WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Susan Miller v. John Zuccarini, d/b/a Cupcake-Movie
Case No. D2001-0064
1. The Parties
Complainant is Susan Miller, an individual with a postal address at P.O. Box 286053 Yorkville Station, New York, NY 10128, U.S.A. (Miller).
The complaint avers that respondent is John Zuccarini, doing business as Cupcake-Movie, with a postal address at 957 Bristol Pike, Andalusia, PA 19020, U.S.A. or P.O. Box 1088, Bensalem, PA 19020-5088, U.S.A. (Zuccarini). Cupcake-Movie appears to be the registrant of the domain name in issue. Zuccarini is the administrative contact/billing contact for the domain name. The response states "Respondentís contact details are as follows:
Music Wave Investments Ltd.
Suite 106 OR P.O. Box N-4140
Nassau N.P., Bahamas"
2. Domain Name and Registrar
The domain name in issue is <astrologyzone.org>.
The registrar is Network Solutions, Inc. (NSI).
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Millerís complaint via email on January 12, 2001, and in hard copy on January 17, 2001. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Miller made the required payment to the Center. The formal date of the commencement of this administrative proceeding is February 1, 2001.
On January 17, 2001, the Center transmitted via email to NSI a request for registrar verification in connection with this case. On January 19, 2001, NSI transmitted via email to the Center NSIís Verification Response, confirming that (1) the registrant of the domain name in issue is Cupcake-Movie, (2) Zuccarini is the administrative contact and the billing contact, (3) NSIís 4.0 Service Agreement is in effect, and (4) the domain name registration is in "Active" status.
On January 23, 2001, the Center requested that Miller amend the complaint to conform to the jurisdictional requirements of the NSI 4.0 Service Agreement. On January 26, 2001, the Center received Millerís amendment to the complaint via email, and on
January 30, 2001, via hard copy.
On February 1, 2001, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to Zuccarini d/b/a Cupcake Movie via email and post/courier and to the Technical Contact also via facsimile. The Center advised that the response was due by February 20, 2001, pointed out the response should be in accordance with specified rules, described the consequences of a default if the response were not sent by February 20, 2001, and set out the procedure to be followed if Zuccarini elected a three person panel.
On February 16, 2001, the Center received an email from Zuccarini seeking clarification as to appropriate jurisdiction in the courts after this case is decided. On
February 19, 2001, the Center responded via email to Zuccariniís inquiry. On
February 19, 2001, Zuccarini replied, stating since June 4, 2000 he no longer lived or operated any activity in the "3rd district of the federal court in the United States." Zuccarini apparently believed that, because he no longer lived or was active in the so-called "3rd district", and because the proposed defendant does not reside or conduct activity there, he could not file a lawsuit there. Also, he complained about allegedly frustrated attempts to update his whois information.
On February 21, 2001, the Center received via email Zuccariniís "Response In Accordance With The Uniform Domain Name Dispute Resolution Policy."
On March 9, 2001, the Center advised the parties of the appointment of David H. Bernstein and Gordon Harris as panelists. On March 28, 2001, the Center advised the parties of the appointment of David W. Plant as presiding panelist.
On April 10, 2001, the Center advised the parties that the due date for this decision is
April 26, 2001.
4. Factual Background; Partiesí Contentions
a. The Trademarks
The complaint is based on the service mark ASTROLOGY ZONE.
Miller avers she is an astrologer who, inter alia, creates and disseminates material about astrology via her ASTROLOGY ZONE web site. Miller avers she first used the mark in this connection on December 14, 1995, and has continuously since that date used the mark for such services. On September 29, 1998, the United States Patent and Trademark Office issued a registration on the principal register for the service mark ASTROLOGY ZONE. A copy of the registration appears at Exhibit C to the complaint.
Miller avers that by the end of the first year of its appearance (i.e. by the end of 1996), the ASTROLOGY ZONE web site was receiving 800,000 page views per month. Millerís web site now "enjoys over 10,000,000 page views per month, making it the most popular astrology site on the Go.com site, and second in popularity only to ESPN." Miller asserts her database on her website comprises approximately 175,000 people who receive her monthly newsletter via email. Miller avers she answers approximately 1,600 reader letters each week.
