WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
United Feature Syndicate, Inc. v. Mr. John Zuccarini
Case No. D2000-1449
1. The Parties
The Complainant is United Feature Syndicate, Inc. ("Complainant"), a Delaware corporation with its principal place of business at 200 Madison Avenue, New York, New York, USA.
The Respondent, Mr. John Zuccarini ("Respondent"), is the registrant of the domain name <dillbert.com> with a listed mailing address of 957 Bristol Park, Suite D6, Andalusia, Pennsylvania, USA. The Respondent is also listed as the Administrative Contact for the registration of this domain name.
2. The Domain Name and Registrar
The domain name in issue is <dillbert.com>.
The registrar of the domain name <dillbert.com> is CORE Internet Council of Registrars ("CORE"), located at World Trade Center II, 29 route de Pre-Bois, CH-1215, Geneva, Switzerland.
3. Procedural History
On October 24, 2000, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center ("Center") concerning the domain name <dillbert.com> and paid the required filing fee for appointing a single member Panel. On October 27, 2000, the Center sent an "Acknowledgement of Receipt of Complaint" by e-mail to the Complainant and a copy of the Acknowledgement to the Respondent.
On October 31, 2000, "Request for Verification" concerning the domain name was sent to CORE. On November 3, 2000, CORE provided to the Center a Verification to the Request stating, in pertinent part, that: (i) it had not received the Complaint from the Complainant; (ii) it is the registrar of the domain name <dillbert.com>; (iii) "John Zuccarini" is the current registrant of the domain name registration with a listed mailing address of 957 Bristol Pike, Suite D-6, Andalusia, PA 19020, USA; (iv) "John Zuccarini" is the administrative contact for the domain name registration with a listed e-mail address of johnZ@cupcakeparty.com; (v) the Uniform Domain Name Dispute Resolution Policy has been COREís policy since December 1, 1999; and (vi) the domain name is currently "active".
Although CORE indicated in its Verification that it had not received the Complaint from the Complainant, the Complainant stated in the Complaint that a copy of the Complaint was sent to CORE by certified U.S. mail and e-mail. Based upon this statement, the Center found the Complaint to be in compliance with the formal requirements of ICANNís Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANNís Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and WIPOís Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
On November 8, 2000, the Center sent "Notification of Complaint and Commencement of Administrative Proceeding" to the Respondent and to CORE along with a copy of the Complaint. The Respondent failed to respond to the Complaint within the twenty day period provided for in paragraph 5(a) of the Rules. On November 29, 2000, the Center sent a "Notification of Respondent Default" by e-mail to the Respondent and a copy of the Notification to the Complainant.
On December 5, 2000, the Panelist submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center and on December 8, 2000, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties notifying them that an Administrative Panel consisting of a single Panelist had been appointed in the proceeding.
Based upon a review of the record for this proceeding, the Panelist concurs with the Centerís finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules.
4. Factual Background
The Complaint is based on numerous registrations for the mark DILBERT in the United States as well as in six other countries and the European Community. The Complaint is also based on registrations for the mark DILBERT and Design in over twenty countries and the European Community, registrations for the marks DILBERT SOFTWEAR, DILBERTíS WORLD, DILBERT ZONE, and THE DILBERT ZONE in the United States, registrations for the marks DILBERTíS WORLD and DILBERT ZONE in several foreign countries and the European Community and pending U.S. and foreign applications for DILBERT, DILBERT and Design, DILBERT ACCOMPLISH-MINTS, DILBERT APPOINT-MINTS, DILBERT.COM, DILBERT GUMMY-BERTS, DILBERT HARASS-MINTS, DILBERT IMPROVE-MINTS, DILBERT MANAGE-MINTS, DILBERT PAY-MINTS, DILBERT PERFORM-MINTS and DILBERT POSTPONE-MINTS. A chart listing these marks, their respective countries and classes and, if applicable, registration numbers and dates, along with copies of certificates for some of the listed registrations were attached in a first Annex C to the Complaint. Included in a second Annex C was a printout of a Trademarkscan® search of the Complainantís pending applications and registrations for the mark DILBERT and variations thereof.
A search result from a query of Network Solutions, Inc.ís Whois database shows that the domain name <dilbert.com> was registered on January 21, 1997 to the Complainant and that there is a corresponding Web site located at this domain name.
A search result from a query of COREís Whois database shows that the domain name <dillbert.com> was registered on December 3, 1999 to the Respondent. The Panelist found that when attempting to access <http://www.dillbert.com>, multiple browser windows opened on the Panelistís desktop and nine different advertising/promotional sites were then displayed with numerous banner advertisements, none of which used the domain name <dillbert.com>. Three of the nine sites opened additional windows to other advertising/promotional sites either when one attempted to leave a displayed site or when one remained on the displayed site for a designated period of time.
