WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TPI holdings, Inc. v. John Zuccarini
Case No. D2001-0797
1. The Parties
1.1 The Complainant is TPI Holdings, Inc., a corporation organized under the laws of the State of Delaware with its principal place of business located in Atlanta, Georgia, USA.
1.2 The Respondent is John Zuccarini, whose addresses are Saffrey Square P.O. Box N-4149, Nassau N.P., Bahamas, and Atlanta, Georgia 30350, USA.
2. The Domain Names and Registrar
2.1 The Domain Names, the subject of this dispute, are
2.2 The Domain Names are registered with Joker/CSL Computer Service Langenbach GmbH, Germany.
3. Procedural History
3.1 The Complaint was filed electronically on June 15, 2001, and in hard copy on June 18, 2001.
3.2 The Complainant elected to have the dispute decided by a single-member Administrative Panel.
3.3 No legal proceedings have been initiated, as yet. (Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), paragraph 3(b)(xi)).
3.4 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500.00 has been made by Check, payable to World Intellectual Property Organization.
3.5 The Complainant agreed that its claim and remedies concerning the registration of the Domain Name, the dispute, or the disputeís resolution shall be solely against the Domain Name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned registrar, (c) the registry administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.
3.6 A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"), has been sent or transmitted to the Respondent in accordance with Rules, paragraph. 2(b).
3.7 A copy of this Complaint has been sent or transmitted to the concerned registrar Joker/CSL Computer Service Langenbach GmbH.
3.8 On July 13, 2001, Respondent received a Notification of Complaint and Commencement of Administrative Proceeding from the WIPO Arbitration and Mediation Center (the Center) informing the Respondent that an administrative proceeding had been commenced by Complainant in accordance with the Uniform Domain Name Dispute Resolution Policy, 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 Supplemental Rules. On August 13, 2001, the Respondent was determined to be in default for failing to submit a Response.
3.9 The single Panel member, Cecil O.D. Branson, Q.C. submitted a Statement of Acceptance and Declaration of Impartiality and Independence and was duly appointed on August 20, 2001, in accordance with paragraph 15 of the Rules. The Panel was required to forward its decision to the Center by September 2, 2001.
3.10 The Panel finds that it was properly constituted and appointed in accordance with the Rules and WIPOís Supplemental Rules.
4. Factual Background
4.1 Complainant TPI Holdings Inc. is the registered owner of the following trademarks and service marks:
U.S. Registration No. 1,247,037
Issued August 2, 1983
U.S. Registration No. 2,390,815
Issued October 3, 2000
U.S. Registration No. 2,381,590
Issued August 29, 2000
4.2 Complainant and its predecessors, affiliates, and licensees, including Trader Publishing Company, have adopted and used a number of marks incorporating the term "AUTO" and "TRADER" since at least as early as 1974, in connection with print publications that provide advertising and information about automobiles and related goods and services. These publications are distributed throughout the United States.
4.3 Since at least July, 1996, Complainant, its affiliates, and licensees have extended the use of the AUTO TRADER mark to provide advertising and information about automobiles and other related products and services via an online electronic communications network, utilizing the <autotrader.com> domain name and also providing information about AUTO TRADER magazine at other web sites owned by Complainant, including its site located at <traderonline.com>.
4.4 Since August 1999, Complainant has used the <autotrader.com> service mark in connection with providing automotive information via a global computer network relating to vehicles for sale and related information.
4.5 On January 29, 2000, the Respondent registered the domain name <autotradr.com> and on April 6, 2000, the Respondent registered the domain name <autotader.com>.
5. Partiesí Contentions
5.1 Complainant contends that the Domain Names <autotader.com> and <autotradr.com> are virtually identical and confusingly similar to the Complainantís trademarks and service marks identified above, and are therefore in breach of the Policy paragraph 4(a)(i).
5.2 Complainant contends that the Domain Names in question use the term "autotrader," except that Respondent has omitted, in one case the letter "r" in "trader", and in another case, the letter "e" in "trader" in order to divert web site users who mistakenly mistype or misspell "autotrader", and says that users of the Internet could easily make such a mistake in trying to reach Complainantís affiliatesí <autotrader.com> web site.
5.3 Complainant contends that Respondent has no rights or legitimate interests in the Domain Names <autotader.com> and <autotradr.com> pursuant to the Policy paragraph 4(a)(ii) because Complainantís (and its predecessorsí) use and registration of its AUTO TRADER mark predate any use Respondent may have made of <autotader.com> and <autotradr.com> as trade names, domain names, marks, or as common names. Further, Respondent has no intellectual property rights, or legitimate interests, in the disputed domain names.
