WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol
Case No. D2001-0654
1. The Parties
The Complainant is Backstreet Productions, Inc., a Delaware corporation with its principal place of business at 15250 Ventura Blvd., Sherman Oaks, California 91403, USA. Complainant is represented by Keats McFarland & Wilson LLP, Beverly Hills, California, USA.
The Respondent is Mr. John Zuccarini, d/b/a CupcakeParty, Cupcake Real Video, Cupcake-Show, and Cupcakes-First Patrol, 957 Bristol Pike, Suite D-6, Analusia, Pennsylvania 19020, USA. Respondent is represented by the Law Office of Christopher A. Grillo, Fort Lauderdale, Florida 33304, USA.
2. The Domain Names and Registrar
The domain names in dispute are <backstreeboys.com>, <backsreetboys.com>, <backstreetboyspics.com>, <backstreetboyspictures.com>, <bakstreetboys.com>, <backstretboys.com>, <bacstreetboys.com>, <backtreetboys.com>, <backstreetsboys.com>, <backsteetboys.com>, and <backstreetboyz.com>.
The registrar of <backstreeboys.com>, <backsreetboys.com>, <backstreetboyspics.com>, <backstreetboyspictures.com>, <bakstreetboys.com>, <backstretboys.com>, <bacstreetboys.com>, and <backtreetboys.com> is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170.
The registrar of <backstreetsboys.com>, <backsteetboys.com>, and <backstreetboyz.com> is Core Internet Council of Registrars (CORE), WTC II, 29 route de Pre-Bois, CH-1215, Geneva, Switzerland 1215, CH.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Center received the Backstreet Boysí complaint in hardcopy on April 23, 2001, and electronically on May 16, 2001. The Complainant requested a three-member panel. The Respondent, who received a service copy of the Complaint from the Complainant, filed a Response before the formal commencement of the proceeding. The Center received the hardcopy of the response on May 10, 2001.
Meanwhile, on May 16, 2001, the Center sent domain name Registrar Verification requests to Core Internet Council of Registrars (CORE) and Network Solutions, Inc. (NSI). CORE confirmed that it is the registrar of the specified domain names on May 21, 2001 and NSI confirmed itself as the registrar of the remaining domain names on June 1, 2001.
On June 6, 2001, the Center notified the parties of the receipt of Registrar Verifications via email and facsimile. In light of the receipt by the Center of the Response, the Center asked the Respondent whether it wished to dispense with the 20-day response time in order to proceed immediately to the appointment of the three-member panel. The Center noted that the Complainant, as a result of requesting a three-member panel, must bear all costs for the panel. The Center returned the $2,000 check it had received from the Respondent.
The Respondent did not respond to the Centerís proposal. Accordingly, on June 13, 2001, the Center formally commenced the proceedings and set July 2 as the deadline for a final Response. The Center also requested that the Respondent submit the Response via email pursuant to Rule 5(b).
On July 3, 2001, having received no further response or communication from the Respondent, the Center transmitted an Acknowledgement of Receipt of Response and again requested the required electronic version of the Response. The Respondent never complied with this request.
On August 6, 2001, the Center advised the parties of the appointment of Gordon David Harris and Dennis Arthur Foster as panelists, and David H. Bernstein as presiding panelist. The Center also advised the parties that the due date for this decision is August 20, 2001.
4. Jurisdictional Issues
Before turning to the merits, the Panel must first address two jurisdictional issues. First, ICANN Rule 3(b)(xiii) requires the Complainant to submit to the jurisdiction of the courts in at least one specified "Mutual Jurisdiction." The Rules define Mutual Jurisdiction as "a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider." (emphasis added).
The Respondent claims that his business is no longer located in Pennsylvania. He lists his current contact information as Music Wave Investments Ltd., Saffrey Square, Suite 106, P.O. Box N-4140, Nassau N.P., Bahamas. Respondent states that he wishes to change his address, which would have an effect in the event of any post-decision litigation, but that ICANN does not permit a change of address during arbitration proceedings. This policy, Respondent claims, is arbitrary and capricious because it fails to recognize that the Registrantís current address materially affects the jurisdiction and venue of any court action required pursuant to Rule 3(b)(xiii). Although the Panel has considered Respondentís concerns, it denies the request that the Panel order a change of address. Nothing in the Policy or Rules gives a panel the authority to make such a change; moreover, Respondent was free to change its address at any time prior to the filing of the Complaint. Accordingly, the address listed at the time the Provider received the Complaint remains the jurisdictional reference. The Panel concludes that jurisdiction is proper.
