WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lanco, Inc. v. Zuccarini d/b/a Country Walk

Case No. D2002-0657

 

1. The Parties

The complainants are Lanco, Inc., Lane Bryant, Inc., and Charming Shoppes, Inc. Represented by Frank J. Colucci, Esq., Colucci & Umans, Manhattan Tower, 101 East 52nd Street, New York, New York 10022, United States of America. Facsimile: 212-935-5728, "email@colucci-umans.com".

The respondents are John Zuccarini d/b/a Country Walk, 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania 19020, United States of America, and John Zuccarini, The Cupcake Patrol, PO Box N-4149, Nassau, NP, Bahamas, fax: +1 215 245 7047, "johnz@cupcakeparty.com", "blastout@cyberdude.com", "ace@inetnorth.net", "noc@hotrods.com", "postmaster@laynebryant.com", "raveclub@berlin.com".

 

2. The Domain Name and Registrar

The disputed domain name is <laynebryant.com>.

The registrar with which the domain name is registered is CSL Computer Service Langenbach GmbH d/b/a Joker.com, Rathausufer 16, 40213 Duesseldorf, Germany, telephone no. 49 211 8676741, facsimile no. 49211 8676710, "info@joker.com".

 

3. Procedural History

On July 11, 2002, Complainant filed an email complaint with the WIPO Arbitration and Mediation Center(the "Center"), following it up with a hard copy on July 15, 2002.

On July 19, 2002, the Center sent to the Respondent a Notification of Complaint and Commence of Administrative Proceeding, informing Respondent that Respondent would be in default if a response was not received by the date specified.

Respondent did not respond.

On August 12, 2002, the Center sent Respondent a Notification of Respondent Default. Respondent has not responded.

This sole panelist was appointed on August 26, 2002.

 

4. Factual Background

Complainant, Lanco, Inc. (herein "Lanco"), is the registered owner of numerous U.S. trademark registrations of the LANE BRYANT mark including: 1) LANE BRYANT, Registration No. 2,363,341; 2) LANE BRYANT, Registration No. 2,110,802; 3) LANE BRYANT, Registration No. 1,363,867; 4) LANE BRYANT, Registration No. 1,293,460; and 5) LANE BRYANT, Registration No. 633,237. Copies of said trademark registration certificates are attached hereto as Exhibit C.

Lanco is also the registered owner of numerous foreign trademark registrations such as: Australia, Austria, Bahrain, Brazil, Canada, China, Denmark, Egypt, Finland, France, Germany, Greece, India, Indonesia, Italy, Japan, Jordan, Mexico, New Zealand, Norway, Peru, Portugal, Russia Federation, Saudi Arabia, South Korea, Sweden, Switzerland, Taiwan, United Kingdom and other countries. Copies of said trademark registrations are attached hereto as Exhibit D.

Complainant, Lane Bryant, Inc. (herein "Lane Bryant"), is a licensee of Lanco, Inc. and is authorized to use the LANE BRYANT mark in connection with its retail stores and its website. Currently, Lane Bryant is the owner and operator of over 650 LANE BRYANT retail stores located throughout the United States where Lane Bryant offers for sale and sells plus-size clothing for women. Lane Bryant also advertises and promotes its merchandise at its website located at "www.lanebryant.com".

Complainant, Charming Shoppes, Inc. (herein "Charming Shoppes"), is the parent company of Lane Bryant and Lanco. Charming Shoppes is a specialty clothing retailer with over 2,400 stores located nationwide under brand names such as Lane Bryant, Fashion Bug, Catherine's Plus Sizes, Monsoon and Accessorize.

Lanco is also the registered owner of numerous domain names that incorporate the LANE BRYANT trademark, such as <lanebryantstores.com>, <lanebryantonline.com>, <lanebryant-online.com>, <lanebryantclothing.com>, <lanebryantcreditcard.com>, and <lanebryant-onlinestore.com>.

 

5. Partiesí Contentions

A. Complainant

Complainantsí promotion, advertisement and sale of merchandise in connection with the LANE BRYANT Marks has caused the LANE BRYANT Marks to become famous, distinctive and well known both in the United States and abroad.

Respondent, John Zuccarini, has registered the domain name <laynebryant.com> which is virtually identical and confusingly similar to Complainants' LANE BRYANT trademark. The only difference between Respondent's domain name and Complainants' trademark is that Respondent has inserted a "y" in between the "a" and "n" in the word "LANE". Therefore, people who are attempting to access Complainants' "www.lanebryant.com" website, and misspell the domain name, will be directed to Respondentís infringing website.

