WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Link Clicks Inc. d/b/a Ad Here and TOTALLYFREESTUFF.COM v. John Zuccarini d/b/a Cupcake Patrol
Case No. D2000-1547
1. The Parties
The Complainant is Link Clicks Inc. d/b/a Ad Here and TOTALLYFREESTUFF.COM, a Canadian corporation represented by Gowling, Lafleur Henderson LLP of Ottawa, Ontario, Canada.
The Respondent is John Zuccarini d/b/a Cupcake Patrol with an address at 957, Bristol Pike, Suite D-6, Andalusia, PA 19020, USA.
2. The Domain Name and Registrar
The domain name at issue is <totalyfreestuff.com>.
The Registrar is CORE Internet Council of Registrars.
3. Procedural History
The Complaint was received by email on November 9, 2000, and in hard copy on November 14, 2000, by the WIPO Arbitration and Mediation Center [the Center]. In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules] as approved by ICANN on October 24, 1999, and the Center's own Supplemental Rules in effect as of December 1, 1999 [the Supplemental Rules], the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy adopted by ICANN on October 24, 1999 [the Policy], the Rules and the Supplemental Rules. The Complaint was submitted in English and the proceedings have been conducted in English. The Complainant has paid the specified fee to the Center.
The Center transmitted the requisite Registrar Verification request to CORE Internet Council of Registrars on November 20, 2000, and received a response on the same day, confirming that the Respondent, John Zuccarini, is the current owner/registrant of the domain name <totalyfreestuff.com>.
Proceedings in this case were formally commenced on November 28, 2000, when the Center sent a copy of the Complaint (including a minor formal amendment of the Registrar details filed by the Complainant at the Center's request) to the Respondent by post at the address recorded in the Registrant details for the domain name at issue and by email to email@example.com. The notification to the Respondent advised that a Response would need to be submitted to the Center no later than December 17, 2000, to be sure of being considered in these proceedings. No Response was received by the specified deadline. Consequently, on December 20, 2000, the Center issued a Notification of Respondent Default, which was duly transmitted to the Respondent and to the Complainant's representatives by email only.
On January 5, 2001, the Center invited Mr. Keith Gymer to serve as single Panelist in these proceedings and received his Statement of Acceptance and Declaration of Impartiality and Independence on January 8, 2001. The Center appointed Mr. Gymer as Panelist on January 9, 2001, and notified the Respondent and the Complainant's representatives of this appointment by email on the same day.
4. Factual Background
According to the Registrar's records, the domain name <totalyfreestuff.com> was registered to the Respondent on January 26, 2000.
The Complainantís business is said to be the authorization and performance of on-line advertising for others. The Complainantís own domain name <totallyfreestuff.com> was created on June 26, 1998.
At its domain name <totallyfreestuff.com>, the Complainant promotes consumer goods and services which are provided on a free or trial basis. The Complainant is paid for this service by advertisers who purchase banner advertisements and hyperlinks for display at the Complainantís domain name <totallyfreestuff.com>.
The Complainant has filed the following applications to register its trade-marks:
June 14, 2000*
TOTALLY FREE STUFF
June 20, 2000*
TOTALLY FREE STUFF
(* data obtained by the Panelist)
The Complainant, by its Agent, sent a letter by courier on August 8, 2000 requesting that the Respondent cease and desist its use of the disputed domain name. This correspondence was refused by the Respondent. Evidence of the Respondentís refusal was provided by the courier company and attached to the Complaint.
Otherwise, the Complainant has made a number of further contentions by way of a Statement of Case in the Complaint. These are summarised below.
5. Partiesí Contentions
Panelist's note: The following extracts are taken directly, or with some qualification and paraphrasing, from the Complaint. There are a number of pertinent misspellings of both the Complainant's and the Respondent's domain names. These have been left uncorrected, but are followed by an identifying "[sic]" in each case where the Panelist believes from the context that the Complainant itself has mistyped the domain name it was intending to refer to.
The Complainant submits that notwithstanding the fact that none of its trade mark applications has been registered, the Policy (para. 4(a)(i)) applies to common law trade-marks in addition to registered trade-marks. The Complainant cited a number of decisions supporting this contention.
The Complainant asserts that it owns the trade-mark TOTALLY FREE STUFF and the trade-mark TOTALLYFREESTUFF.COM. The Complainant says it has continuously used the trade-mark TOTALLY FREE STUFF in association with advertising and promotion services since at least as early as June, 1996 [no evidence was provided to support this contention]. The Complainant also claim to have continuously used the trade-mark TOTALLYFREESTUFF.COM in association with its advertising and promotion services since at least as early as June, 1998. From January 1 to June 30, 2000, the Complainant reportedly generated in excess of $180,000 CND in advertising revenue. According to PCDataOnline, a service that audits visits to specific websites, <totallyfreestuff.com> had in excess of 4,900,000 different users visit the site during that period. This number reportedly does not include repeat visitors.