Miller avers her success and her web site have "earned her considerable notice and acclaim." In Exhibit D to the complaint, Miller summarizes various television and other media appearances from 1996 through July 2000. In addition, Miller is the author of two books and is a monthly columnist.
Miller avers that, from 1997 through 2000, she and her web site have been accorded numerous awards, and in October 1998 and March 1999, she was profiled in The New York Times.
To increase protection of her mark, Miller avers she has registered six domain names embodying the mark. Copies of the WHOIS data base printouts appear at Exhibit G.
b. The Complaint Re Respondentsí Activities
Miller avers that all three elements of Policy 4.(a) are met because:
1. the domain name in issue is identical or confusingly similar to Millerís mark ASTROLOGY ZONE;
2. Zuccarini has no rights or legitimate interests in the domain name; and
3. the domain name has been registered and is being used in bad faith.
Miller avers that, without authority of Miller, Zuccarini registered the domain name in issue on July 30, 1999. By letter of November 21, 2000 to Zuccarini, Millerís counsel objected to Zuccariniís registration and use of the domain name. Copy of the letter is at Exhibit H to the complaint. (Footnote 1)
On December 14, 2000, Zuccarini transmitted to Millerís counsel two emails, whose content Miller characterizes as "inappropriate for quotation" in the complaint. Copies of the emails appear at Exhibit I to the complaint.
Miller asserts the domain name in issue is "virtually identical to and clearly confusingly similar to" Millerís mark. Miller avers visitors who search the Internet for Millerís web site will be diverted to Zuccarini, "thus increasing the likelihood of confusion as to source, sponsorship, affiliation or endorsement." Visitors to Zuccariniís site will be
"besieged with advertisements for other sites in a manner such that they will be trapped or Ďmousetrappedí in the sites, unable to use the ĎBackí button or the ĎXí button or otherwise escape until having been subjected to clicking on each of a succession of ads."
Miller attaches as Exhibit J printouts of ads from Zuccariniís web site as of
December 27, 2000. One of the ads is entitled "Psychic ZONE" and refers to "live reading ... astrology .... tarot ... find your astrological love match ... ASK an ONLINE PSYCHIC!"
Miller attaches at Exhibit K a printout from Zuccariniís web site as at November 21, 2000. The site touts, inter alia, "FREE Horoscopes!" and "Sign up for horoscopes and get lots of cool stuff FREE!"
Miller asserts that visitors to ASTROLOGYZONE.ORG are likely to believe (1) Millerís astrology web site consists of materials promoted on Zuccariniís site and will not attempt to locate Millerís site, (2) Miller licenses or sponsors Zuccarini or his web site, and/or (3) Millerís web site is unavailable or no longer in service. Miller cites the courtís frustration in having been mousetrapped at Zuccarini sites, as expressed in Shields v. Zuccarini, 89 F.Supp.2d 634, 641 (E.D. Pa. 2000).
Miller avers Zuccarini cannot demonstrate or establish any legitimate interest in the domain name in issue. No relationship between Miller and Zuccarini would give rise to any license, permission or other right. Also, Miller avers the domain name is not the name or nickname of Zuccarini and is not related to any legitimate interest of Zuccarini.
Miller avers Zuccarini is using the domain name in bad faith. Miller asserts Zuccarini has intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Millerís mark as to source, sponsorship, affiliation or endorsement of Zuccariniís web site or products or services advertised on his web site. Miller again cites Shields v. Zuccarini, and notes the courtís finding as to Zuccariniís revenue from every click on sites advertised on Zuccariniís sites, Zuccariniís admission he registered variations of thousands of domain names "because they are confusingly similar to othersí famous marks or personal names ... in an effort to divert Internet traffic to his site," and his annual click-based revenue approaching $1,000,000.
Miller avers Zuccariniís registration of the domain name in issue appears to be part of a pattern and practice of registering domain names containing third party trademarks and personal names, or slight misspellings thereof. Miller includes a partial listing of such registrations at Exhibit L to the complaint.
Miller avers Zuccariniís bad faith is evidenced in decisions rendered against Zuccarini in various fora, citing ten proceedings.
Miller requests that the domain name in issue be transferred to Miller, or in the alternative, the domain name be canceled after "advance notice thereof" to Miller.
