WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

NIHC, Inc. and Nordstrom, Inc. v. John Zuccarini

Case No. D2001-1260

 

1. The Parties

The Complainants are NIHC, Inc., a corporation organized in the State of Colorado, United States of America (USA), with place of business in Portland, Oregon, USA, and Nordstrom, Inc., with place of business in Seattle, Washington, USA.

The Respondent is John Zuccarini, with address in Andalusia, Pennsylvania, USA.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is <nordstom.com>.

The registrar of the disputed domain name is CSL GmbH, with business address in Dusseldorf, Germany.

 

3. Procedural History

The essential procedural history of the Administrative Proceeding is as follows:

(a) Complainants initiated the proceeding by the filing of a Complaint via e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on October 18, 2001, and via courier mail received by WIPO on October 22, 2001. Payment by Complainants of the requisite filing fees accompanied the courier mailing. On October 23, 2001, WIPO transmitted a Request for Registrar Verification to the Registrar, CSL GmbH (with the Registrarís Response received by WIPO on October 23, 2001).

(b) On October 24, 2001, WIPO transmitted Notification of the Complaint and Commencement of the Proceeding to Respondent via e-mail, telefax and courier mail.

(c) On November 27, 2001,WIPO transmitted notification to Respondent of its default in responding to the Complaint via e-mail.

(d) On December 14, 2001, WIPO invited the undersigned to serve as Panelist in this Administrative Proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On December 18, 2001, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

(e) On December 26, 2001, Complainants and Respondent were notified by WIPO of the appointment of the undersigned Sole Panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by January 9, 2002. The Panel received a hard copy of the file in this matter by courier from WIPO.

The Panel has not received any requests from Complainants or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

 

4. Factual Background

Complainant Nordstrom, Inc., is licensee of Complainant, NIHC, Inc., (hereinafter referred to jointly as "Complainants") for the word trademark and service mark "NORDSTROM". The "NORDSTROM" mark is registered at the United States Patent and Trademark Office ("USPTO"): reg. no. 1,281,000, dated June 5, 1984, service mark in international class (IC) 42 (covering retail clothing store services); reg. no. 1,280,785, dated June 5, 1984, trademark in IC 25 (covering menís, womenís and childrenís clothing, as further specified), and; reg. no. 2,378,940, dated August 22, 2000, service mark in IC 36 (covering credit card services). Complainantsí "NORDTROM" mark is registered in a number of countries (and regions) outside the United States. Complaint, para. 18 & Annexes 5-6.

In addition to the word mark "NORDSTROM", Complainants have registered at the USPTO a number of other marks incorporating the term "NORDSTROM", including (but not limited to) "NORDSTROM 2ND NATURE" and NORSTROM BEST (id., para 18).

Complainants have registered the domain name <nordstrom.com> and operate an active commercial website at Internet address <www.nordstrom.com> (id., para. 17).

Complainants operate over 140 retail stores in the United States and other countries. Complainants advertise the "NORDSTROM" mark extensively. The mark is well known in the United States in connection with the retail sale of clothing. (Id.)

According to the Registrarís Verification Response to WIPO, dated October 23, 2001, "John Zuccarini" is the listed Registrant of the domain name <nordstom.com>. The Administrative Contact, at the same address, is "John Zuccarini". The disputed domain name was registered on December 15, 1999, and the record of registration was last modified on August 15, 2001.

Respondent has used the disputed domain name to "mousetrap" Internet users who entered the name in the browser address line. That is, when the disputed domain name was entered into a browser as an Internet address, the browser would automatically open a number of website windows, at least temporarily making it difficult for the users to leave the websites to which they had been automatically directed. The websites opened by Respondentís "mousetrap" displayed advertising, inter alia, for on-line gambling services and recorded music. (Complaint, para. 23, and sworn Declaration of Jennifer Martin, agent of Complainants, dated October 15, 2001, id., Annex 7).

Internet users attempting to reach Complainantsí commercial website have entered Respondentís mousetrap and complained to Complainants, apparently concluding that this device was operated by Complainants (id., para. 21 & Annex 7).

Complainants sent a number of cease and desist and transfer demands to Respondent (id., para. 25, Annex 7/1). The only response received from Respondent was an e-mail to Complainantsí counsel of August 16, 2001, that is replete with unusual references to bodily functions and practices intended to be offensive to the recipient.

The Service Agreement in effect between Respondent and CSL Gmbh subjects Respondent to CSL GmbHís dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name Registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

 

5. Partiesí Contentions

A. Complainants

Complainants state that they are the long-standing holder of rights in the trademark and service mark "NORDSTROM", that such mark is registered at the USPTO and elsewhere, that such mark is actively used in commerce and is well known (see Factual Background, supra).

Complainants assert that the disputed domain name <nordstom.com> is virtually identical and confusingly similar to their mark. Complainants allege that Internet users tend to misspell Internet addresses and are likely to inadvertently enter the term registered by Respondent when seeking Complainantsí commercial website.

Complainants state that Respondent has no rights or legitimate interests in the disputed domain name. Respondentís only use of the name has been its bad faith effort to take advantage of Complainantsí mark to divert Internet users.