The Complainant alleges that the disputed domain name is a typographical variation of the Complainantís mark and such registration and use constitutes "typosquatting". The Respondent profits from confusion created by the domain names and by passing off its services for "free stuff" as those of the Complainant and the Respondent has registered the disputed domain name <totalyfresstuff.com>[sic] to intentionally [mis]direct users seeking the Complainantí s TOTALLY FREE STUFF directory and computer services provided at the domain <totallyfreestuff.com>.
The Respondentís use of the disputed domain name corresponds to the Respondentís use of other typographical error domains which have been subject to UDRP and judicial proceedings. The Respondentís pattern of use for domain names is consistent: when a potential or existing online customer, attempting to access the Complainantís web site mistakenly types one of the Respondentís misspelled domains such as <totalyfreestuff.com>, he is "mousetrapped" in a barrage of advertising windows, featuring a variety of products, including credit cards, Internet answering machines, games and music. The Internet user cannot exit the new windows without clicking on the succession of advertisements that appears. Simply clicking on the "X" in the top right hand corner of the screen, a common way to close a browser window, will not allow a user to exit. The Respondent is allegedly paid between 10 and 25 cents by the advertisers for every click.
The Respondentís "mousetrapping" practises have been considered in several cases against him under the Policy, all of which he has lost. In each case, the disputed domain was a common misspelling of a trade-mark or domain owned by the Complainant. In each of these hearings, the Panel has found him to have no legitimate interest to any disputed domain name. The Complainant listed a number of such cases.
In a Court proceeding for a preliminary injunction under the Anticybersquatting Consumer Protection Act 15 U.S.C. ß 1125(d), the Respondent is reported to have admitted that he selects domain names for registration based on the fact that they are likely misspellings and confusingly similar to othersí famous marks or personal names. In the decision issued by the United States District Court in Shields v. Zuccarini, 2000 US Dist. Lexis 3350 ("Shields"). The Court wrote that the Respondentís very business existence depends on his parasitic use of othersí names:
"During his deposition before us, Zuccarini admitted that he registered the variations on "Joe Cartoon" as well as thousands of other domain names, because they are confusingly similar to otherís famous marks or personal names Ė and thus are likely misspellings of these names Ė in an effort to divert Internet traffic to his sites. ... He has also registered variations on popular product and webnames like sportillustrated.com, mountianbikes.com, and msnchatrooms.com. This conduct is compelling evidence of his bad faith."
The United States District Court has issued a further Order against the Respondent John Zuccarini for typosquatting in the case Electronics Boutique Holdings Corp. v. Zuccarini (U.S. Dist. Ct. for the E. District of Pennsylvania, Civil Action No.:00-4055 October 30, 2000, unreported) ("Electronic Boutique"). Zuccarini had registered five domain names which were spelling variations of the Plaintiffís trade-mark ELECTRONICS BOUTIQUE. The court ordered (i) the transfer of the five domain names from Zuccarini to the Plaintiff, (ii) a permanent injunction against Zuccarini from using any domain substantially similar to the Plaintiffís, and (iii) the maximum amount of statutory damages provided for under the Anticybersquatting Consumer Protection Act, namely $100,000 per domain. In the decision, the Court made the following findings of fact about the use of the disputed domain names by Zuccarini:
"I note at the outset that the profitability of Mr Zuccariniís enterprise is completely dependant on his ability to register domain names that are confusingly similar to famous names. As the similarity in the spellings of Mr. Zuccariniís domain names to popular or famous names increases, the likelihood that an Internet user will inadvertently type one of Mr. Zuccariniís misspellings (and Mr. Zuccarini will be compensated) increases.
Mr. Zuccariniís bad faith intent to profit from the domain misspellings is abundantly clear. Mr Zuccarini registered the domain misspellings in order to generate advertising revenue for himself despite being aware of the Electronics Boutique Stores and its website. Mr. Zuccarini believes that Internet users will misspell the domain names of the websites they intend to access and instead access one of Mr. Zuccariniís websites. Mr. Zuccarini has profits each time an Internet user makes a typing or spelling mistake which Mr. Zuccarini correctly forecasts.