Second, although the Respondent(s) did not object, the Panel notes that Complainant has named five separate parties as Respondents: John Zuccarini (<backstreetsboys.com>, <backsteetboys.com>, and <backstreetboyz.com>), CupcakeParty (<backstreetboyspics.com> and <backstreetboyspictures.com>), Cupcake Real Video (<bakstreetboys.com>), Cupcake-Show (backsreetboys.com>, <backstretboys.com>, <bacstreetboys.com>, and <backtreetboys.com>), and Cupcakes-First Patrol (<backstreeboys.com>). Neither the Policy nor the Rules provide for the naming of multiple respondents. A panel has jurisdiction only over parties that have agreed to be subject to its proceedings, such as registrants of gTLDs who have so agreed through their registration agreements. Plaza Operating Partners, Ltd. v. Pop Data Techs., Inc. and Joseph Pillus, WIPO Case No. D2000-0166 (June 1, 2000).
Although these domain names are, technically, owned by different registrants, it is clear that all are alter egos of Mr. Zuccarini, who is personally listed in the Registrar Verifications for each of these domain names. Moreover, the document submitted by Respondentís counsel identifies Mr. Zuccarini, personally, as the Respondent with respect to all of these domain names. Therefore, the Panel concludes that it is appropriate to consolidate the claims against these multiple Respondents in this single action. See Rule 10(e) ("A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.").
5. Response Deficiencies
Rule 5(b)(viii) requires that the Response conclude with the following statement, followed by the signature of the Respondent or its authorized representative: "Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument." The Respondentís document lacked both the required certification and any signature by Respondent or his counsel. These deficiencies, which cannot be waived by the Panel, Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009 (February 29, 2000) (stating that lack of certification renders an answer insufficient), preclude the Panelís acceptance of any factual assertions set forth in the Response.
In addition, despite the requirement for electronic submission and the Centerís repeated requests, the Respondent failed to supply an electronic copy of the Response. See Rule 5(b) ("The response shall be submitted in hard copy and (except to the extent not available for annexes) in electronic formÖ").
Normally, the failure to sign or certify the Response would cause the Panel to disregard the Response. Here, Respondent may have been lulled into a false sense of security because the Center did formally acknowledge receipt of the Response. In these circumstances, one option would be to give the Respondent an opportunity to cure the deficiencies by refiling its Response with the necessary signatures, certification, and electronic copy. In this case, because none of the facts alleged in the Response would affect the result of this dispute, the Panel, in the interests of expediency, has elected to proceed directly to its decision.
6. Factual Background
Complainant is a Delaware corporation which provides all of the commercial activities for the musical group the Backstreet Boys. The Backstreet Boys are well-known pop singers. Complainant owns United States Trademark Registration No. 2,241,482 for the Backstreet Boys mark, which evidences the Backstreet Boysí exclusive use of the Backstreet Boys mark in International Classes 9 (for pre-recorded compact disks, audio cassettes and video cassettes featuring music); International Class 14 (jewelry, namely, dog tags); International Class 16 (paper goods/printed matter, namely, posters, bookcovers, postcards, unmounted photographs); International Class 18 (leather goods, namely, backpacks and fanny packs); International Class 25 (clothing, namely, hats, T-shirts and jackets); and International Class 41 (entertainment in the nature of live performances by a musical group). Complainant applied for the trademark registration on May 19, 1997, claiming first use as early as February 1993 for the Class 9 goods. The mark was registered on April 27, 1999.
The Backstreet Boys have licensed a wide range of products bearing their trademark, including stationery, calendars, posters, watches, board and card games, backpacks, musical products, journals, magnets, stickers, framed pictures, live concert photos, puzzles, t-shirts, Christmas ornaments, trading cards, temporary tattoos, caps, jackets, jewelry, and key chains. These licensed items are projected to result in over twenty million dollars in revenue.
