WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

America Online, Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident

Case No. D2000-1495

 

1. The Parties

The Complainant is America Online, Inc., a corporation organized in the State of Delaware, United States of America (USA), with place of business in Dulles, Virginia, USA.

The Respondent is John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, with address in Andalusia, Pennsylvania, USA.

 

2. The Domain Names and Registrar

The disputed domain names are "aolgams.com", "aolinstant.com", "aolinstantmessaging.com", "aolinstantmessages.com", "aolmessanger.com", "msninstantmessenger.com", "instant-messenger.com", "icqgreatings.com", "winnamp.com" and "1001winampskin.com".

The registrar of the disputed domain names "aolgams.com", "icqgreatings.com", "winnamp.com" and "1001winampskin.com" is CORE International Council of Registrars, with business address in Geneva, Switzerland.

The registrar of the disputed domain names "aolinstant.com", "aolinstantmessaging.com", "aolinstantmessages.com", "aolmessanger.com", "instant-messenger.com" and "msninstantmessenger.com" is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on November 1, 2000, and by courier mail received by WIPO on November 3, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing.

(b) On November 13, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, CORE, regarding the domain names "aolgams.com", "icqgreatings.com", "winnamp.com" and "1001winampskin.com". On November 15, 2000, CORE responded to WIPO indicating that "John Zuccarini" was named as registrant of "aolgams.com" and that "Cupcake Patrol" was named as registrant of "icqgreatings.com", "winnamp.com" and "1001winampskin.com". On November 13, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, regarding the domain names "aolinstant.com", "aolinstantmessaging.com", "aolinstantmessages.com", "aolmessanger.com", "instant-messenger.com" and "msninstantmessenger.com". On November 15, 2000, Network Solutions responded to WIPO indicating that "Cupcake Message" was named as registrant of "aolinstant.com", "Cupcake Messenger" was named as registrant of "aolinstantmessaging.com", "The Cupcake Secret" was named as registrant of "aolinstantmessages.com", "Cupcake Patrol " was named as registrant of "aolmessanger.com", and "The Cupcake Incident" was named as registrant of "instant-messenger.com". Network Solutions also advised that the domain name "msninstantmessenger.com" had previously been transferred to Microsoft Corporation, on November 16, 2000, as remedy in WIPO Administrative Proceeding D-2000-0818, Microsoft Corporation v. Cupcake City, decided October 22, 2000.

(c) On November 21, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail and courier mail.

(d) On December 15, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint via e-mail and courier mail.

(e) On December 29, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On December 29, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(f) On January 5, 2001, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by January 19, 2001. On, January 5, 2001, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant has registered the typed-drawing service mark "AOL" on the Principal Register of the U.S. Patent and Trademark Office ("USPTO"), Reg. No. 1984337, dated July 2, 1996, in International Class 9, covering, inter alia, computer operating programs and computer operating systems (claimed date of first use October 1989), (Complaint, Annex B). Complainant has filed applications for registration on the Principal Register of the USPTO for the word mark "ICQ", Serial No. 75381414, filed October 19, 1997, published for opposition September 19, 2000, in International Classes 9, 42, 35, 36, 38 and 41, covering, inter alia, computer programs, providing information via computer networks, telecommunications services, providing financial information by electronic means, and providing entertainment by electronic means (claimed date of first use November 1996); for the word mark "INSTANT MESSENGER", Serial No. 75496386, filed June 4, 1998, in International Class 42, for computer services, namely (including) providing multiple user access to computer networks (claimed date of first use March 14, 1997); for the word mark "AOL INSTANT MESSENGER" in International Class 38, for telecommunications services, as further specified (claimed date of first use March 14, 1997), and; for the word mark "WINAMP", Serial No. 75531951, filed August 6, 1998, in International Classes 9 and 35, for digital audio software, as further specified, and for computerized on-line downloading and ordering services in the field of computer software and hardware (claimed date of first use April 1, 1997), (id.).

