WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Collections Etc., Inc. v. Cupcake Patrol
Case No. D2001-0305
1. The Parties
The Complainant in this administrative proceeding is Collections, Etc., Inc., an Illinois corporation with its principal place of business at 450 East Jarvis Avenue, Des Plaines, Illinois 60018-1951, USA.
The Respondent in this Administrative Proceeding is Cupcake Patrol with an address of c/o firstname.lastname@example.org, 957 Bristol Pike, Suite #06, Andalusia, Pennsylvania, 19020, USA.
2. The Domain Name and Registrar
The disputed domain name is <collectionetc.com>. The Registrar of this domain name is Computer Service Langenback GmbH, of Duesseldorf, Germany.
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to the ICANN Policy and Rules.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the World Intellectual Property Organization ("WIPO") Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
The Administrative Panel consisting of one member was appointed on April 26, 2001, by WIPO.
Complainant filed its Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 2, 2001, by email and on March 6, 2001, by hard copy. The Center dispatched to the Registrar a Request for Registrar Verification on March 7, 2001. The Respondentís Response was received by the Center on March 9, 2001, by email. On March 19, 2001, having verified that the formal requirements of the Policy and the Rules were satisfied, the Center formally commenced this proceeding.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
Neither party requested an opportunity to make further submissions and the Administrative Panel is content to proceed on the basis of the existing record.
4. Factual Background
The following information is derived from the Complainantís material.
The Complainant has been using the service mark COLLECTIONS ETC. throughout the United States of America since at least as early as January, 1997. Through extensive catalog sales and advertising, the Complainant has generated valuable goodwill and wide- spread customer recognition in the COLLECTIONS ETC. mark.
Complainant has circulated more than one hundred million catalogs that feature the COLLECTIONS ETC. mark on the cover and on most internal pages.
Complainant also has featured the mark prominently on its website, <collectionsetc.com> and the website is advertised in the Complainantís catalogs. Complainant has generated more than three hundred million dollars in sales through the catalogs and website. Complaint has mailed catalogs into and received orders from all of the states of the United States.
The Respondent has used the internet link to which the subject domain name resolves, <collectionetc.com>, automatically to link web users to an internet sweepstakes site located at <netsetter.com/r/ns/value/default.asp>, an MP3 download site located at <mp3-downloads.com> and a site soliciting credit card applications at <cupcakeparty.com/html/instant-credit-approval.html>. These sites display banner advertising and links to other commercial sites that offer payment for click-throughs. In addition to linking to these sites, <collectionetc.com> also links automatically to the Complainantís own site at <collectionsetc.com>.
On January 23, 2001, the Complainant sent a letter to the Respondent by Federal Express addressed to Cupcake Patrol and to JZ Design, 957 Bristol Pike, Andalusia, Pennsylvania, and by e-mail to email@example.com and BobbyVee@cupcakeparty.com, informing it of the Complainantís service mark rights in the mark COLLECTIONS ETC. and demanding that the Respondent stop using the subject domain name. After three failed Federal Express delivery attempts and no response via return e-mail, the Complainant sent the letter to Respondent by registered mail, return receipt requested on February 5, 2001.
The Respondent and related entities are listed as Registrants for numerous other domain names in which third parties hold rights. The Network Solutions whois registration records for the <mp3-downloads.com> and <cupcakeparty.com> domain names list the Registrants of those domain names (JZ Design and Cupcake City) as having the same address in Andalusia, Pennsylvania, U.S.A. as the Respondent. Further, the <netsetter.com> site is linked from the same <cupcakeparty.com> site and a <musiclyrics.net> site. The whois database indicates that the Registrant of the <musiclyrics.net> site, Cupcake-Show, also has the identical Pennsylvania address.
There are a great many domain names owned by "Cupcake" Registrants, each associated with Mr. John Zuccarini. Several lawsuits and numerous UDRP complaints have been filed against Mr. Zuccarini in connection with domain names registered by him and his companies. In addition, the Respondent and related entities have registered numerous domain names comprising a misspelled version of a valid trademark or well known individualís name.
The following information is derived from the Respondentís material.
The Respondent does not compete with the Complainant. It does not offer similar services or products.
5. Partiesí Contentions
The Complainant relies on its use of the words "collections etc." as establishing the requisite right to sustain its claim based on a service mark and says that the subject domain name is "substantially similar" to its service mark.
Relying on the use to which the Respondent has put the subject domain name, the Complainant asserts that the Respondent does not have a legitimate interest in it.
Bad faith is alleged based on a number of factor including the fact that the Respondent obviously knows the identity of the Complainant because it maintains a link to the Complainantís web page and related conduct by the Respondent and entities associated with it.
The Respondent asserts as a preliminary, overriding and dispositive matter, that the WIPO lacks authority to hear or issue a ruling with respect to the controversy based upon the Complaint. The 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 Respondent realizes that this is not the appropriate forum to argue these legal issues, but asserts that the WIPO is involved in the taking of property without due process and that "Önumerous other [unspecified] violations are present such that the entire faux legal proceeding before the WIPO cannot be legally binding".