The Backstreet Boys operate a website at "http://www.backstreetboys.com", which features news about the Backstreet Boys, including information regarding future single and video releases, tour dates, photos, and video clips. The website also contains various licensed merchandise available for purchase.
Respondent has never been licensed by Complainant to use the Backstreet Boys trademark. In June and August 1999, Respondent registered the domain names <backstreeboys.com>, <backsreetboys.com>, <backstreetboyspics.com>, <backstreetboyspictures.com>, <bakstreetboys.com>, <backstretboys.com>, <bacstreetboys.com>, and <backtreetboys.com> with NSI. In November and December 1999, Respondent registered the domain names <backstreetsboys.com>, <backsteetboys.com>, and <backstreetboyz.com> with CORE.
Respondent does not offer any goods or services through the websites he established with these domain names. Rather, upon entering Respondentís sites, Internet users are diverted to a number of windows displaying advertisements, and must click on each of the windows before exiting.
7. Partiesí Contentions
Complainant asserts that the Backstreet Boys have common law and statutory trademark rights in the Backstreet Boys trademark based on their celebrity status and success as well as the registered trademark. Complainant avers that Respondent has no rights or legitimate interests in the Backstreet Boys trademark or the infringing domain names. Furthermore, the Complainant alleges bad faith on the part of Respondent based on the fact the Respondent registered and used the infringing domain names well after the Backstreet Boysí success in regard to the trademark.
Complainant cites numerous cases in which ICANN panels and United States federal courts have found that the Respondent engaged in bad faith cybersquatting. Complainant notes that the Respondent profits from the registration of numerous variations of trademarks and celebrity names as domain names and uses them to divert traffic to Respondentís commercial advertisements. Turning oneís browser to these sites causes "pop-up" advertisements for a variety of commercial enterprises to appear.
Complainant avers that Internet users may mistakenly enter web sites located at Respondentís domain names instead of authorized Backstreet Boys websites and may be misled into believing that Complainant sponsors or endorses these advertisers. Finally, Complainant claims that Respondent operates a scheme for profit by means of consumer confusion with the Backstreet Boys in violation of Complainantís trademark rights.
In accordance with Paragraph 4(b)(i) of the Policy, the Complainant requests that the Panel transfer the domain names at issue to the Complainant.
Respondent claims that the Complainant has failed to demonstrate trademark rights to all terms and forms of back, street, and boys on the Internet. The Respondent also claims that Complainant does not have "monopolistic" rights to all variations of the generic terms "back", "street", and "boys" over the internet. The Respondent claims that his web address can "in no way" be confused with any of the Complainantís domain addresses. Respondent further argues that the law only prohibits uses that actually dilute or infringe a trademark, and that courts consider whether the defendantís use has damaged the plaintiffís reputation or prevented another from obtaining plaintiffís services.
Respondent argues that he has a legitimate right, protected by free speech, free enterprise, and property interest, in the domain names. Respondent claims that he obtained the domain names through legal means for a legitimate business interest. Respondent argues that his "practice of misspellings and typo squatting services the unique market on the internet where a large number of Ďweb surfersí specifically type misspelling of words and phrases in order to search for unusual information, advertising, and products."
Respondent claims that he did not register the domain names in bad faith. Respondent argues that Complainantís listing of previous cases involving Respondent is prejudicial and does not qualify as evidence of bad faith. Respondent claims that he does not sell music, videos, or products pertaining to or remotely similar to the Backstreet Boys. Respondent claims that he simply operates a business of registering generic terms for the purpose of providing links to advertisers with no intent to divert Internet users from Complainantís website. Respondent also notes that he made no offer to sell his domain names to anyone.
Respondent requests that the Panel deny the relief sought by Complainant and grant any and all relief the Panel deems appropriate and just.
8. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
A. The Domain Names Are Confusingly Similar to the Complainantís Mark
Ownership of a trademark registration is prima facie evidence of the validity of the trademark. See Miller v. Zuccarini, WIPO Case No. D2001-0064 (April 25, 2001) ß5b; see also Minolta Co., Ltd. v. Cupcake City, WIPO Case No. D2000-1291 (Jan. 18, 2001) ß6. Even had this Panel considered the Respondentís arguments, they fail to rebut the Complainantís claims. Respondent argues that the terms "back," "street," and "boys" are common terms and that, therefore, the domain names at issue do not warrant the trademark protection sought by Complainant. This argument, though, does nothing to rebut the prima facie showing made through the trademark registration; moreover, as Mr. Zuccarini well knows, "[m]any well-known trademarks are composed of generic terms." Miller v. Zuccarini, Case No. D2001-0064 ß5b ("Zuccariniís contentions as to generic components of Millerís mark fall short of overcoming the statutory presumption").
Having established Complainantís trademark rights, there is little dispute but that the domain names <backstreeboys.com>, <backsreetboys.com>, <bakstreetboys.com>, <backstretboys.com>, bacstreetboys.com>, <backtreetboys.com>, <backstreetsboys.com>, <backsteetboys.com>, and <backstreetboyz.com> are "virtually identical and confusingly similar" to the Backstreet Boysí mark. As Respondent concedes by characterizing his conduct as "typo squatting," the only difference between these domain names and Complainantís mark is the purposeful misspellings. Encyclopaedia Britannica, Inc. v. Zuccarini, WIPO Case No. D2000-0330 (June 7, 2000), ß 3 (closely misspelled domain name satisfies "confusingly similar" factor); see also, e.g., Alta Vista Co. v. Yomtobian, WIPO Case No. D2000-0937 (Oct. 13, 2000) (domain names <altabista.com> and <altaista.com> are confusingly similar to trademark ALTA VISTA); Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (June 19, 2000) (domain name <0xygen.com>, spelled with a zero rather than the letter "o", is confusingly similar to trademark OXYGEN).
It is equally clear that the domain names <backstreetboyspics.com> and <backstreetboyspictures.com> are "identical or confusingly similar" to the Backstreet Boysí mark. Although Respondent misspelled no words in these names, he wholly incorporated the Complainantís trademark, along with the generic terms "pics" and "pictures," in the domain names. As prior panels have held, "a domain name is Ďidentical or confusingly similarí to a trademark . . . when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name." Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (September 19, 2000), ß 6. See also Kidman v. Zuccarini, WIPO Case No. D2000-1415 (January 23, 2001), ß5A. Accordingly, Complainant has met its burden under the first factor.
B. Respondent Does Not Have a Legitimate Interest in the Domain Name
Some uses of typographic-error domain names may be legitimate, such as when trademark owners register misspellings to prevent customer loss. e-Duction, Inc. v. Zuccarini, WIPO Case No. D2000-1369 (February 2, 2001) ß6B. Respondentís use falls outside of this category. The Complainant never granted Respondent permission to register these domain names, nor does Respondentís use have any connection whatsoever to the domain names. Respondent is not making a legitimate noncommercial or fair use of these names, is not using them in connection with a bona fide offering of goods or services, and has not been known by the domain names. Policy ∂ 4(c). In fact, Respondent has no reason to use these domain names except to divert Internet surfers who erroneously type in the wrong domain name, or type in the pictures-based domain names perhaps to seek pictures of the Backstreet Boys. The Complainant has thus made a prima facie showing that the Respondent does not have rights or legitimate interests in respect of the domain names. See Document Techs, Inc. v. International Elec. Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000) ("[O]nce a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.").
Respondentís only attempted defense rests on an argument that fails legally and factually. Respondent urges the Panel to acknowledge his advertising mousetraps as a legitimate business attracting consumers who purposefully mistype terms in order to find links to unusual information and advertisements. First, Respondent makes no showing whatsoever to support his assertion that a not insubstantial number of Internet users purposefully mistype famous names and marks to obtain interesting advertisements and information. Moreover, as Mr. Zuccarini well knows, "a use that merely operates to redirect mistaken typists to other sites is not enough to create a legitimate use without a greater connection between the domain name and the redirected site." e-Duction, Inc. v. Zuccarini, WIPO Case No. D2000-1369 (February 2, 2001) ß6B. Here, there is no connection between the sites to which a consumer is directed and the Backstreet Boys trademark. Rather, Respondent uses these celebrity name misspellings to display ads for unrelated goods and services.
Therefore, the Panel concludes that Respondentís use of the domain names at issue does not give him a legitimate interest in the domain names.