5.4 Complainant asserts and presents evidence in support thereof that the Respondentís <autotader.com> and <autotradr.com> websites automatically hyperlink to other websites, thus showing that Respondent is not making a bona fide offering of goods or services under the names "autotader" or "autotradr." A visitor to these web sites is automatically hyperlinked to pornographic web sites in which visitors may find themselves "mouse-trapped" which means that they are automatically locked into a series of hyperlinks between pornography websites and various advertisements.
5.5 The Complainant says that there is no evidence that, prior to registering the Domain Names, Respondent had ever been known as or done business as "autotader" or "autotradr".
5.6 The Complainant contends that Respondent registered and used the Domain Names <autotader.com> and <autotradr.com> in bad faith in violation of the Policy, paragraph 4(a)(iii).
5.7 The Respondent has not filed a Response to the Complaint. Under paragraph 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. As no exceptional circumstances have been brought to the Panelís attention, it proceeds to make the findings below on the basis of the material contained in the Complaint.
C. No Other Submissions
5.8 The Panel has not received any other requests from Complainant or Respondent regarding further submissions, beyond the Complaint, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
6. Discussion and Findings
6.1 The Complaint was submitted on the basis of the provisions of the Registration Agreement in effect between the Respondent and Joker/CSL Computer Service Langenbach GmbH. which incorporates, by reference, the Uniform Domain Name Dispute Resolution Policy (the "Policy") in effect at the time of the dispute. The Policy requires that domain name registrants such as Respondent submit to a mandatory administrative proceeding regarding third-party allegations of abusive domain name registration (Policy, paragraph 4(a)).
6.2 Such administrative proceedings are conducted by ICANN-approved dispute resolution service providers such as WIPO. The Policy provides an administrative means for resolving disputes concerning allegations of abusive domain name registration, subject to referral of the dispute to a court of competent jurisdiction for independent resolution (Policy, paragraph 4(k)).
6.3 The Policy, and the Rules, establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).
In order to obtain the relief requested under the Policy, Complainant must prove in the administrative proceeding that each of the three elements of paragraph 4(a) are present:
(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
6.4 Unlike trademark infringement or unfair competition cases, the test to be applied here is confined to a consideration of the disputed Domain Name and the trademark. See AltaVista Company v. S.M.A., Inc. WIPO Case No. D2000-0927; Gateway Inc. v. Pixelera.com, Inc. (formerly Gateway Media Productions, Inc.) WIPO Case No. D2000-0109; America Online, Inc. v. Anson Chan WIPO Case No. D2001-0004; and Cimcities, LLC v. John Zuccarini D/B/A Cupcake Patrol WIPO Case No. D2001-0491.
6.5 As is well-known to the Respondent in this case, the practice of registering Domain Names which are the same as trademarks or service marks in which the Complainant has rights, but changing one letter in these names, is a breach of the Policy. Examples of such cases in which the Respondent has been the losing party include: Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party (WIPO Case No. D2000-0330); Diageo p.l.c. v. John Zuccarini (WIPO Case No. D2000-0541); Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini (WIPO Case No. D2000-0578), Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini (WIPO Case No. D2000-0928); Abercrombie & Fitch Stores, Inc. and A & F Trademark, Inc. v. John Zuccarini d/b/a Cupcake Patrol (WIPO Case No. D2000-1004); Saks & Company v. John Zuccarini (WIPO Case No. D2000-1285); America Online, Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret,Cupcake Patrol, Cupcake City, and The Cupcake Incident (WIPO Case No. D2000-1495); United Feature Syndicate, Inc. v. John Zuccarini (WIPO Case No. D2000-1449); Disney Enterprises, Inc. v. John Zuccarini, et al, WIPO Case No. D2001-0489; Cimcities, LLC v. John Zuccarini D/B/A Cupcake Patrol (WIPO Case No. D2001-0491); FAO Schwarz v. Zuccarini (NAF Claim No. FA0095828); and American Airlines v. John Zuccarini (NAF Claim No. FA0095695). In the Encyclopaedia Britannica case, there were four domain names at issue, two in Dow Jones, twenty-three in Yahoo, nine in Abercrombie & Fitch, ten in America Online, seven in Disney Enterprises, and only one in Saks & Company. There are others. The Respondentís conduct has also been examined by a United States court in Shields v. Zuccarini, 54 U.S.P.Q. 2d 1166 (E.D.Pa. 2000). The Respondent has registered variations of other famous trademarks, trade names, and celebrity names such as "Sony", "Blue Mountain Arts", "Hewlett-Packard", "National Car Rental", "Britney Spears", "Salma Hayek", "Oprah Winfrey", "Jennifer Lopez", "Star Wars", "Mayo Clinic", "Michael Jordan", "Ally McBeal", "Ricky Martin", "USA Today", "Taco Bell", "Austin Powers", "Microsoft", and "Playboy". Indeed, according to the opinion in the Shields case, the Respondent admitted that he had registered "thousands of other domain names, because [underlining added] they are confusingly similar to othersí famous marks or personal names -- and thus are likely misspellings of these names -- in an effort to divert Internet traffic to his sites".