Respondent has automatically hyperlinked the website located at "www.laynebryant.com" to a pornographic website located at "www.hanky-panky-college.com" which further hyperlinks Internet users to another gambling/casino website. These series of automatic hyperlinks or "mousetrapping" at "www.laynebryant.com" diverts customers from Complainantsí website, because it prevents people who want to go to Complainantsí website, but who misspell, or enter the wrong website address, from easily realizing they have entered the wrong address and typing in the correct address, which is Complainantsí LANE BRYANT Mark. Instead, people are trapped and locked into a maze of automatic hyperlinks to other websites. As a result, people are likely to be confused and discouraged from further attempts to log onto Complainantsí website.

Respondent has no legitimate trademark interests in the <laynebryant.com> domain name which infringes Complainantsí LANE BRYANT Marks. Complainants, and their predecessors, have been using the LANE BRYANT Marks in connection with the sale of womenís apparel since 1911. Since Respondent has registered a domain name which is a deliberate misspelling, but virtually identical to, Complainantsí LANE BRYANT Marks, Respondent is clearly attempting to confuse the public. Complainantsí LANE BRYANT Marks are famous and distinctive and have been in continuous use since 1911. Accordingly, Respondent registered the infringing domain name with the intent to divert customers of Complainants to Respondentís infringing website, and to benefit from the goodwill and fame associated with Complainantsí LANE BRYANT Marks.

Respondent registered the domain name <laynebryant.com> with the intent to dilute Complainants' LANE BRYANT trademark by having it associated with pornographic and gambling websites. Moreover, Respondent registered and is using the domain name with the intent to profit from the mark by receiving money each time an Internet user accesses his infringing websites. Respondent has no legitimate rights in the domain name and has clearly engaged in a pattern of blatant and egregious cybersquatting as evidenced by the Judgment obtained by the FTC.

B. Respondent

The Respondent has not filed any Response to the allegations raised in the Complaint.

 

6. Discussion and Findings

The Respondent has not filed a Response to the Complaint. Paragraph 5(e) of the Rules provides that if a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the Complaint. Under paragraph 14(b) of the Rules, when a party defaults in complying with any of the requirements of the Rules, in the absence of exceptional circumstances, the Panel is entitled to "draw such inferences therefrom as it considers appropriate". No exceptional circumstances have been brought to the Panelís attention. Accordingly, the panel makes these findings on the basis of the material contained in the Complaint.

This dispute is properly within the scope of the Policy. The registrar of the disputed domain name, Computer Service Langenbach GmbH (CSL), Rathausufer 16, D-40213 Düsseldorf. is a registrar accredited by ICANN (Internet Cooperation for Assigned Names and Numbers) for domains under the top level domains "com", among others. The registration agreement under which the disputed domain name is registered, incorporates the Policy, paragraph 6 of the terms and conditions of that agreement provides, in material part: "(a)An essential condition of registration of domains with CSL is that the customer must accept the UDRP procedure (procedure under the Uniform Domain Name Dispute Resolution Policy). CSL agreements with ICANN and the registries responsible for registering domains both require the agreement of this procedure with the customer, which might be subject to alteration during the term of this agreement.

"b. The customer declares his or her agreement that the Policy will apply in disputes where a third party approaches the customer with a claim that the registration or use of the domain infringes the third party's rights"

The Administrative Panel has jurisdiction to decide the dispute. Under Paragraph 4(a) of the Policy, the Respondent must submit to a mandatory administrative proceeding because the complaint alleges:

(1) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and

(2) The Respondent has no rights or legitimate interests in respect of the domain name; and

(3) The disputed domain name was registered and is being used in bad faith.

The disputed domain name is nearly identical and confusingly similar to Complainants' LANE BRYANT trademark. The only difference between the disputed domain name and Complainants' trademark is that Respondent has inserted a "y" in between the "a" and "n" in the word "LANE". Persons attempting to access Complainants' "www.lanebryant.com" website, who misspell the domain name, will be directed to Respondentís website.

The website "www.laynebryant.com" is linked to a pornographic website "www.hanky-panky-college.com" which further hyperlinks Internet users to another gambling/casino website. Thus customers seeking Complainantsí website who misspell or mistype the URL for Complainants website are diverted from that website into a maze likely to confuse them and to obscure their error. As a result of this confusion, customers are likely to be discouraged from further attempts to log onto Complainantsí website or may believe that Complainants themselves have directed them to pornographic material.