Reference is made to the Complainantís use of the words "cybersquatting" and "typosquatting" and to definitions of those terms.
The Respondent says that the Complainantís case is based on the incorrect proposition that "Öa misspelling of a name is ipso facto confusingly similarÖ". It "Öencourages the panel to eschew the imbecility of outlawing sites that are spelled similar to another." The Respondent also challenges the Complainantís right to the word "collections" noting that the Complainant does not have a registered trademark and asserting that it could not get one for the words in issue.
Reference is made to a number of domestic court decisions dealing with various points, including the law pertaining to permanent injunctions and trademark infringement.
The Respondent decries the Complainantís reference to other ICANN decision involving the Respondent and to other registrations made by the Respondent or those related to it. Relying on Knight Ridder, Inc. v Zuccarini et. al FA010100096551 (March 2001), the Respondent says that whatever may have occurred in other circumstances is not relevant to this case.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a service mark in which the Complainant has rights; and
(ii) the Respondent has no legitimate interest in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of 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;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
Reference has been made to other ICANN domain dispute decisions and to the decision of domestic courts. Although these decisions are neither binding on an administrative panel nor determinative of the issues it must decide, they can be of assistance.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant asserts that it has made extensive use of the words "collections etc." and has generated significant revenue by so doing. The Respondent does not quarrel with these contentions, but says that the Complainant cannot lay claim to the word "collections".
An ICANN domain dispute proceeding is not a forum for the final resolution of disputed intellectual property rights. Regardless of the whether the Complainant could have rights in the word "collections" standing alone, it is coupled with the word "etc.". This adds an element of uniqueness which the Administrative Panel is prepared to acknowledge.
The Respondent asserts strongly that a mere misspelling should not ground a complaint and lead to a conclusion that a domain name is confusingly similar. The Complainantís assertion on this point is imprecise. It uses the phrase "substantially similar".
In this case there is no "misspelling". The word "collection" is not misspelled. The question is whether in the context of this case the subject domain name is identical or confusingly similar to the Complainantís rights. The words are essential identical. In many ICANN cases that fact has satisfied the requirements of paragraph 4(a)(i). It does so in this case.
Merely deleting a letter from one of the words in a Complainantís mark does not avoid the clear link between a domain name and the mark. In addition, an administrative panel is entitled to take into account all of the information made available to it. In this case, this includes the fact that the subject domain name is being used to lead through the Internet to the Complainantís web page.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondents Legitimate Interest
The Respondentí s use of the subject domain name to link to the Complainantís web page supports a conclusion that it does not have a legitimate interest in the subject domain name.
The main thrust of the Respondentís position is that the Complainant cannot lay claim to the word "collections". It also relies on a number of United Statesí infringement cases.
As noted, this is not the forum for resolving finally disputed intellectual property rights. The issue in this case does not simply concern the word "collections". The Respondent offers no explanation why it has a legitimate interest in the combination of words that form the subject domain name.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
The fact that a Respondent has no legitimate interest in a domain name that is identical or confusingly similar to a mark to which a Complainant has rights is not sufficient standing alone to establish bad faith. Bad faith is a discrete component of an ICANN domain name dispute that a Complainant must show.
Evidence of similar conduct also does not establish bad faith, but it is not necessarily irrelevant. Facts are relevant if they are logically probative of a material fact. A material fact is one that must be established to sustain a legal conclusion: in this context, a violation of the Policy by bad faith. Similar fact evidence must be approached with caution, but it need not be ignored, indeed in appropriate circumstances, should not be ignored.
An administrative panel must base its conclusion concerning bad faith on a consideration of all of the information made available to it. This can include facts which are relevant to whether a domain name is identical or confusingly similar and whether a Respondent has a legitimate interest in the domain name.
In this case the Respondent has registered a domain name that essentially is identical to the Complainantís mark. No explanation for doing so is given. The Complainant wrote to the Respondent asserting its rights. The Respondent did not reply.
The Respondent uses the subject domain name to link to the Complainantís web page. No explanation for this is given.
The Complainant refers to the fact that the Respondent or those associated with it have been involved in a number of domain name dispute cases and have registered a large number of names in circumstances analogous to the context of this case. The Respondent does not dispute these facts, but states merely that they are irrelevant. Conduct that reveals a scheme or plan, a course of operations, is not irrelevant. Its probative value may be one of weight, but it is a matter, which can be taken into account in assessing the implications of all of the information that an administrative panel has at hand.
The Respondent focuses mainly on legal issues, but bad faith is a finding of fact. It has not supplanted the proper inferences that arise from a consideration of all of the information in this case.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the evidence and its findings of fact, the Administrative Panel concludes that the Complainant has established its case. The Complainant requests that the subject domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson
Dated: May 10, 2001