirects visitors to the main Disney site). Respondentís use of the domain name resembles none of these activities. Instead, Respondent uses this domain name as he uses many others: to display ads for unrelated goods and services.

The Panel concludes that Respondentís use of the domain name at issue does not give him a legitimate interest in the domain name.

C. Respondent Has Used, But Not Registered, the Domain Name in Bad Faith.

In the ordinary case, a business adopting a new mark in todayís world must take the Internet as it finds it. If someone else has already registered a domain name identical or confusingly similar to the proposed new mark, that domain name will be unavailable to the business unless it negotiates a transfer. This is true even if the registrant is in other respects behaving badly, as Respondent is in this case.

On this record, the Panel finds that Respondent was not aware of Complainantís not-yet extant mark at the time he registered the domain name. Accordingly, Respondentís registration of the domain name can not have been in bad faith.

Respondent, however, may well have used the domain name in bad faith. Since Complainantís adoption of the E-DUCTION mark for its credit card services in March 2000, Respondent has run credit card advertising in conjunction with the domain name, which means that he may have used the domain name to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion with Complainant. In the normal case, such a showing may be sufficient to satisfy paragraph 4(b)(iv) of the Policy.

The question, then, is whether bad faith use alone is sufficient to satisfy the bad faith requirement of the policy. In one sense, paragraph 4(b)(iv) may be read as supporting such an argument because that paragraph refers only to bad faith "use," and does not also discuss registration. In the broader context of the Policy, though, it is clear that both bad faith use and bad faith registration are required. Policy paragraph 4(a)(iii); World Wide Wrestling Federation v. Bosman, Case No. D99-0001 (WIPO Jan. 14, 2000); Bandon Dunes L.P. v. DefaultData.com, Case No. D 2000-0431 (WIPO July 13, 2000); Interep National Radio Sales, Inc. v. Technical Staffing Corp., Case No. D2000-0175 (WIPO May 26, 2000). Although bad faith use may, in appropriate cases, give rise to an inference of bad faith registration, such an inference cannot be made where, as here, Complainantís mark was not yet in existence at the time of the domain name registration.

The Panelís conclusion should in no way be understood as an endorsement of Respondentís registration and use. (Footnote 4) Nor does it justify Respondentís abusive conduct toward the Panel, such as his implicit claim that the site was the same before notice of the dispute and his explicit claim that the site content was education-related. These assertions demonstrate Respondentís contempt for truth and fair dealing. Nonetheless, the Policy is deliberately limited in scope and, accordingly, unable to address all instances of domain name misuse. Any changes, whether to the conjunctive "registration and use" requirement, to the definition of bad faith that does not account for bad faith towards the Internet community as a whole, or to the creation of an equitable rule allowing Panels to rule against a party based on abuse of the Policy and Rules, would have to be publicly debated and formally adopted by ICANN.

 

7. Decision

The Panel concludes that the domain name is confusingly similar to a mark in which Complainant has rights, that Respondent has no legitimate interest in the domain name, and that Respondent has made bad faith use of the domain name. Nevertheless, because Respondent did not also register the domain name in bad faith, the Panel denies the Complainantís request that the domain name be transferred from Respondent to Complainant.

 


 

David H. Bernstein
Presiding Panelist

Jeffrey M. Samuels
Panelist

Dated: February 5, 2001

 


 

Opinion Concurring in Part and Dissenting in Part

This Panelist concurs in the decision of the majority that the Complainantís request for transfer of the domain name should be denied, because the Complainant has failed to show bad faith registration.

The rest of the majority opinion is dicta, unnecessary to the resolution of the case, and arguably unsupported by the record. The Complainant had no interest in the mark at the time of the registration of the domain name, so there is no need to decide whether it has subsequently obtained a protectible interest. The facts with respect to the Respondentís rights and interest in the domain name and his use of the domain name are not demonstrably different from those of many good faith domain name registrants. The determination of the rights and interests of domain name holders is an important area of Internet law still in the early stages of development, which should not be constrained by unnecessary rulings in cases like this one.

The majority stresses the Respondentís cybersquatting activities as set forth in other ICANN decisions, but those activities and those decisions are not relevant here. Even a blind pig finds an acorn sometimes.

 


 

Dana Haviland
Panelist

Dated: February 5, 2001

 


 

Footnotes:

  1. As other panels have noted, it is fully appropriate for panels to take arbitral notice of facts that are publicly available. Bass Hotels & Resorts, Inc. v. Rodgerall, Case No. D2000-0568 (WIPO Aug. 7, 2000), at n.1.
  2. Among the inherently incredible assertions made in Respondentís submission are that Respondent has used the domain name to link to sites that "deal with content relating to education," that "the web site is intended to assist the user in his or her education, particularly in learning to spell the word Ďeducation,í" and that "Respondent is in the process of further developing the domain eduction.com as an education portal." Also not credible is Respondentís claim that he is in the business of warehousing "domains primarily of a generic nature." Complainant has submitted a report from Network Solutions showing that, on its registry alone, Respondent has registered domain names incorporating such non-generic marks (or obvious misspellings thereof) as Ally McBeal, Alisa Milano, Pamela Anderson , Anna Kournikova, AOL Instant Messaging, Back Street Boys, Baywatch, Blair Witch Project, Blue Mountain Greeting, Britanny Spears, Buffy the Vampire Slayer, and many, many more.
  3. After the initiation of this dispute, Respondent apparently revised his <eduction.com> site to include a photograph of Albert Einstein and a link to a website of Albert Einstein quotations. Respondentís revision of the site after he was on express notice of the dispute is an obvious pretext that provides further evidence of his bad faith. See, e.g., Corinthians Licenciamentos LTDA v. Sallen, Case No. D2000-0461 (WIPO July 17, 2000).
  4. In addition, the Panel expressly rules that this decision is without prejudice to Complainantís right to institute a new domain name proceeding should Respondent transfer the domain name registration in a way that violates the Policy now that he is on express notice of Complainantís trademark rights.