In addition, the domain mispellings quite obviously do not consist of names used to identify Mr. Zuccarini, legally or otherwise. Also Mr. Zuccarini has no bona fide business purpose for registering domain misspellings, as he does not and has not offered any goods or services that relate to EB or electronic products. Lastly. Mr. Zuccarini has no intellectual property rights at issue in this matter. I find that Mr. Zuccarini specifically intended to prey on the confusion and typographical and/or spelling errors of Internet users to divert Internet users from EBís website for his own commercial gain."
The Respondentís "mousetrap" links accessed from the disputed domain name offer free and low-cost promotions for wares and services such as telephone, Internet and entertainment services. These services may easily be confused as being offered, authorized or endorsed by the Complainant.
One of the Respondentís mousetrap sites is the domain <callwave.com>, which offers "Affilliate [sic] Partnerships" where commissions are paid to referring websites for linking persons who join the callwave program to <callwave.com>. The company states: "Why are CallWaveís affilliates [sic] making so much money? The Internet answering machine is FREE and CallWave pays $1.00 per lead". The <callwave.com> URL mousetrapped by the disputed domain name discloses the referring Partner Identification no. PID=237990, which suggests that the Respondent receives payments as an Affiliate partner.
The effect of the links opened by a visit to the disputed domain name is that Internet users may believe that the sites that have been selected, approved or authorized by the Complainant. Moreover, the Respondent may be generating revenue which otherwise may have accrued to the Complainant.
The Complainant submits that (1) the disputed domain name is confusingly similar to the common law trade-mark TOTALLYFREESTUFF.COM owned by the Complainant; (2) the Respondent has no legitimate rights nor interests in the disputed domain name; and (3) the Respondent has registered and is using the disputed domain name in bad faith.
(1) Confusingly Similar
The Complainant submits that the disputed domain name is confusingly similar to the Complainantís trade-marks and domain name. The only difference between the two domain names is the subtraction of the letter Ďlí in the disputed domain name. This omission, known as a typo, is common as users will often mistakenly omit the letter without realization. As such, the likelihood of confusion between <totalyfrestuff.com> [sic] and <totallyfrestuff.com> [sic] is considerable.
The Respondentís use of the disputed domain name is made on the business model of "unintended visitors" described by the Court in Shields and Electronic Boutique. It is impossible to know the number of Internet users confused by entering the disputed domain name in search of the Complainantís services. The Complainant submits, however, that every time a user enters the domain name totalyfreestuff.com in his browser is an instance of confusion with the Complainantís services, as the disputed domain is not a bona fide trade-mark for the Respondentís services. The disputed domain name is simply a misspelling of the Complainantís trade-mark and corresponding domain name.
(2) No Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in <totallyfreestuff.com> [sic]. The Respondent conducts no bona fide business at this web site and is not commonly known by this name. The Respondent has linked the disputed domain to other sites through the technique of "mousetrapping" described above. These mousetrap sites have no bona fide reason to function as links from the disputed domain name.
The Panel in Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol (WIPO Case D2000-0330), stated that a finding under the Anticybersquatting Consumer Protection Act should be given "substantial weight" in a UDRP proceeding. The bad faith business practices of the Respondent were considered by the United States District Court in Shields and Electronic Boutique. The Complainant submits that the prior proceedings against the Respondent set out above reflect a business practice of registering misspelled domain names to trade off and profit from the fame and reputation of others.
There is no evidence that the Respondent is making a legitimate non-commercial or fair use of the disputed domain name. In fact, the Respondent has admitted in Shields that he intentionally hoped to mislead web traffic to his sites and earns approximately $1 million dollars annually from click-based revenue. In addition, there is no evidence that the Respondentís business is commonly known as <totalyfreestuff.com>. As mentioned previously, many of the domain names the Respondent has registered link to the same sites to which <totallyfreestuff.com> [sic] links. There is no connection between the domain name and the linked sites.
(3) Bad Faith Registration and Use
Registration of commonly misspelled names are indicative of bad faith under the Policy. In State Farm Mutual Automobile Insurance Company v. Commercial Real States (NAF Case FA0094728), the Panel found that typo-squatters "with a demonstrable pattern of conduct involving the registration of domain names that are substantially similar to the famous marks and names of other companies" is "a plain violation of paragraph 4(b)(ii) of the Policy." The Complainant also listed a number of cases where similar conclusions were reached.
The Respondent has a history of registering misspellings of famous names and common phrases, and given the number of domain names he has registered, can be said to have warehoused hundreds of such names for the sole purpose of financially benefitting from user confusion. The Complaint included a listing provided by the domain registrar Network Solutions Inc., showing at least 1440 names domain names with the Respondent Mr. Zuccarini named as Administrative Contact, almost all of which are common misspellings of famous trade-marks, adult subject matter and celebrity names. Domains registered with CORE and other Registrars are not included in this list. The Network Solutions list of 1440 domain names, and the Policy decisions, and the District Court judgments of Shields and Electronic Boutique noted above provide overwhelming evidence that the that Respondent is in the business of registering confusingly similar domain names in bad faith for profit, such as the case for the disputed domain name in this proceeding.