The complaint concludes with the requisite certification, signed by counsel, that the information in the complaint is complete and accurate.
c. The Response
Zuccarini avers the complaint is deficient in form and substance. Zuccarini is allegedly misrepresented in the caption and is improperly before the panel. Further, Zuccarini asserts that this proceeding constitutes a taking of property without due process, and the Policy, Rules and Supplemental Rules are unconstitutional. Zuccarini asserts WIPO has no legal authority to hear this matter, let alone issue the remedy sought.
Zuccarini avers the complaint is technically deficient because, inter alia, it "fails to list all legal proceedings relating to the domain names [sic] at issue," and it exceeds "the ten-page maximum."
Zuccarini analogizes "higher-level domain suffixes" to telephone area codes and argues that the first user of a telephone number in one area code would have no cause of action against a "copycat" phone number in a different area code.
Zuccarini contends that registration of his domain name conveys "prima facie rights and legitimate interests," citing U.S. judicial authority that trademark registration establishes a presumption of validity.
Zuccarini contends this is not a case of cybersquatting; rather, Miller is attempting to control the use of the generic term astrology through the Internet. Zuccarini cites WIPO decision in D2000-1385 for the proposition that this proceeding "is not a convenient forum for resolving borderline disputes and/or cases involving material conflicts of fact."
Zuccarini argues that until a court of competent jurisdiction holds that Zuccarini lacks rights and legitimate interests in the domain name in issue, Zuccariniís legitimate rights in the domain name "may not be gainsaid."
Zuccarini asserts Miller "provides no facts whatsoever" to substantiate the claim of use in bad faith. Zuccarini asserts what he did or did not do in other cases is "completely irrelevant," and the decisions in other arbitration panels are irrelevant. Zuccarini asserts "Each case comes de novo without any derivable precedent from other arbitration decisions."
Zuccarini finds support in Saks & Company v. John Zuccarini, WIPO Case No. D2000-1285 and urges this panel to adopt that panelís "cogent reasoning." Zuccarini attempts to distinguish and otherwise criticize other decisions in which Zuccarini has been defendant or respondent. Inter alia, Zuccarini contends he does not compete with Miller, does not offer similar services or products, and simply uses his site for advertising of various websites. Zuccarini compares Millerís listing of cases in which Zuccarini has been a defendant or respondent to the Salem witch trials.
Zuccarini argues the "gestalt of the Internet is its freedom from restrictions and its embodiment of free speech protected by the United States Constitution." The Internet is not to be dominated by "the moneyed interests."
Zuccarini encourages this panel "to eschew the imbecility of outlawing sites that are in entirely different high domains of the Internet." Zuccariniís test is "You cannot have a site that uses the domain name that another entity has registered."
Zuccarini asserts he has demonstrated his prima facie, legitimate interest in the domain name in issue by (1) "authorized registration and ownership," and (2) Millerís failure "to demonstrate any bad faith use" of the domain name, and thus the complaint must fail.
Zuccarini contends the Policy and Rules derive "whatever legitimacy they may have from the underlying law governing trademarks." Zuccarini cites Merriam-Webster, Inc. v. Random House, 35 F.3d 65 (2 Cir. 1994), for the proposition that "astrology" and "zone" are generic, and
"The juxtaposition of the words absent some other context that would warrant finding trademark status must be present for the Complainantís position to be upheld."
It appears that Zuccarini concludes that, when generic terms are used in a domain name, the domain name cannot achieve trademark status.
Zuccarini cites also Arrow Fastener Co., Inc. v. Stanley Works, 59 F.3d 384 (2 Cir. 1995), a trademark case in which Zuccarini asserts the mark T50 was found not to enjoy secondary meaning, and Interstellar Starship Services v. Epix, Inc., 2001 WL 10885 (D.Or. 2001), in which the court allegedly found the domain name epix.com did not infringe the mark Epix. Applying here the so-called Steelcraft factors referred to in the Interstellar case, Zuccarini asserts he should be permitted to use the domain name. Specifically, Zuccarini asserts with respect to four factors --
"(2) The respective companyís products are dissimilar. Respondent does not engage in the same or similar business as Complainant.
(5) Any purchaser using a modicum of ordinary care would not be confused or misled by the entirely different high domain addresses.
(7) Absolutely no evidence of actual confusion was adduced.
(8) The respective product lines of the parties will never intersect."