C. Respondent Registered and Used the Domain Names in Bad Faith
Respondentís use of these domain names to divert users to unrelated advertisements is classic bad faith. As one recent court has stated, "[t]aking advantage of consumersí known disposition to misspell domain names, Zuccarini has diverted Internet traffic to his web sites, thereby earning substantial revenue from advertisers." Encyclopaedia Britannica, Inc. v. Zuccarini, WIPO Case No. 2000-0330 (June 7, 2000) (finding bad faith under the U.S. Anticybersquatting Consumer Protection Act, Section 43(d) of the Lanham Act).
Furthermore, the many arbitral and judicial decisions rendered against Respondent show that his behavior is part of an overall pattern of misuse of famous marks for illegitimate purposes. Respondentís registration and use of these domain names is thus consistent with, and part of, his practice of profiting from the good name of others, all in bad faith. See Electronics Boutique Holdings Corp. v. Zuccarini, 2000 WL 1622760, at *4 n.11 (E.D. Pa. October 30, 2000) (noting that, "[b]y his own admission, Mr. Zuccarini has registered thousands of domain names through various host companies" and that "[t]he majority of those domain names are misspellings of famous names"); Minolta Co., Ltd. v. Cupcake City, WIPO Case No. D2000-1291 (January 18, 2001) (domain name <minoltacameras.com>); Abercrombie & Fitch Stores, Inc. and A & F Trademark, Inc. v. John Zuccarini d/b/a/ Cupcake Patrol, WIPO Case No. D2000-1004 (November 1, 2000) (domain names <abecrombie.com>, <abercrombe.com>, <abercromie.com>, <abacrombie.com>, <abercrombiefinch.com>, <ambercrombiefitch.com>, <abercrombi.com>, <abercombie.com> and <abercrombieandfitch.com>); Yahoo!, Inc. v. Cupcake Patrol, WIPO Case No. D2000-0928 (September 29, 2000) (23 domain names similar to the trademark " Yahoo!"); Dow Jones & Co., Inc. and Dow Jones LP v. Zuccarini, WIPO Case No. D2000-0578 (August 28, 2000) (domain names <wallstreetjounal.com> and <wallstreetjournel.com>); Diageo p.l.c. v. Zuccarini, WIPO Case No. D2000-0541 (August 22, 2000) (domain name <guinnes.com>); Speigel Catalog, Inc. v. Zuccarini, eResolution Case Nos. AF-0237a-d (July 28, 2000) (domain names <speigals.com>, <speigels.com>, <spiegals.com>, and <spiegles.com>); Encyclopaedia Britannica, Inc., WIPO Case No. D2000-0330 (domain names <encyclopediabrittanica.com>, <brtanica.com> and <britannca.com>); Hewlett-Packard Co. v. Zuccarini, NAF File No. FA00040000994454 (May 30, 2000) (domain name <hewlitpackard.com>); Bama Rags, Inc. v. Zuccarini, NAF File No. FA 0003000094381 (May 8, 2000) (domain name <davemattews-band.com>); Hewlett-Packard Co.v. Cupcake City, NAF File No. FA000200093562 (NAF March 31, 2000)(domain name <hewlittpackard.com>); and Shields v. Zuccarini, 89 F. Supp. 2d 634, 635 (E.D. Pa. 2000)(domain names <joescartoon.com>, <joecarton.com>, <joescartons.com>, <joescartoons.com> and <cartoonjoe.com>).
We therefore find that Respondent has registered and used the domain names at issue in bad faith.
For the foregoing reasons, the Panel decides:
(a) that the domain names <backstreeboys.com>, <backsreetboys.com>, <backstreetboyspics.com>, <backstreetboyspictures.com>, <bakstreetboys.com>, <backstretboys.com>, bacstreetboys.com>, <backtreetboys.com>, <backstreetsboys.com>, <backsteetboys.com>, and <backstreetboyz.com> are identical or confusingly similar to a mark in which the Complainant has rights;
(b) that Respondent has no rights or legitimate interests in those domain names; and
(c) that Respondent has registered and used the domain names in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel concludes that the registration of the domain names at issue should be transferred to the Complainant.
David H. Bernstein
Gordon David Harris
Dennis Arthur Foster
Dated: August 24, 2001