Complainants assert that Respondent registered and has used the disputed domain name in bad faith. According to Complainants, Respondent has a history of engaging in registering the domain names of others, and has in fact been enjoined by federal courts in the United States from engaging in the type of practice alleged in this case. Respondent failed to respond to Complainantsí contact attempts. Respondent has used the disputed domain name to divert Internet users to websites not associated with Complainants by creating confusion with Complainantsí mark for commercial gain.

Complainants request the Panel to direct the registrar to transfer the disputed domain names to them.

B. Respondent

Respondent did not reply to Complainantsí contentions.

 

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a Respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to ensure that Respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondentís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondentís domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainants are the holder of trademark and service mark registrations for the term "NORDSTROM" in the United States and are using that mark in commerce (see Factual Background, supra). Complainantsí registration of the "NORDSTROM" mark on the Principal Register at the USPTO establishes a presumption of its validity in U.S. law [1]. The Panel determines that Complainants have rights in the trademark and service mark "NORDTROM" [2]. Complainantsí rights in this mark arose long prior to Respondentís registration of the disputed domain name.

Complainants are among the largest retail clothing enterprises in the United States, and advertise their mark extensively. The Panel determines that Complainantsí mark is well known in the United States in the field of retail clothing sales.

The disputed domain name <nordstom.com> is the same as Complainantsí "NORDSTROM" mark, but for the absence in the domain name of the second letter "r" found in the mark, and the addition of the generic top level domain (gTLD) <.com>.

The disputed domain name is very similar to the mark in its visual impression [3]. An Internet user or consumer viewing the disputed domain name is likely to confuse it with Complainantsí mark. Complainantsí mark is distinctive and well known [4]. Respondent appears to have employed a minor misspelling of Complainantsí mark to take advantage of a typographical error that may be made by Internet users while attempting to enter Complainantsí mark as its logical Internet address in their web browsers. Bad faith in selecting a domain name may contribute to a finding of confusing similarity [5]. Complainants have provided evidence of actual confusion among Internet users seeking their commercial website; that is, Internet users who have inadvertently been directed to Respondentís "mousetrap". Actual confusion supports a finding of confusing similarity [6].

The use of the gTLD <.com> is without legal significance from the standpoint of comparing the disputed domain name to Complainantsí mark since use of a gTLD is required of domain name registrants and, in the context of this proceeding, <.com>does not serve to identify a specific enterprise as a source of goods or services [7].

The Panel determines that the disputed domain name <nordstom.com> is confusingly similar to "NORDSTROM" in the sense of paragraph 4(a)(i) of the Policy.

Respondentís only demonstrated use of the disputed domain name has been in connection with directing Internet users to websites unrelated to Complainants. Such use is hereinafter determined to be in bad faith. Bad faith use of a domain name does not establish rights or legitimate interests in the name in the sense of paragraph 4(a)(ii) of the Policy.

Respondent has failed to establish rights or legitimate interests in the disputed domain name. Thus, Complainants have established the second element necessary to prevail on their claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that a respondent "by using the domain name, Ö [has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [respondentís] website or location of a product or service on [its] website or location" (id., paragraph 4(b)(iv)).

Respondent has registered a domain name that Internet users are likely to employ inadvertently as they misspell Complainantsí mark when attempting to locate Complainantsí website using its logical address identifier (that is, its mark "NORDSTROM" combined with the gTLD <.com>). Upon entering the disputed domain name, Internet users have in fact been "mousetrapped" to websites that advertise services that are not sponsored or endorsed by, or affiliated with, Complainants. Respondentís provision of advertisement is presumably undertaken for commercial purposes. The Panel determines that Respondent has used Complainantsí mark in the disputed domain name for commercial gain by creating a likelihood of confusion regarding Complainantsí sponsorship, affiliation or endorsement of his website(s). This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Complainants have established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.

The Panel will, therefore, request the registrar to transfer the domain name <nordstom.com> to the Complainants.

 

7. Decision

Based on its finding that the Respondent, John Zuccarini, has engaged in abusive registration and use of the domain name <nordstom.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <nordstom.com> be transferred to the Complainants, NIHC, Inc. and Nordstrom, Inc.

 


 

Frederick M. Abbott
Sole Panelist

Dated: January 15, 2002

 


Footnotes:

1. 15 USCS ß 1057(b). See, e.g., Avery Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).

2. For purposes of deciding this proceeding, the Panel need not consider the legal significance of Complainantsí "NORDSTROM"-formative marks.

3. This sole panelist has rendered a number of prior determinations involving minor misspellings of marks. See, e.g., Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548, decided July 21, 2000; InfoSpace, Inc. v. Double Down Magazine, WIPO Case No. D2000-1474, decided January 18, 2001, and; involving Respondent in this case, 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, decided January 22, 2001.

4. See Brookfield, id., 174 F.3d 1036, 1053-61 (9th Cir. 1999), citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

5. Brookfield, id. at 1059 (9th Cir. 1999).

6. See, e.g., AMF Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).

7. See Sporty's Farm v. Sportsman's Market, 202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999).