Judicial and administrative-panel precedent overwhelmingly accepts that domain names with variants of trademarks likely to result from mistyping are confusingly similar to the base mark. The United States Court of Appeals for the Third Circuit held that typosquatting violated the Anticybersquaqtting Consumer Protection Act. See Shields v. Zuccarini, 254 F.3d 476, 483-84 (3d Cir. 2001) (intentionally misspelled variants -- <joescartoon.com>, <joecarton.com>, <joescartons.com>, <joescartoons.com> and <cartoonjoe.com> -- of famous name Ė <joecartoon.com> -- were "confusingly similar" under ACPA, affirming summary judgment for plaintiff). Several WIPO panels have concluded that typesquatting violates the UDRP. See La Française des Jeux v. Tavenost Voyeurism Inc, WIPO Case No. D2002-0439 (ordering transfer of <fdjeu.com> and <fdjeu.net> because confusingly similar to <fdjeux.com>); Pfizer Inc. v. Phizerís Antiques, WIPO Case No. D2002-0410 (ordering transfer of <phizer.com> because confusingly similar to Pfizer); OfficeMax, Inc. v. Zuccarini, WIPO Case No. D2002-0354 (ordering transfer of <officmax.com> because confusingly similar to OFFICEMAX); Time Warner Entertainment Co. v. Zuccarini, WIPO Case No. D2001-0184 (ordering transfer of <harypotter.com>, <looneytoones.com>, <scobydoo.com> because confusingly similar to Harry Potter, Looney Tunes, and Scooby-Doo).

Respondent has no legitimate interests in the <laynebryant.com> domain name. Respondent does not offer any bona fide business or sale of any goods and/or services at the <laynebryant.com> domain name.

Complainants, and their predecessors, have been using the LANE BRYANT Marks in connection with the sale of womenís apparel since 1911. Complainantsí LANE BRYANT Marks are famous and distinctive and have been in continuous use since 1911. Respondentís registration of a domain name which is a deliberate misspelling, but virtually identical to, Complainantsí LANE BRYANT Marks, supports the inference that Respondent is deliberately attempting to confuse the public, and that Respondent registered the disputed domain name with the intent to benefit from the goodwill and fame associated with Complainantsí LANE BRYANT Marks in diverting customers of Complainants to Respondent website. Such a purpose is inconsistent with legitimate interests on the part of the Respondent.

The Respondent has registered and is using the disputed domain name in bad faith. The Federal Trade Commission (herein "FTC"), recently obtained a Judgment and Permanent Injunction against Respondent in FTC v. Zucarrini, No. CIV.A. 01-CV-4854, 2002 WL 1378421 (E.D. Pa. April 9, 2002) (defendant's practice constituted deceptive act or practices in violation of Section 5(a) of the FTC Act). The district court found that Respondent engaged in his practices for financial gain, thus satisfying the bad-faith criterion of paragraph 4(b)(iv) of the Policy. The district court also found that Respondent engaged in his practices for the purpose of confusing consumers with respect to intended Websites, thus further satisfying the bad-faith criteria of paragraph 4(b)(4). The injunction obtained by the FTC prohibits Zuccarini from engaging in such unfair and deceptive practices and ordered Zuccarini to disgorge over $1.8 million in profits that Zuccarini derived from his deceptive conduct.

Respondent has a pattern of refusing service and of failing to respond to communications regarding his conduct. In FTC v. Zuccarini, the district court found, in Paragraph 10 of its Judgment and Permanent Injunction that the defendant had failed to answer or otherwise defend as to the FTCís complaint. On August 10, 2000, counsel for the Complainants filed an administrative proceeding with WIPO Center against the Respondent in Abercrombie and Fitch Stores, Inc. v. Zuccarini, WIPO Case No. D2000-1004, alleging that the Respondent had violated the Policy by committing the same type of acts. In that proceeding D2000-1004, counsel for the Complainants was unable to contact the Respondent by U.S. Mail or overnight courier. All correspondence that was sent to Respondent was returned. The Administrative Panel found Respondent in violation of the Policy and awarded transfer of the domain names to the Complainants.

In the instant case, on June 10, 2002, counsel for Complainants sent an e-mail to Respondent demanding that he shut down the offensive websites and transfer the domain name to Complainant, Lanco. Counsel for the Complainants sent the e-mail to both of the e-mail addresses listed on Respondent's whois query record, namely, "JohnZ@cupcakeparty.com" and "blastout@cyberdude.com". Upon sending the e-mail, counsel for Complainants immediately received an e-mail from the e-mail administrator stating that it was unable to deliver the e-mail to the "JohnZ@cupcakeparty.com" address. Respondent's failure to respond to Complainants' e-mail that was successfully sent to "blastout@cuberdude.com" further supports the inference that Respondent registered and is using the domain name in bad faith.

Respondent continues his bad-faith activities despite two federal lawsuits and numerous administrative proceedings which have found Respondent's acts to be in violation of the Anticybersquatting Consumer Protection Act and the Policy.

Respondent registered the domain name <laynebryant.com> with the intent to attract, for commercial gain, Internet users to Respondentís web site, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondentís web site by having it associated with pornographic and gambling websites.

Respondent registered and is using the domain name with the intent to profit from the mark by receiving money each time an Internet user accesses his infringing websites.

Respondent has no legitimate rights in the domain name and has engaged in a pattern of bad-faith conduct in violation of the Rules.

 

7. Decision

The disputed domain name should be transferred to Complainant, Charming Shoppes, Inc.

 


 

Henry H. Perritt, Jr.
Sole Panelist

Dated: September 16, 2002