The Respondent, in fact, has been specifically prohibited from engaging in such conduct by the U.S. District Court of Eastern Pennsylvania in Shields. This has not been a deterrence to the Respondent: in the case of Electronic Boutique, the U.S. District Court concluded that "Mr. Zuccarini boldly thumbs his nose at the rulings of this court and the laws of our Country."
The Respondent has deliberately attempted to attract web users to the disputed domain name for financial gain, by creating a likelihood of confusion with the Complainantís mark. The mousetrap links from the disputed domain offer free phone, Internet, music and credit card services. A web user could be led to believe that these services are in fact the ones the Complainant is offering on its web site, <totallyfreestuff.com>, without realizing that a different service was being provided. Given the likelihood of a misspelling with this domain name, it is probable many web users have indeed made this mistake and confused the Respondentís offers for the Complainantís. By intentionally creating such confusion, as the Respondent admitted in Shields and the Court found in Electronic Boutique, the Respondent has financially profited.
The Complainant submits that the Respondent has a confusingly similar domain name to the trade-mark TOTALLYFREESTUFF.COM owned by the Complainant. The Respondent has no legitimate interests in the disputed domain name and that he has registered and is using the disputed domain name in bad faith.
In accordance with Paragraph 4(b)(i) [sic - the correct Paragraph is 4(i)] of the Policy, the Complainant requests the Administrative Panel appointed in this administrative proceeding issue a decision that the disputed domain name <totalyfreestuff.com> be transferred to the Complainant.
No Response to the Complaint was received from the Respondent.
6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of a domain name to a Complainant under the Policy it is necessary that the Complainant must prove, as required by Paragraph 4(a) of the Policy, that
(i) the contested 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.
The fact that the Respondent has not provided a Response to the Complaint does not relieve the Complainant of the burden of proving its case. In the absence of a Response, Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under Paragraph 14(a) of the Rules in the event of such a "Default" the Panel is still required "to proceed to a decision on the complaint", whilst under Paragraph 14(b) it "shall draw such inferences therefrom as it considers appropriate." It is clear that this does not mean a default decision is automatically to be issued in favour of the Complainant. If that were the intended result then there would be no need to appoint a Panel to decide the dispute. Consequently, the Panel must assess the Complaint on its merits.
The Complainant has provided extensive evidence to demonstrate the Respondent's past history of systematic misappropriation of the familiar trademarks of others (or minor typographical variations of such marks). This may be convincing support for the contention that the Respondent has no rights or legitimate interest in the domain name at issue and that the domain name has been registered and is being used in bad faith, provided always that the Complainant itself has rights which justify protection under the Policy.
It is not enough that there is overwhelming evidence that the Respondent has consistently acted in bad faith in previous cases. Despite what some critics have claimed, the UDRP is not a vehicle which is automatically prejudiced in favour of a Complainant. Each case is to be decided on its own merits - the potential remedy is a matter of contract, not equity. It is not a case of "three strikes (or more apparently in the case of Mr. Zuccarini) and the Respondent is out", although victims of Mr. Zuccarini's tactics might reasonably be excused for complaining that neither the Courts nor the UDRP appear to have found or provided an adequate response to curtail his egregious conduct.
In the present case, the Complainant claims what are presently unregistered trade mark rights in TOTALLY FREE STUFF and totallyfreestuff.com. The domain name at issue is <totalyfreestuff.com>. It is plain that this domain name is confusingly similar to the trade marks claimed by the Complainant.
If either of the Complainant's marks was a registered trade mark, in force and not subject to any opposition or revocation action, then it would also be readily possible to conclude that the Complainant has relevant rights in the mark(s) which would be protectable under the Policy. However, in this case the marks are not registered and the applications were in any event filed after the Respondent registered the domain name at issue.
The Panelist considers it settled interpretation that the reference to "rights" in Paragraph 4(a)(i) of the Policy includes both registered and unregistered rights (this issue has been previously addressed in relation to disputing parties based in the United Kingdom, for example, in the decision in WIPO Case No. D2000-0235 Jeanette Winterson v. Mark Hogarth, as well as in various other cases as cited in the Complaint). In the case of unregistered marks, however, there can be no presumption of entitlement to rights under law and the onus must be on the Complainant to provide convincing evidence that it should be entitled to such rights.