6.6 This Panel finds that pursuant to the Policy paragraph 4(c)(i) that Domain Names <autotradr.com> and <autotader.com> are identical or confusingly similar to trademarks or service marks in which the Complainant has rights.
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
6.7 Respondent is not a licensee of the Complainant, nor is it authorized to use Complainantís trademark or service mark as indicated above, i.e., AUTO TRADER and <autotrader.com>. Respondent registered the Domain Names <autotradr.com> and <autotader.com> without the authorization, knowledge or consent of Complainant TPI Holdings, Inc.
6.8 Once a Complainant makes a prima facie showing that a Respondent lacks rights in the Domain Name, the burden of proof shifts to the Respondent to come forward with demonstrable evidence proving a legitimate interest in the Domain Name. Document Technologies, Inc. v. International Electronic Communications, Inc. WIPO Case No. D2000-0270; Universal City Studios, Inc. v. G.A.B. Enterprises WIPO Case No. D2000-0416; Drexel University v. David Brouda, WIPO Case No. D2001-0067; and The Mills Limited Partnership v. This-Domain-For-Sale WIPO Case No. D2001-0747. This is consistent with the Policy in paragraph 4(c)(iii), which speaks in terms of the Respondent demonstrating his rights or legitimate interests to the Domain Name for legitimate non-commercial or fair use purposes. The Policy strikes a fair relationship between the overall onus of proof in regard to an issue in a case as contrasted with the proof of a fact material to that issue. This Panel finds that the Complainant has made a prima facie showing, as above.
6.9 This Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name <autotradr.com> and Domain Name <autotader.com>.
(iii) that the Domain Name has been registered and is being used in bad faith.
6.10 This Panel agrees with the suggestion made by the Complainant that "registering variants of well-known trademarks with the specific intent to take advantage of inadvertent mistakes, as the Respondent has so clearly done, is a particularly cunning form of cybersquatting, and is the epitome of bad faith."
6.11 Previous Panels, with which this Panel agrees have found that the connection of a Respondentís web site with pornographic web sites, by tarnishing or diluting the Complainantís mark are acting in bad faith. See Nokia Corp. v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102; National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118; and Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors) WIPO Case No. D2000-0644.
6.12 As noted above, the Respondent in this case has been carrying on similar conduct to that in question in this case for some length of time and with regard to a substantial number of domain name cases in which he has been found to have acted in bad faith under the Policy. This, in this Panelís opinion, is evidence of bad faith. However, even without such evidence, this Panel would make such a finding on the basis that this Respondentís conduct, as demonstrated in this case, is such as has been found to constitute bad faith in other cases, including National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net (WIPO Case No. D2000-0118); Autosales Inc. dba Summit Racing Equipment v. John Zuccarini d/b/a Cupcake Patrol (WIPO Case No. D2001-0230); Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party (WIPO Case No. D2000-0330); Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake City, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini (WIPO Case No. D2000-0777); Blackboard Inc. v. Cupcake Patrol (WIPO Case No. D2000-0811); Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini (WIPO Case No. D2000-0928); Budget Rent a Car Corporation v. Cupcake City (WIPO Case No. D2000-1020); America Online, Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident (WIPO Case No. D2000-1495).
6.13 In the Autosales Inc. case, supra, the Panel used language, which this Panel adopts as applicable:
Respondent is trading on the value established by Complainant in its marks to attract users who misspell or mistype Complainant's mark when entering the URL, which includes Complainant's, domain name. Clearly, Respondent is deriving economic benefit from this practice, either by attracting users to Respondent's website, where goods and services are offered, or by the receipt of compensation from the owners of other websites for delivering users to those sites. This constitutes bad faith registration and use as defined by the paragraph 4(b)(iv) of the Policy: "[T]he following circumstances Ö. shall be evidence of the registration and use of a domain name in bad faith . . . by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website 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 your website or location or a product or service on your website or location." While a user who arrives at the site may promptly conclude that it is not what he or she was originally looking for, Respondent has already succeeded in its purpose of using the service mark to attract the user with a view to commercial gain.
6.14 In light of the circumstances to which this Panel has referred, it finds that the Domain Name <autotradr.com> and the Domain Name <autotader.com> have been registered and are being used in bad faith.
7.1 For the reasons expressed above, this Panel finds that the Complainant has satisfied the applicable standard of proof, which is a preponderance of the evidence in relation to each of the three elements of paragraph 4(a) of the Policy.
7.2 Accordingly, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the registration of the Domain Names <autotradr.com> and <autotader.com> be transferred to the Complainant.
Cecil O.D. Branson, QC
Dated: August 22, 2001