5. Partiesí Contentions
The Complainant asserts that it is the owner of numerous trademarks worldwide for the world-famous trademarks DILBERT and DILBERT and Design and variations thereof with the DILBERT marks being registered in over twenty five countries and with the European Community. The Complainant asserts that it first used the DILBERT mark in commerce in the United States on March 24, 1989 and that the mark was first registered in the United States on December 5, 1989. Complainant asserts that it has continuously used these marks, without interruption, in commerce since the respective first use of each and that each of the DILBERT marks is famous, inherently distinctive, fanciful and arbitrary.
The Complainant asserts that in accordance with the Rules, para. 3(b)(ix), it has submitted as evidence "Annex D [sic] which contains a list of 30 DILBERT registrations [sic] owned by Complainant, including a detailed listing of the International classes in which the marks are registered and a detailed description of the goods and services on which and in connection with, said marks are used."
The Complainant asserts that the Respondent is an individual who, upon information and belief, resides in Andalusia, Pennsylvania and has registered the confusingly similar domain name <dillbert.com> on or about December 3, 1999. The Complainant asserts that "the name is confusingly similar in that it is almost identical to Complainantsí [sic] registered trademark with the exception that Respondent has added an additional Ďlí in the middle." The Complainant further asserts that it is common for Internet users to accidentally type additional letters when entering a domain name and it is common for Internet users to be unsure of an exact spelling of a domain name and will enter multiple possible spellings.
The Complainant asserts that on March 2, 2000, July 6, 2000 and July 11, 2000 its counsel sent letters and e-mails to the Respondent identifying his infringing use and demanding transfer of the domain name. (copies of letters attached as Annexes E, G and H). Based on the March 2, 2000 letter, the Complainant asserts that on or before March 15, 2000 its counsel discussed this matter with the Respondent on the telephone and obtained a verbal agreement to transfer ownership of the domain name over to the Complainant for a nominal registration fee. The Complainant asserts that the Respondent then rejected delivery of the July 6, 2000 letter from the Complainantís counsel, sent an e-mail to the Complainantís counsel on July 7, 2000 stating that he had "no knowledge of such agreement, nor does he know what we're talking about" and proceeded to reject delivery of the July 11, 2000 letter from the Complainantís counsel. (copies of Federal Express return receipts and Respondentís e-mail attached as Annexes F, G and H).
The Complainant asserts that the Respondent has a history of registering domain names that are identical or confusingly similar to famous names and trademarks solely for the purpose of generating advertising fees based on the number of misdirected visitors who are forced to click on numerous banner ads on the Respondentís various sites so as to leave a site. The Complainant asserts that, upon information and belief, Respondent is paid for every ad that a visitor clicks on.
The Complainant asserts that the Respondent has been sued for trademark infringement and other causes of action at least six times. The Complainant referred to three UDRP decisions brought against the Respondent ("Case No. D2000-0330"; "hewlitpackard.com"; "davematthewsband.com [sic]") in which the domain names in issue were transferred to the respective complainants and provided one court decision in which a preliminary injunction motion against the Respondent was granted enjoining him from using or abetting the use of the domain names in question. Shields v. Zuccarini, 89 F. Supp.2d 634 (E.D.Pa. 2000) (Annex I).
The Complainant asserts that the Respondent "intentionally attempted to attract and did successfully attract, for financial gain, Internet users to the www.dillbert.com web site" and has "misdirected Internet users by creating a likelihood of confusion with the Complainantís DILBERT marks as to the source, sponsorship, affiliation, or endorsement of the registrantís web site or location or of a product or service on the registrantís web site or location."
The Complainant further asserts that "[t]here is no evidence of the registrantís use of, or demonstrable preparations to use, DILLBERT.COM or www.dillbert.com or any similar marks in connection with a bona fide offering of goods or services" and that the Respondent has "not been commonly known by this name and has acquired no trademark or service mark rights or any other proprietary rights whatsoever." In addition, the Complainant asserts that the Respondent is "not making any legitimate non-commercial or fair use of the domain name but rather, Respondentsí [sic] sole intent is for commercial gain acquired by misleadingly and diverting consumers" and that the Respondent has "no legitimate interest in the domain name DILLBERT.COM other than the financial gain wrongfully begotten through misdirected Internet users." Accordingly, the Complainant asserts that the Respondent has "used the domain name in bad faith solely for financial gain."
Based upon the above, the Complainant requests that the Panelist transfer the domain name in issue to it.
The Respondent did not submit a response to the Complaint or otherwise contest the Complainantís assertions. Under paragraph 14(b) of the Rules, the Panelist shall draw such inferences from the Respondentís default as the Panelist considers appropriate. However, the Panelist can only rule in the Complainantís favor after it has proven that the requisite three elements listed below are present.
6. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:
(i) the domain name holderís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
Element (i) - Domain Name Identical or Confusingly Similar to the Mark
The Panelist finds that the Complainant has provided sufficient evidence to show that it is the owner of the trademark DILBERT. The domain name in issue "dillbert.com" differs from the mark DILBERT merely by the addition of the letter "l" in the domain name. Such addition does not prevent the domain name from being considered virtually identical or confusingly similar to the Complainantís mark. The Panelist therefore finds that Element (i) has been satisfied based upon the domain name being virtually identical and confusingly similar to the mark DILBERT.
Element (ii) - Rights or Legitimate Interests in the Domain Name
Paragraph 4(c) of the Policy sets out circumstances, in particular but without limitation, which, if found by the Panelist to be proven based on its evaluation of all of the evidence presented, can demonstrate the holderís rights to or legitimate interests in the domain name. These circumstances include:
(i) before any notice to the holder of the dispute, the holderís 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is 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.
There is no evidence that the Complainant has at any time ever assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the mark DILBERT in any manner. In addition, no evidence has been presented that before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the domain name in connection with any type of bona fide offering of goods or services or that the Respondent is commonly known by the domain name <dillbert.com> as an individual, business or otherwise.
Further, no evidence has been presented that the Respondent could be considered as making any type of legitimate noncommercial or fair use of the domain name. Although the Complainant did not provide printouts of the sites or advertisements that open when attempting to access <http://www.dillbert.com>, the Panelistís own review of the Respondentís use of the domain name finds that the Respondent is misleadingly diverting consumers to multiple advertising/promotional Web sites with numerous click-through banner advertisements from which the Respondent apparently obtains some commercial gain. See e.g., Shields v. Zuccarini, 89 F. Supp.2d at 640 n.7 (the Respondent testified that "his click-based revenue now approaches $1 million per year"). Such use of the domain name in issue by the Respondent cannot be considered as being legitimate noncommercial or fair use of the domain name. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the domain name and that Element (ii) has been satisfied.
Element (iii) - Domain Name Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has 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 the holderís documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holderís web site or other online 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 the holderís web site or location.
As noted by the Complainant, the Respondent has a history of registering domain names consisting of misspellings of famous names and trademarks and has admitted to such conduct in deposition and court testimony. See Shields v. Zuccarini, 89 F. Supp.2d at 639-40 ("admitted that he registeredÖ thousands of other domain names, because they are confusingly similar to otherís famous marks or personal names - and thus are likely misspellings of these names - in an effort to divert Internet traffic to his sites.") Coupled with the Complainantís mark DILBERT being registered in many countries as well as the publication of the comic strip DILBERT in over two thousand U.S. and foreign newspapers, the Panelist finds that the Respondent clearly had knowledge of the Complainantís rights in its mark DILBERT at the time he registered the domain name in issue.
In addition, the Complainant has noted and the Panelistís review has found that: (1) the Respondent is using a misspelling of the Complainantís mark DILBERT in a domain name to intentionally attract and subject users to multiple advertising/promotional sites and click-through banner advertisements for his apparent commercial gain; and (2) the Respondent himself or through his various businesses has been found to have registered and used numerous domain names consisting of misspellings of trademarks and names in bad faith in other Policy decisions. See, e.g., Abercrombie & Fitch Stores, Inc. and A & F Trademark, Inc. v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2000-1004 (November 1, 2000) (ABECROMBIE.COM, etc.); Microsoft Corporation v. Cupcake City, WIPO Case No. D2000-0818 (October 22, 2000) (MSNINSTANTMESSENGER.COM, etc.); Budget Rent a Car Corporation v. Cupcake City, WIPO Case No. D2000-1020 (October 19, 2000) (BUDGETRENTALCAR.COM); Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake City, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini, WIPO Case No. D2000-0777 (October 2, 2000) (YAHOOLLIGANS.COM, etc.); Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini, WIPO Case No. D2000-0928 (September 29, 2000) (YAHHOLIGANS.COM, etc.); Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578 (August 28, 2000) (WALLSTREETJOUNAL.COM, etc.); Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541 (August 22, 2000) (GUINNES.COM).
Based upon such findings and evidence, the Panelist concludes that the Respondent has registered and is using the domain name in issue in bad faith for the purpose of creating a likelihood of confusion with the Complainantís mark DILBERT, as to the source, sponsorship, affiliation or endorsement of his site or of the products and services offered on his site. Element (iii) has accordingly been satisfied.
The Panelist concludes: (i) that the domain name in issue is virtually identical and confusingly similar to the Complainantís mark; (ii) that the Respondent has no rights or legitimate interests in the domain name; and (iii) that the Respondent has registered and is using the domain name in bad faith. Accordingly, the Panelist requires that the registration of the domain name <dillbert.com> be transferred to the Complainant.
Dated: December 29, 2000