This sole panelist has in a previous administrative proceeding involving Complainant determined that Complainant holds rights in the service mark "AOL", that said mark is used in commerce and well-known among consumers and users of the Internet throughout the world. (Footnote 1)

Complainant has made extensive use of the terms "ICQ", "Instant Messenger", "AOL Instant Messenger" and "WINAMP in commerce on the Internet (Complaint, paragraph 2, and Annexes C & E).

In Microsoft Corporation v. Cupcake City, Case No. D-2000-0818, decided October 22, 2000, panelist Richard Page stated in respect to the "msninstantmessenger.com" domain name then-registered to Respondent in this case:

"The Domain Names [Ďmsninstantmessenger.comí, Ďmicrosoftmessenger.comí and Ďmsnmessenger.comí] each consists of the MICROSOFT or MSN mark in combination with the terms, "instant messenger" or "messenger" each of which, as set forth above, merely describes a significant service offered under the MICROSOFT and MSN marks."

The registrarsí verification responses indicate that Respondent John Zuccarini is the registrant of each of the disputed domain names in this case. John Zuccarini has acted to register names as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident. In each case, the relevant contact information is identical or substantially similar. According to WHOIS database search reports provided by Complainant, the records of registration were created between June 25, 1999 and July 9, 2000, (Complaint, Annex D). However, the disputed domain name "msninstantmessenger.com" was transferred to Microsoft Corporation as remedy in Case No. D2000-0818, on November 16, 2000.

Certain of the disputed domain names divert Internet users to commercial websites unaffiliated with Complainant (Complaint, paragraph 12 and Annex H). One of the disputed domain names ("1001winampskins.com") directs Internet users to pornographic websites.

Respondent is the named registrant of other domain names that use the well-known trademarks of third parties (i.e., "usatodaysports.com", "tacobelldog.com" and "starwarspics.com")(id., Annex G).

Respondent has previously been the subject of a number of decisions in which he has been found to have engaged in abusive domain name registration with respect to other complaining parties and their marks. See Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake City, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini, Case No. D2000-0777, decided October 2, 2000; Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, Case No. D2000-0330, decided June 7, 2000; Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini, Case No. D2000-0928, dated September 29, 2000; Budget Rent a Car Corporation v. Cupcake City, Case No. D2000-1020, decided October 19, 2000, and; Blackboard Inc. v. Cupcake Patrol, Case No. D2000-0811, dated October 17, 2000.

On May 7, 1999 and August 23, 1999, Complainant (through its counsel) sent cease and desist and transfer demands to Respondent via certified mail, e-mail and first class mail (Complaint, Annex F). Certain of the disputed domain names were registered after the date of the cease and desist and transfer demands. Respondent made no reply to such demands.

The Service Agreements in effect between Respondent and CORE, and Respondent and Network Solutions, subject Respondent to each of COREís and Network Solutionsí dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).

 

5. Partiesí Contentions

A. Complainant

Complainant states in its own words:

"(12) This Complaint is based on the following grounds:

1. AOL and its affiliated entities (collectively "AOL"), are the owners of numerous trademarks worldwide for the marks AOL, AOL INSTANT MESSENGER, ICQ, INSTANT MESSENGER, and WINAMP (collectively the "AOL Marks"). See Annex [hereto]. AOL owns numerous trademark registrations worldwide for many of its AOL Marks, including U.S. Registration No. 1,984,337 for AOL. In addition, AOL has pending application in at least 50 countries, including U.S. Ser. Nos. 75-460,305 (AOL INSTANT MESSENGER), 75-381,414 (ICQ Ė approved for publication), 75-496,386 (INSTANT MESSENGER), and 75-531,951 (WINAMP) (evidence of US trademark registrations and applications attached as Annex [hereto]).

2. AOL also uses its AOL Marks in connection with its domain names for its various Web sites. The AOL Marks are used extensively at these portal Web sites, which are a significant method of promoting AOLís goods and services. See Annex [hereto].