Zuccarini asserts he has "no intention or desire to commence any business" conducted by Miller. If Miller intends to expand her product lines "into the Internet and use" the domain name in issue, Zuccarini may have a cause of action against Miller.
Zuccarini concludes by casting this dispute as a David and Goliath contest. E.g. --
"... the Goliaths of the world ... want to prohibit the Davidís of the world from using even commonly used words and phrases. Moreover, the Goliaths of the world would like to preclude enterprising individuals and companies from making an honest and legal living. ... The Panel is requested to consider that the Complainant in this case succeeded in taking the domain astrologyzone.com from the lawful owner, D2000-1093. In that case, the lawful owner owned the site prior to the Complainantís filing for a trademark on astrology zone. This type of reverse domain name hijacking must be stopped."
Zuccarini requests that the complaint be dismissed and Miller bear all costs related to this proceeding.
Zuccariniís counsel includes the requisite certification as to completeness and accuracy.
5. Discussion and Findings
Paragraph 4.(a) of the Policy directs that Miller must prove, with respect to the domain name in issue, each of the following:
(i) The domain name in issue is identical or confusingly similar to a mark in which Miller has rights, and
(ii) Zuccarini 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.
Paragraph 4.(b) of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4.(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.(c) of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, shall demonstrate respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii) above.
a. Preliminary Observations
Zuccariniís challenges to the propriety of this proceeding under the Policy and the Rules cannot be resolved here. The Panel is constrained by the Policy and the Rules to resolve this matter in light of the three criteria set out in Policy, Paragraph 4.(a).
Accordingly, Zuccariniís proposed test (viz. "You cannot have a site that uses the domain name that another entity has registered.") and his criticisms of "moneyed interests" and "Goliaths" have no place here. Similarly, the alleged technical deficiencies in the complaint carry no weight. The Panel knows of no "ten-page maximum" applicable here. (Footnote 2) Also, to the extent Zuccarini is "misrepresented in the caption," it is due to his failure to provide current contact information to NSI. Zuccarini criticizes the complaintís failure to list all legal proceedings relating to "the domain names [sic] at issue." Only one domain name is at issue, and Zuccarini provides no information as to any other proceeding relating to it. (Footnote 3)
Zuccarini does properly raise questions as to whether or not Miller has carried her burden of proof in this proceeding. We deal with those questions in the ensuing discussions of each of the Paragraph 4.(a) criteria. It will be clear from this discussion that the Panel does not regard this dispute as borderline or involving material conflicts of fact.
b. Identity or Confusing Similarity
Miller has the burden of proving this element and each of the other two elements of Paragraph 4.(a) of the Policy.
Millerís service mark ASTROLOGY ZONE and Zuccariniís domain name <astrologyzone.org> are virtually identical on their faces.
The only serious question Zuccarini poses with regard to this criterion is whether Miller can have trademark or service mark rights in the term ASTROLOGY ZONE. Zuccariniís principal ground for challenging Millerís right is that each component of the term is a generic term. The U.S. service mark registration issued to Miller on September 29, 1998 disposes of this challenge. 15 U.S.C. ß1057(b) makes it plain that Millerís registration is, inter alia, prima facie evidence of the validity of the mark and of the registration and of Millerís exclusive right to use the registered mark in commerce in connection with the services specified in the registration (i.e. computer services, namely, providing online information in the field of astrology). Many well-known trademarks are composed of generic terms. Zuccariniís contentions as to generic components of Millerís mark fall short of overcoming the statutory presumption
c. Rights or Legitimate Interests
On this record, no challenge has been leveled with respect to (1) the value of the mark to Miller, (2) Millerís continuous use of the mark since December 14, 1995, (3) the notice and acclaim associated with the mark, or (4) any fact averred by Miller as to use or recognition of the mark.
Zuccarini does not dispute that (1) Miller has not authorized Zuccarini to use the mark, (2) the domain name is not Zuccariniís name or nickname, (3) Zuccarini has intentionally attempted to attract Internet users to his web site by creating a likelihood of confusion, (4) Zuccarini registered the domain name and established his "astrologyzone.org" web site four and one-half years after Miller first used the mark, more than two years after Miller applied for her U.S. registration of the mark, and ten months after the U.S. registration was issued to Miller. Nor does Zuccarini deny that his web site comprised the content shown in Exhibits J and K to the complaint (i.e. relating to astrology), or that Zuccarini has engaged in a pattern of registering as domain names trade marks, or close approximations of trademarks, for the purpose of attracting Internet users to his web sites.
