WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Sportsman's Guide, Inc. v. John Zuccarini
Case No. D2001-0617
1. The Parties
The Complainant in this administrative proceeding is The Sportsman's Guide, Inc., a corporation organized under the laws of the State of Minnesota, U.S.A.
The Respondent is John Zuccarini. According to the Whois database, Mr. Zuccarini's address is 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania, U.S.A. However, in his Response, Mr. Zuccarini indicates that he may now be contacted c/o Music Wave Investments Ltd., Saffrey Square, Suite 106, P.O. Box N-4140, Nassau N.P., Bahamas.(Footnote 1)
2. The Domain Name and Registrar
The domain name in dispute is as follows: <sportmansguide.com>. The domain name was registered by Respondent with Core Internet Council of Registrars, Geneva, Switzerland, on December 7, 1999.
3. Procedural Background
On April 30, 2001, the WIPO Arbitration and Mediation Center received from Complainant via e-mail a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).
The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on May 16, 2001.
Respondent failed to submit a Response within the twenty-day period provided for in the Rules, i.e., by June 4, 2001, and a "Notification of Respondent Default," dated June 11, 2001, was forwarded by WIPO to Respondent.
The decision of the Panel originally was due on or before July 4, 2001.
However, in an e-mail dated May 16, 2001, Respondent notified WIPO that he had not received a copy of the Complaint with the electronic transmission notifying him of the filing of such Complaint and the commencement of the administrative proceeding. In view thereof, the Panel, on June 28, 2001, issued an Administrative Order granting Respondent fifteen (15) days from the date of the order within which to submit his Response. The due date of the decision of the Panel was later re-set to July 19, 2001. A Response was received by WIPO via e-mail on July 16, 2001, and such Response has been fully considered by the Panel in reaching its decision in this matter.(Footnote 2)
4. Factual Background
Complainant has operated under the trade name THE SPORTSMAN'S GUIDE for over twenty (20) years and has used THE SPORTSMAN'S GUIDE as a service mark in connection with mail order catalog sales since at least as early as 1977, and in connection with on-line retail sales services since at least as early as 1998. Complainant currently serves over one million customers throughout the world.
Complainant owns three (3) U.S. trademark registrations and one Canadian registration covering its mark THE SPORTSMAN'S GUIDE. See Complaint, Annex 4.
According to the Complaint, Complainant also uses the marks SPORTMAN'S GUIDE and www.sportsmansguide.com in connection with the advertising of its services. See Complaint, Annex 5.
As noted above, Respondent registered the domain name in dispute on December 7, 1999. On March 2, 2001, attorneys for Complainant contacted Respondent demanding that he surrender the domain name to Complainant. See Complaint, Annex 6. In an e-mail dated March 2, 2001, Respondent declined to surrender the domain name. See Complaint, Annex 6.
5. Parties' Contentions
Complainant contends that the domain name sportmansguide.com is confusingly similar to its registered mark THE SPORTSMAN GUIDE and to its unregistered marks SPORTSMAN'S GUIDE and www.sportsmansguide.com since the domain name consists of nothing more than a slight misspelling of the primary words of Complainant's registered mark.
Complainant further argues that Respondent has no rights or legitimate interest in respect of the disputed domain name. It notes that Complainant has never assigned, sold or transferred any rights in any of its marks to Respondent, nor licensed its marks to Respondent, nor granted Respondent permission to use its marks.
According to Complainant, individuals who type www.sportmansguide.com into a web browser are trapped and locked into a maze of automatic hyperlinks to numerous other web pages and such practice has been recognized by other Panels as showing a lack of right or interest in the domain name.
Complainant further contends that Respondent is not commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the name.
With respect to the issue of "bad faith" registration and use, Complainant maintains that evidence of bad faith can be found from Respondent's use of a domain name confusingly similar to Complainant's marks and from Respondent's pattern of conduct under which he registers slight misspellings of famous marks in order to attract Internet users to his web sites for his own commercial gain. According to Complainant, Respondent's web sites do not even make a pretext of showing any legitimate reason for use of the disputed domain name. The name does not appear on any of the web pages which are automatically opened when the site is accessed, nor does there appear to be a viewable web page at that address. Complainant alleges that Respondent has registered in excess of 1300 domain names that fit this pattern.