3. Many years prior to Respondentís registration of the domain names at issue in the proceeding, AOL and its predecessors-in-interest adopted and began using the AOL Marks in connection with computer and Internet-related goods and services. Since their first adoption, the distinctive AOL Marks have been used continuously and extensively in interstate and international commerce in connection with the advertising and sale of AOLís goods and services.

4. AOL has invested substantial sums of money in developing and marketing its services.

5. Each year millions of AOL customers worldwide obtain goods and services offered under the AOL Marks; millions more are exposed to said marks through advertising and promotion.

6. The AOL Marks have been and continue to be widely publicized through substantial advertising throughout the United States and the world. Many millions of dollars have been spent in connection with such advertising, which has been disseminated through network and cable television programs, radio broadcasts, and in print media including newspapers and periodicals.

7. Sales of services under the AOL Marks have amounted to many millions of dollars. As a result, the general public has come to associate these names and marks with services of a high and uniform quality.

8. Because of these substantial advertising expenditures and sales, the distinctive AOL Marks have become well-known and famous among members of the purchasing public.

9. Many years after AOL's adoption and first use of its AOL Marks, and long after the AOL Marks became well-known and famous, Respondent registered the domain names "aolgams.com" "aolinstant.com" "aolinstantmessaging.com" "aolinstantmessages.com" "aolmessanger.com" "msninstantmessenger.com" "instant-messenger.com" "icqgreatings.com" "winnamp.com" and "1001winampskin.com" (collectively the "Infringing Domains") for the bad faith purpose of profiting from the goodwill AOL has created in its AOL Marks.

10. The Infringing Domains are confusingly similar or nearly identical to the AOL Marks.

11. Respondent registered, used, and continues to use the Infringing Domains in bad faith to capitalize on the famous AOL Marks and to confuse consumers.

12. Respondent has no rights or legitimate interests in respect to the Infringing Domains. The following is evidence of Respondentís bad faith registration and use of the domain names:

(a) Respondentís bad faith registration and use of the domain names is evidenced by the fact that Respondent registered the Infringing Domains many years after AOL's adoption and first use of its AOL Marks (copies of the Whois records for the Infringing Domains is included as Annex [hereto]).

(b) Counsel for AOL sent Respondent a letter that informed Respondent of AOL's intellectual property rights in its marks and objected to any use by Respondent of any domain names that use the AOL Marks (copy of letter is included as Annex [hereto]).

(c) Respondentís bad faith use of the Infringing Domains is shown by Respondentís failure to respond to AOLís correspondence and Respondentís continued use of the Infringing Domains in connection with commercial Web sites. See Annex [hereto]. In fact, several of the domains at issue in this proceeding were registered after Respondent received AOLís letter.

(d) Respondentís bad faith registration and use of the Infringing Domains also is demonstrated by the fact that Respondent has shown a significant pattern of registering domain names that infringe upon famous names and marks. For example:

Domain Name Mark Infringed

"usatodaysports.com" USA TODAY

"tacobelldog.com" TACO BELL

"starwarspics.com" STAR WARS

See Annex [hereto] for Whois records. This pattern of registering other entitiesí marks as domains names indicates that Respondent registered the domains with a bad faith intent to prevent trademark owners from reflecting their marks in a domain name. See Harvey Norman v Oxford-University, Case No. D2000-0944, Annex [hereto].

(e) Respondentís bad faith registration and use of the Infringing Domains is also evidenced by at least four similar proceedings that were filed against Respondent under ICANNís Uniform Domain Name Dispute Resolution Policy. In all four proceedings, the WIPO arbitrator found that Respondent had registered and used the domain names in bad faith. See Annex [hereto] for copies of arbitratorsí written decisions.

(f) Respondentís bad faith registration and use of the Infringing Domains also is demonstrated by the fact that Respondent has used various names and e-mail addresses when he registers infringing domains. See Annex [hereto]. By using these false and different names, Respondent has attempted to elude legitimate trademark owners that are interested in protecting their valuable intellectual property.