However, Zuccarini does dispute Millerís assertion that Zuccarini has no rights or legitimate interest in the domain name in issue. Zuccarini contends that the registration of his domain name conveys "prima facie rights and legitimate interests" to Zuccarini. Zuccariniís citation to trademark authority is inapposite and serves only to reinforce the presumption of validity and exclusivity enjoyed by Miller with respect to her ASTROLOGY ZONE service mark. Moreover, it begs the question for the domain name registrant to assert that registration per se satisfies the second criterion of Paragraph 4.(a).
Also, Zuccarini mistakenly urges that only a court of competent jurisdiction can adjudicate his rights and interests in the domain name in issue. This assertion flies directly and fatally in the face of the second criterion expressed in Paragraph 4.(a).
In addition, Zuccarini asserts he has no intention or desire to commence any business conducted by Miller. This assertion is belied by the content of the web site pages at Exhibits J and K to the complaint, which refer expressly and plainly to "Psychic ZONE", "Find Your Astrological Love Match," "Ask an Online Psychic!", and "FREE HOROSCOPES!"
Zuccariniís most persuasive point is his attempt to demonstrate that Miller has not carried her burden of proof as to rights and legitimate interests. Zuccarini relies on the Saks & Company case, supra, where the Panel found that Saks failed to adduce concrete evidence
sufficient to enable the Panel to find that Zuccarini had no rights or legitimate interests in the domain name there in issue. Here, however, the situation is different, at least insofar as this Panel can glean from the Saks & Company decision. Miller has adduced unrefuted evidence about Zuccarini and his web site. Exhibits J and K, supra, clearly support the inference that Zuccarini registered his domain name substantially after Miller had used and registered her mark, and after Millerís mark had gained favorable recognition and good will -- with the intention of riding on the coat tails of Millerís well known mark and reputation. Zuccarini has made no attempt to show that any of the three illustrative factors in Paragraph 4.(c) applies here. As Zuccarini contends, "Each case comes de novo without any derivable precedent from other arbitration decisions." This is especially so here, where the facts averred here by Miller are not challenged and are demonstrably different from the Saks & Company Panelís view of the facts there.
d. Registration and Use in Bad Faith
Registration and use of the domain name in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by Miller.
Miller asserts that Zuccarini has registered and used the domain name in issue for the purpose of attempting to attract, for commercial gain, Internet users to his web site, by creating a likelihood of confusion with Millerís mark. Miller points to printouts of Zuccarini web pages to support the contention that visitors to the Internet who search for Millerís site will be diverted to Zuccariniís site where they will be "besieged with advertisement for other sites ... such that they will be trapped or Ďmousetrappedí in the sites." In addition, Miller cites Shields v Zuccarini, supra, and the courtís reference to Zuccariniís admission that he has registered variation of thousands of domain names "because they are confusingly similar to othersí famous marks or personal names ... in an effort to divert Internet traffic to his site."
Zuccarini criticizes the Shields opinion and others like it and claims that Miller has provided "no facts whatsoever" to substantiate Millerís claim of use in bad faith. Notwithstanding Zuccariniís criticisms of other decisions and his reliance here on Millerís alleged lack of evidence, Zuccarini does not deny either the admission which the Shields court recounted or the content of the web pages at the offending site in issue here. Zuccariniís prior admission and the content of his web pages submitted by Miller provide ample evidence of Zuccariniís bad faith -- both in registering and in using his <astrologyzone.org> domain name. Moreover, Zuccarini is demonstrably wrong in asserting that four Steelcraft factors favor Zuccariniís position. As this record shows, three of the four factors on which Zuccarini relies undercut his postion. (Footnote 4)
In light of the findings by the Panel, the Panel decides that Miller has met her burden of proof with respect to each of the three elements of Policy, Paragraph 4.(a).
Accordingly, the Panel requires that the registration of Zuccariniís <astrologyzone.org> domain name be transferred to Miller.
David W. Plant
David H. Bernstein
Dated: April 25,2001