Complainant refers the Panel to the federal district court decision in Shields v. Zuccarini, 54 USPQ2d 1166 (E.D. Pa. 2000), in which it is noted that Mr. Zuccarini admitted that he registered domain names consisting of likely misspellings of famous marks in an effort to divert Internet traffic to his sites. According to Complainant, other Panels have routinely condemned such action. See, e.g., Abercrombie & Fitch Stores, Inc. v. John Zuccarini, Case No. D2000-1004 (WIPO, Nov. 1, 2000) (stating that misdirection of web traffic to Respondent's other web sites is evidence of bad faith); Dow Jones & Co. v. John Zuccarini, Case No. D2000-0578 (WIPO, Aug. 28, 2000) (finding that the Respondent had acted in bad faith by taking advantage of tendency of Internet users to misspell, and attracting such users to his web site for personal profit); Victoria's Secret v. John Zuccarini, Claim No. FA 0010000095762 (Nat. Arb. Forum, Nov. 18, 2000) (finding that Respondent had acted in bad faith by linking an infringing domain name to series of advertising pages from which Respondent profited).
In his Response, Respondent argues that the disputed domain name is not confusingly similar to Complainant's marks since "at no time have any of the contents on the <sportmansguide.com> website referred to, provided links to, or highlighted anything that relates to sports." Respondent further contends that the domain name in issue does not dilute Complainant's marks.
Mr. Zuccarini further urges that he has a legitimate right protected by free speech, free enterprise and a property interest in the disputed domain name. According to the Response, Respondent receives no income or economic benefit whatsoever for any web traffic visiting the disputed domain name and, therefore, does not cipher any revenue from Complainant. Respondent also contends that his "practice of misspelling and typo squatting services the unique market on the Internet where a large number of `web surfers' specifically type misspelling of words and phrases in order to search for unusual information, advertising and products." Respondent refers to the recent decision of the U.S. Court of Appeals for the Fourth Circuit in Virtual Works, Inc. v. Volkswagen of America, 238 F.3d 264 (4th Cir. 2001), wherein the court states that the Anticybersquatting Consumer Protection Act "was not enacted to give companies the right to fence off every possible combination of letters that bears any similarity to a protected mark. Rather, it was enacted to prevent the expropriation of protected marks in cyberspace and to abate the consumer confusion resulting therefrom."
Mr. Zuccarini also maintains that he did not register the domain name in bad faith. In support of this proposition, he argues that: (1) he does not infer or mislead visitors into believing that they have visited the sportsmansguide.com site or that he is in any way affiliated with Complainant; (2) he does not offer or sell his domain names; and (3) the disputed domain name is comprised of generic and/or descriptive terms and, in any event, is not exclusively associated with Complainant's business.
6. Discussion and Findings
The Panel has carefully reviewed the evidence presented and determines that Complainant clearly has met all the requirements set forth in ¶4.a. of the Policy.
First, there is no question that the domain name in dispute is confusingly similar to Complainant's THE SPORTSMAN'S GUIDE mark. As Complainant points out, the domain name differs from THE SPORTSMAN'S GUIDE mark only in that the word THE has been omitted, the central letter "S" in the word SPORTSMAN'S has been dropped, and the apostrophe in the word SPORTSMAN'S and space between SPORTSMAN'S and GUIDE have been eliminated. None of these changes, from the standpoint of a confusing similarity analysis, is significant.(Footnote 3) In its recent decision affirming the district court's decision in Shields, the U.S. Court of Appeals for the Third Circuit determined that "a reasonable interpretation of conduct covered under the phrase 'confusingly similar' [, as used in the Anticybersquatting Consumer Protection Act,] is the intentional registration of domain names that are misspellings of distinctive or famous names, causing an Internet user who makes a slight misspelling or typing error to reach an unintended site." Sheilds v. Zuccarini, 2001 U.S. App. LEXIS 13288, June 15, 2001.
The Fourth Circuit's decision in the Virtual Works case, cited by Respondent in his Response, does not support a contrary determination on the issue of confusing similarity. Indeed, in that case, the appeals court upheld a lower court finding that Virtual Works had to relinquish rights in the domain name vw.net.
Equally unavailing is Respondent's contention that there is no confusing similarity because his web site has nothing to do with sports. The Panel emphasizes that a determination of confusingly similarity under the relevant Policy is based solely on a comparison of the disputed domain name and Complainant's mark(s). A comparison of the parties' respective goods and/or services is not relevant to the issue of confusing similarity under the Uniform Dispute Resolution Policy (UDRP). An administrative proceeding under the UDRP is not decided on the same basis as a trademark infringement suit.(Footnote 4)
It is also clear that Complainant, through its extensive use of THE SPORTSMAN'S GUIDE and SPORTSMAN'S GUIDE marks and registrations covering THE SPORTSMAN'S GUIDE mark, has rights in the marks.