(13) Based upon the correspondence sent by AOL to Respondent, the fame of the AOL Marks, and Respondentís history of cybersquatting, Respondent cannot, in good faith, claim that he had no knowledge of AOL's rights in the AOL Marks. Furthermore, Respondent cannot claim, in good faith, that he made a legitimate noncommercial or fair use of the domain names, or that he is commonly known by the AOL Marks." (Complaint)

Complainant requests the Panel to direct that the disputed domain names be transferred to it.

B. Respondent

Respondent did not reply to Complainants contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion. (Footnote 2) The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.

As a threshold matter, the Panel notes that the disputed domain name "msninstantmessenger.com" is no longer registered to Respondent in this proceeding. That domain name was transferred from Respondent to Microsoft Corporation in consequence of a finding of abusive domain name registration against Respondent in an earlier administrative proceeding (see Microsoft Corporation v. Cupcake City, Case No. D-2000-0818, decided October 22, 2000). Since Microsoft Corporation and Respondent are not alleged to be affiliated entities, and since the complaint in this proceeding is not directed against Microsoft Corporation, Complainantís claim regarding "msninstantmessenger.com" is determined to be excluded from the scope of this proceeding.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

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

(iii) Respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

In an earlier administrative proceeding this sole panelist determined that Complainant has rights in the service mark "AOL", and that such mark is well known among Internet users and consumers worldwide. (Footnote 3) The Panel adopts that earlier finding here.

Complainant claims trademark and/or service mark rights in the terms "AOL INSTANT MESSENGER", "ICQ", "INSTANT MESSENGER", and "WINAMP". In respect of each of these terms, Complainant has applied for registration as a mark on the Principal Register of the USPTO. In respect of the term "ICQ" the mark applied for has been published for opposition, indicating that it has passed an initial screening for distinctiveness by an examiner at the USPTO. An application for trademark registration as such confers no exclusive rights on the applicant in respect to the mark for which registration is sought. (Footnote 4)

Based on evidence submitted by Complainant of substantial use in commerce, and evidence of recognition by Internet users of distinctive character, and in the absence of contrary evidence from Respondent, the Panel is satisfied that Complainant has rights in the marks "ICQ" and "WINAMP" within the meaning of paragraph 4(a)(i) of the Policy.

Complainant has asserted first use of the "AOL", "ICQ" and "WINAMP" marks on or before April 1, 1997, (the latest first use for "WINAMP"). Although trademark registration claims of first use do not conclusively establish such use, in the absence of contrary evidence from Respondent the Panel determines that Complainant established rights in these marks prior to Respondentís registration of the disputed domain names, the earliest registration of which was June 25, 1999.

In a previous administrative proceeding, sole panelist Richard Page determined that Microsoft Corporation had rights in the marks "MICROSOFT" and "MSN", and that the combination of those marks with "INSTANT MESSENGER" (to form domain names "microsoftinstantmessenger.com" and "msninstantmessenger.com"), "merely describes a significant service offered under the MICROSOFT and MSN marks" (see Factual Background supra). In light of this earlier determination, the apparent use of "instant messenger" as a descriptive term by at least one other major Internet service provider, and the fact that the USPTO has not yet granted registration for "instant messenger" to Complainant, this Panel is unable to conclude that Complainant has exclusive rights in the term "instant messenger".

The Panel has determined that Complainant has rights in the mark "AOL". In light of this determination, it is not necessary for purposes of this proceeding to determine whether it also has exclusive rights in the term "AOL INSTANT MESSENGER", though the Panel notes that it might have service mark rights in that term even in the absence of exclusive rights in the term "INSTANT MESSENGER".

Respondent has registered the domain names "aolgams", "aolinstant.com", "aolinstantmessaging.com", "aolinstantmessages.com" and "aolmessanger.com". Each of these domain names (1) incorporates Complainantís "AOL" mark, and (2) adds the generic top-level domain (gTLD) ".com". Four of the names add a variation of the term "instant messenger" to Complainantís mark, and one of the names adds a misspelled variation of "games" (i.e., "gams").

