WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Eddie Bauer, Inc. v. John Zuccarini aka Cupcake Party

Case No. D2001-0224

 

1. The Parties

The Complainant is Eddie Bauer, Inc. is a Delaware corporation headquartered in Redmond, Washington, USA ("EBI"). EBI initiated this administrative proceeding pursuant to Uniform Domain Name Dispute Resolution Policy (the "Policy") whose terms form part of domain names services agreements (the "Agreements") entered into between Core Internet Council of Registrars of Geneva, Switzerland (the "Registrar").

The Respondent is John Zuccarini, an individual, resident of Andalusia, Pennsylvania, USA (the "Respondent"). The Agreements call for the Respondent to receive Internet message traffic addressed to the domain names <eddiebaurer.com> and <eddiebaur.com>.

 

2. The Domain Name and Registrar

The Domain names in issue are <eddiebaurer.com> and <eddiebaur.com>. The Registrar is Core Internet Council of Registars of Geneva, Switzerland.

 

3. Procedural History

EBI alleges that it has been using the mark EDDIE BAUER to identify goods and services sold in U.S. commerce since 1920. EBI is the owner of incontestable U.S. registrations of EDDIE BAUER as a trademark used on diverse goods sold in U.S. commerce. EBI alleges, without contradiction, that it operates more than 550 retail stores worldwide; that the EDDIE BAUER mark is registered in twenty-seven (27) countries in addition to the United States; and that the EDDIE BAUER mark is well-known and famous. EBI operates web sites associated with the Internet addresses <eddiebauer.com>, <eddiebaueroutlet.com>, and <eddiebauerkids.com>.

 

4. Factual Background

On or about February 12, 2001, EBI filed a complaint with the Arbitration and Mediation Center of the World Intellectual Property Organization (the "Center") which is qualified to administer proceedings commenced under the Policy. In its Complaint EBI alleges that the Respondent has registered <eddiebaurer.com>, and <eddiebaur.com> in bad faith and in violation of pre-existing rights of EBI to exclude others from using EDDIE BAUER as a designation of origin. (Footnote 1) By letter dated

February 23, 2001, the Center notified Respondent of EBIís complaint.

Respondent served a Response which the Center received on March 14, 2001 (the "Response"). In his Response, the Respondent did not deny that the domain names, <eddiebaurer.com> and <eddiebaur.com>, had been registered by Respondent because of their near-identical visual and phonetic similarity to EBIís well-known EDDIE BAUER mark. The Respondent also did not deny that his motivation for registering these names was to capitalize on pre-existing goodwill associated with EBIís marks.

Rather than proffer any evidence or argument which the Policy makes relevant to determination of proceeding such as this, the Response of Respondent puts forward a series of broad, categorical attacks on the Policy or its application to a practice which Respondent himself refers to as "typosquatting." Respondent first argues that "[t]he Policy, the Rules and the Supplemental Rules violate the Constitution of the United States, as well as various other State constitutions, and Federal and State Laws." The argument is unsupported and, in the Panelís view, frivolous. The Policy and Rules referred to comprise terms of domain name services agreements which Respondent accepted and agreed to be bound by when he registered the domain names in question. A registrant in Respondentís position has full access to judicial remedies in the event he is dissatisfied with a Panel decision.

Respondent next argues that registration of a domain name cannot violate the Policy unless it is "identical to trademark or incorporating the correct spelling of the mark in some manner." This argument, too, is frivolous. Case law interpreting the United States Trademark Act cited by Respondent is not controlling in ICANN administrative proceedings; however, and in any event, U.S. trademark law does not limit relief to cases involving accused designations which are "identical" to a complainantís registered trademark.

Finally, Respondent argues that he "does not compete with Complainant" and assertedly appeals to different consumers and uses different marketing media than does EBI. The Panel considers that this assertion, even if true (and the record of this proceeding indicates that it is not true), is of no significance where, as here, the Respondent has effectively admitted having acted with specific intent to capitalize on goodwill belonging to the owner of a registered trademark.

 

5. Discussions and Findings

Section 4(a) of the Policy entitles a Complainant, such as EBI, to seek an administrative transfer of a second level Internet domain name in the event that it "proves," to the satisfaction of the Panel, three predicates: (1) an accused domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) a registrant has no rights or legitimate interests in respect of the accused domain name; and (3) a registrantís domain name has been registered and is being used in bad faith.

EBI has proved each of the preceding elements to the satisfaction of the Panel. Respondent has not controverted Complainantís ownership of trademark or service mark rights in EDDIE BAUER. The accused domain names, <eddiebaurer.com> and <eddiebaur.com>, are confusingly similar to EBIís EDDIE BAUER trademark and service mark.

The Respondent has not denied that <eddie.baurer.com> and <eddie.baur.com> were registered by Respondent precisely because of their confusing similarity to EBIís EDDIE BAUER mark and their consequent potential to divert to Respondent persons looking for EBI. The Panel has no difficulty whatever in concluding, on the record of the case, that this Respondent has no rights or legitimate interests in respect to the Internet domain names <eddiebaurer.com> or <eddiebaur.com>; and that the Respondent did, as alleged, register those domain names in bad faith and for the specific purpose of capitalizing on EBIís goodwill.

 

6. Decision

It is, therefore, the decision and judgment of this Panel that the second level Internet domain names, <eddiebaurer.com>and <eddiebaur.com>, be and the same hereby are ordered transferred to EBI in accordance with the Policy.

 


 

James W. Dabney
Sole Panelist

Dated: April 26, 2001

 


 

Footnote:

1. In addition to <eddiebaurer.com> and <eddiebaur.com>, EBIís original complaint challenged <eddiebouer.com>. By e-mail dated February 16, 2001, the Center notified EBI that <eddiebouer.com> was not currently registered to Respondent. EBI then served an amended complaint on February 19, 2001, which deleted any reference to <eddiebouer.com>.