In the Panelist's view, it is reasonable to expect that the standards to be applied to supporting evidence in cases brought under the Policy, and based on claims to unregistered rights in particular, should be equivalent in form and extent to that which would be required in an opponent's evidence-in-chief in a trademark opposition brought on corresponding grounds.
The marks in this case are "TOTALLY FREE STUFF" and "totallyfreestuff.com". These marks are prima facie directly descriptive of what the Complainant provides - i.e. links to and advertising of <totally free stuff>. It is not surprising, therefore, that the Complainant presently has no registered trademark rights in these marks.
This, in itself, does not necessarily mean that the Complainant cannot have any proprietary common law or unregistered rights in the marks. In common law jurisdictions it is generally recognised that a mark can become distinctive (and entitled to registration) on evidence that it has in fact acquired a distinctive character as a result of the use made of it. However, for marks as inherently descriptive and non-distinctive as "TOTALLY FREE STUFF" or "totallyfreestuff.com", the evidence which would be required to prove that the mark has acquired sufficient distinctiveness to merit registration would surely be substantial.
The evidence which would be required to support a claim to protection for the purposes of a trademark opposition would probably not need to be so substantial - for example, it might be sufficient to establish a significant local rather than a national reputation in such a mark. Nonetheless, the Panelist considers that it would certainly require more than mere assertion to justify any claim to proprietary rights in such a descriptive mark.
The Panelist notes that the Respondent did not expressly challenge any of the assertions in the complaint. However, this cannot simply be taken as an admission of all the claims in the Complaint. The Respondent might conceivably have taken the view that the Complainant had failed to make a case meriting a response. The Panelist may be entitled to draw reasonable inferences from the Respondent's lack of response but, in this Panelist's view, it is not justifiable to go so far as to acknowledge a claim to unregistered rights which is inadequately substantiated. The Policy requires a Complainant to prove that it has relevant rights, not merely assert that such rights exist.
Taking all these issues into consideration, the evidence presented by the Complainant falls well short of that which would be desirable to support the claims to proprietary rights in such descriptive marks as "TOTALLY FREE STUFF" and "totallyfreestuff.com" in this case.
On checking, for example, the Panelist found there are in fact several hundred active domain names incorporating the element "freestuff". In addition to the Complainant's <totallyfreestuff.com> and the Respondent's <totalyfreestuff.com>, other active domains apparently not connected with the Complainant include: <totalfreestuff.com>; <totallyfreestuff.co.uk>; <totallyfreestuff.net> ; <totallyfreestuffonline.com>; <tottalyfreestuff.com> and others such as <totallyfreestuff.virtualave.net>. The Complainant's own website asserts that it is "THE ORIGINAL Totally Free Stuff!!", which may be true, but would also seem to be an implicit recognition both that other "Totally Free Stuff" sites exist and that the Complainant can hardly claim exclusive rights in "Totally Free Stuff".
The Complainant has certainly provided no convincing evidence to justify a claim to such exclusive rights - a simple statement of one year's advertising revenue and site visitors can hardly be considered sufficient to show that the Complainant has the exclusive reputation with web users that it seeks to claim.
In the circumstances, the Panelist concludes that the Complainant has not adequately discharged its obligation to show that its claim to unregistered rights in the trademarks is justifiable. The evidence as submitted is simply insufficient to convince the Panelist that the Complainant is entitled to assert such rights in such descriptive marks.
The Complainant pointed to a number of prior decisions under the Policy in support of its case. Whilst the decisions are available, it is not possible to know what evidence was filed in support of the claims in these earlier cases.
In the Panelist's view, none of these cases helps the Complainant overcome the fundamental deficiency in the evidence which obliges the Panelist to conclude that the Complainant has failed in these proceedings to provide sufficient evidence to support its claim to have protectable rights in the descriptive marks "TOTALLY FREE STUFF" and/or "totallyfreestuff.com".
In the present proceedings, it follows that, as the Complainant has not provided sufficient evidence to convince the Panelist that it is entitled to claim such rights, it has not fulfilled the requirements of Paragraph 4(a)(i) of the Policy. No further determination is needed.
By way of comment, the Panelist reaches this conclusion not without sympathy for the Complainant's predicament, particularly after having experienced the Respondent's "mousetrapping" activities himself when checking the domain name at issue. Given the negative impact of such "mousetrapping" the Panelist finds it hard to comprehend why any advertiser would be prepared to pay Mr. Zuccarini for the spurious "clicks" accrued though this method.
For the reasons given in Section 6 above, the Panelist decides that this Complaint should be dismissed for lack of adequate evidence to support the claim to unregistered trademark rights required under Paragraph 4(a)(i) of the Policy.
Dated: January 12, 2001