The use of the generic top-level domain (gTLD) ".com" is without legal significance from the standpoint of comparing the disputed domain names to "AOL" since use of a gTLD is required of domain name registrants, ".com" is one of only several such gTLDs, and ".com" does not serve to identify a specific enterprise as a source of goods or services. (Footnote 5)

The addition of variations on the term "instant messenger" to Complainantís

Well-known "AOL" mark to form domain names is likely to confuse and mislead Internet users. Such domain names strongly suggest that Complainant is the source or sponsor of instant messenger services under those names. Complainantís "AOL" mark is strong among Internet users, and this factor contributes to the likelihood of confusion. (Footnote 6) "Aolgams.com" is a minor typographical variation of "aolgames.com", and is likely to confuse Internet users seeking game services by attempting to enter the Internet address "aolgames.com". A common misspelling of "games" would direct users to a site chosen by Respondent. The Panel determines that the disputed domain names "aolgams", "aolinstant.com", "aolinstantmessaging.com", "aolinstantmessages.com" and "aolmessanger.com" are confusingly similar to "AOL" in the sense of paragraph 4(a)(i) of the Policy.

Respondent has registered the domain name "icqgreatings". This domain name (1) incorporates Complainantís "ICQ" mark, (2) adds the term "greatings" to "ICQ", and (3) adds the generic top-level domain (gTLD) ".com".

The mere addition of a minor misspelling of "greetings" to Complainantís
"ICQ" mark does not create a new or different mark in which Respondent has rights. Instead, it results in a domain name that is confusingly similar to Complainantís mark. The panel determines that "icqgreatings.com" is confusingly similar to Complainantís "ICQ" mark within the meaning of paragraph 4(a)(i) of the Policy.

Respondent has registered the domain names "winnamp.com" and "1001winampskin.com". Each of these domain names (1) incorporates an identical or slightly misspelled version of Complainantís "WINAMP" mark, and (2) adds the generic top-level domain (gTLD) ".com". One of the names adds the prefix "1001" and the suffix "skin".

The disputed domain name "winnamp.com" is a minor typographical variation of "winamp.com" and is likely to be entered inadvertently by Internet users seeking to find "winamp.com". The Panel determines that "winnamp.com" is confusingly similar to Complainantís "WINAMP" mark within the meaning of paragraph 4(a)(i) of the Policy.

The disputed domain name "1001winampskin.com" incorporates Complainantís "winamp" mark. It is presumably intended to be identified by search engines in which Complainantís "WINAMP" name or spelling variations thereon are entered. As such, it is intended to attract Internet users to a website chosen by Respondent. Respondent has redirected the subject disputed domain name to a pornographic website. Demonstrable bad faith in selecting a domain name may contribute to a finding of confusing similarity. (Footnote 7) The Panel determines that "1001winampskin.com" is confusingly similar to Complainantís "WINAMP" mark within the meaning of paragraph 4(a)(i) of the Policy.

Complainant has met the burden of proving that Respondent is the registrant of the domain names "aolgams", "aolinstant.com", "aolinstantmessaging.com", "aolinstantmessages.com", "aolmessanger.com", "icqgreatings.com", "winnamp.com" and "1001winampskin.com" that are identical or confusingly similar to trademarks or service marks in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration in respect to those names.

Because the Panel has not found that Complainant has rights in the term "instant messenger", it cannot conclude that the disputed domain name "instant-messenger.com" is identical or confusingly similar to a trademark or service mark in which Complainant has rights. (Footnote 8)

Respondentís has principally used the disputed domain names in connection with redirecting Internet users to websites unrelated to Complainant. Such use is hereinafter determined to be in bad faith. Bad faith use of domain names does not establish rights or legitimate interests in the names in the sense of paragraph 4(a)(ii) of the Policy.