The Panel further determines that Respondent has no rights or legitimate interests with respect to the domain name. The Panel finds no evidence that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, is commonly known by the disputed domain name, or is making a legitimate noncommercial or fair use of the domain name. The Panel refers to the decisions of other Panels which have determined that Respondent's practice of registering domain names confusingly similar to the marks of others for the purpose of redirecting Internet users to sites unrelated to those maintained by the marks' owners for purpose of commercial gain (Footnote 5) does not establish rights or legitimate interests in the domain name.
See, e.g., America On-Line, Inc. v. John Zuccarini, Case No. D2000-1495 (WIPO Jan. 22, 2001) (deciding that use of confusingly similar domain name to redirect users to sites unrelated to Complainant did not establish any rights or legitimate interests in domain name); Gamesville.com, Inc. v. John Zuccarini, Claim No. FA 0007000095294 (Nat. Arb. Forum, Aug. 30, 2000) (stating that use of domain names "to trap Internet users in advertising pop-up windows is not bona fide offering of goods or services nor legitimate noncommercial use of domain names); Cabela's Incorporated v. John Zuccarini, Claim No. FA 0007000095233 (Nat. Arb. Forum, Aug. 28, 2000) (concluding that use of domain name to expose Internet users to advertising on number of pop-up windows is not use of domain name in connection with bona fide offering of goods or services).
Finally, there is ample evidence of "bad faith" registration and use. The evidence supports a determination that Respondent has engaged in a pattern of registering domain names that correspond to the marks of others and that such conduct occurred in this case, within the meaning of ¶4.b. (ii) of the Policy. It is also clear that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line locations, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site, within the meaning of ¶4.b. (iv) of the Policy.
Consistent with the panel decisions cited above, this Panel further concludes that Respondent's registration of a domain name consisting of a slight misspelling of Complainant's mark in an effort to redirect traffic to other sites, for purposes of commercial gain, itself, constitutes evidence of "bad faith." As noted by the district court in Shields, "[Zuccarini] has registered obvious misspellings of celebrities' names, such as <gwenythpaltrow.com>, <rikymartin.com>, and <britineyspears.com>. He also has registered variations on popular product and website names, like <sportillustrated.com>, <mountianbikes.com, and <msnchatrooms.com>. This conduct is compelling evidence of bad faith." Shields, at 1171.
In view of the above, the Panel grants Complainant's request for transfer to it of the domain name <sportmansguide.com>.
Jeffrey M. Samuels
Dated: July 19, 2001
1. In his Response, Respondent requests the Panel to rule that the jurisdiction and venue of any cause of action challenging a decision of this Panel be subject to the Courts of Justice located in Geneva, Switzerland, presumably because the principal office of the Registrar in this case is in Geneva. The Panel declines such request. The relevant rules require the Complainant to submit, with respect to any challenge to the proceeding, to the jurisdiction of the courts in at least one specified "Mutual Jurisdiction." The term "Mutual Jurisdiction" is defined in the rules as a court jurisdiction at the location of either the principal office of the Registrar or the domain-name holder's address as shown for the registration of the domain name in the Whois database at the time the complaint is submitted to the dispute-resolution service provider. The "Mutual Jurisdiction" statement set forth in the Complaint is consistent with the relevant rules. In such statement, Complainant agrees to submit to the jurisdiction of the U.S. District Court for the Eastern District of Pennsylvania, where, according to the Whois database, Respondent was located at the time of submission of the Complaint.(back to text)
2. In his Response, Mr. Zuccarini requests the Panel to grant the late filing of his Response in order to provide adequate due process. In view of the circumstances outlined above, the Panel grants this request. (back to text)
3. The Panel further concludes that the disputed domain name is also confusingly similar to Complainant's unregistered mark SPORTSMAN'S GUIDE. (back to text)
4. The same holds true with respect to a claim for dilution. Thus, Respondent's arguments directed at this issue are also irrelevant. (back to text)
5. The Panel notes that the federal district court in the Shields case indicated that Respondent's click-based revenue now approaches $1 million per year. (back to text)