Respondent has failed to establish rights or legitimate interests in the disputed domain names. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that a respondent 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 respondent has] engaged in a pattern of such conduct" (id., paragraph 4(b)(ii)), and (2) that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] web site or location of a product or service on [its] web site or location" (id., paragraph 4(b)(iv)).

Respondent has intentionally sought to use Complainantís marks in the disputed domain names to attract Internet users to websites and other on-line locations for commercial gain by confusing consumers as to sponsorship of, or location of services on, websites or other on-line locations. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Respondent has also registered the disputed domain names to prevent Complainant from reflecting its marks in those names, and has engaged in a pattern of such behavior in respect to other well known marks (i.e., "usatodaysports.com"/USA TODAY, tacobelldog.com/TACO BELL and "starwarspics.com"/STAR WARS). This constitutes bad faith within the meaning of paragraph 4(b)(ii) of the Policy.

Respondent is determined to have registered and used the disputed domain names "aolgams", "aolinstant.com", "aolinstantmessaging.com", "aolinstantmessages.com", "aolmessanger.com", "icqgreatings.com", "winnamp.com" and "1001winampskin.com" in bad faith within the meaning of paragraph 4(b) of the Policy. Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration regarding those names.

The Panel will therefore request the registrar to transfer the domain names "aolgams", "aolinstant.com", "aolinstantmessaging.com", "aolinstantmessages.com", "aolmessanger.com", "icqgreatings.com", "winnamp.com" and "1001winampskin.com" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident, has engaged in abusive registration of the domain names "aolgams", "aolinstant.com", "aolinstantmessaging.com", "aolinstantmessages.com", "aolmessanger.com", "icqgreatings.com", "winnamp.com" and "1001winampskin.com" within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain names "aolgams", "aolinstant.com", "aolinstantmessaging.com", "aolinstantmessages.com", "aolmessanger.com", "icqgreatings.com", "winnamp.com" and "1001winampskin.com" be transferred to the Complainant, America Online, Inc.

Based on its determination that Complainant, America Online, Inc., has not established rights in the term "INSTANT MESSENGER" within the meaning of paragraph 4(a)(i) of the Policy, the Panel rejects Complainantís request to order that the disputed domain name "instant-messenger.com" be transferred to it.

Based on the transfer of the disputed domain name "msninstantmessenger.com" to Microsoft Corporation (as a consequence of an earlier administrative determination under the Policy), the Panel has excluded that domain name from the scope of its determination in this proceeding.

 


 

Frederick M. Abbott
Sole Panelist

Dated: January 22, 2001

 


 

Footnotes:

  1. America Online, Inc. v. Dolphin@Heart, Case No. D2000-0713, decided August 24, 2000.
  2. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.
  3. See note 1 supra.
  4. See this sole panelistís decisions in, e.g., Monty and Pat Roberts, Inc. v. J. Bartell, Case No. D2000-0300; decided June 13, 2000; Marcario Casillas v. Maverick Group, Inc., Case No. D2000-0340, decided June 11, 2000, and; PG&E Corporation v. Samuel Anderson and PGE in the year 2000, Case No. D2000-1264, decided Nov. 22, 2000. In U.S. law, an application for trademark or service mark registration on the Principal Register constitutes constructive use of a mark, contingent on subsequent registration. 15 USCS ß 1057(c).
  5. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999). The Panel notes that in an earlier administrative proceeding this sole panelist recognized Complainantís rights in the service mark "AOL.COM" based, inter alia, on the USPTOís grant of registration for that mark. See America Online, Inc. v. Dolphin@Heart, note 1, supra.
  6. See Brookfield, id., 174 F.3d 1036, 1053-61 (9th Cir. 1999), citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).
  7. Brookfield, id. at 1059 (9th Cir. 1999), quoted and discussed in Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, Case No. D2000-0477, decided July 20, 2000.
  8. References in this section to the "disputed domain names" do not hereinafter include "instant-messenger.com" in so far as the Panel has not determined that Complainant has exclusive rights in the term "instant messenger".