WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin
Case No. D2002-0666
1. The Parties
The Complainant in this proceeding is AT&T Corp. ("Complainant"), a New York corporation with its principal place of business at Basking Ridge, New Jersey, United States of America.
The Respondent, RaveClub Berlin ("RaveClub Berlin"), is listed as the registrant of the domain names in issue with a listed mailing address of Cherry Hill, New Jersey, United States of America. The Complainant asserts that the Respondent, John Zuccarini ("Mr. Zuccarini"), is merely using RaveClub Berlin as a "doing business as" name and has presented significant evidence to support this assertion. No evidence has been presented to rebut this assertion. Based upon the Complainantís assertion and the evidence submitted, the Panelist is satisfied that Mr. Zuccarini controls the registrations of the domain names in issue registered to RaveClub Berlin. The Panelist will hereafter refer to RaveClub Berlin and Mr. Zuccarini, both individually and collectively, as the "Respondent".
2. The Domain Names and Registrar
The domain names in issue are <atttbroadband.com>, <attbraodband.com>, <attboradband.com>, <attbroadban.com> and <attbrodband.com> (collectively hereinafter referred to as the "Domain Names").
The registrar of the Domain Names is Computer Services Langenbach GmbH d/b/a Joker.com ("Registrar") with a corporate address of Rathausufer 16, D-40213 Duesseldorf, Germany.
3. Procedural History
On July 17, 2002, the Complainant filed a Complaint with the WIPO Arbitration and Mediation Center (the "Center") concerning the Domain Names and paid the required filing fee for appointing a single member panel.
On July 23, 2002, the Center found the Complaint to be in compliance with the formal requirements of ICANN's Uniform Domain Name Dispute Resolution Policy ("Policy"), ICANN's Rules for Uniform Domain Name Dispute Resolution Policy ("Rules") and WIPO's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"). On the same day, the Center proceeded to send a "Notification of Complaint and Commencement of Administrative Proceeding" to the Respondent at the postal and e-mail addresses listed in the domain name registrations. The Center received a notice of non-delivery from the courier service when the Notification and the Complaint were sent to the postal address but did not receive error messages when the Notification and Complaint were sent to the e-mail addresses listed in the domain name registrations and in the Complaint.
On August 13, 2002, after the twenty-day period had expired as required by paragraph 5(a) of the Rules and no response from the Respondent was received, the Center sent a "Notification of Respondent Default" to the Respondent by e-mail with a copy to the Complainant.
On August 21, 2002, the Panelist, as required, submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" with the Center. On August 22, 2002, the Center sent a "Notification of Appointment of Administrative Panel and Projected Decision Date" by e-mail to the parties.
Having reviewed the entire record submitted for this proceeding, the Panelist concurs with the Centerís finding that the Complaint is in compliance with the Policy, Rules and Supplemental Rules and finds that the panel was properly constituted and appointed. The Panelist also finds that the Center has fully discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent" of this proceeding and that the Respondent is in default for failing to file a response to the Complaint. The Panelist shall therefore draw inferences from the Respondentís default as the Panelist considers appropriate based upon paragraph 14(b) of the Rules and shall issue a decision based on the Complaint, the Policy, Rules and Supplemental Rules.
4. Factual Background
The Complaint is based on sixteen U.S. federal registrations for AT&T and AT&T formative marks and four U.S. federal registrations for marks that use ATT without the ampersand. The registration information for these marks was provided in Annexes 10 and 11 of the Complaint. In addition, the Complaint is based on the following U.S. trademark and service applications: AT&T BROADBAND and Design (Serial No. 76/346,385); AT&T BROADBAND PHONE COMMUNICATOR (Serial No. 75/744,775); ATTBROADBAND.PRO (Serial No. 78/057,466); ATTBROADBAND.NAME (Serial No. 78/057,462); and ATTBROADBAND.INFO (Serial No. 78/057,461). The application information for these marks was provided in Annex 12 of the Complaint. Based on a search of the U.S. Patent and Trademark Officeís trademark electronic search system, the Panelist notes that the trademark application for the mark AT&T BROADBAND PHONE COMMUNICATOR was abandoned by the Complainant after the filing of the Complaint in this proceeding. Based upon the evidence submitted and the searching conducted, the Panelist will hereafter referred to the Complainantís active marks collectively as "the Complainantís Marks."
The domain names <att.com> and <attbroadband.com> are registered to the Complainant, as shown by printouts of the corresponding whois records for these domain names attached as Annexes 13 and 16, respectively, to the Complaint. In addition, there are web sites accessible at both domain names and copies thereof were attached as Annexes 14 and 17, respectively, to the Complaint.
The domain name <atttbroadband.com> was registered on August 6, 2001, to RaveClub Berlin. The domain names <attbraodband.com>, <attboradband.com>, <attbroadban.com> and <attbrodband.com> were registered on September 16, 2001, to RaveClub Berlin. Copies of the whois information for these Domain Names was attached as Annex 3 to the Complaint. The Domain Names currently all link to the same web page entitled "HANKY PANKY COLLEGE!!!" which in turn opens multiple browser windows to different advertising/promotional sites displaying numerous banner advertisements. A copy of this web site was attached as Annex 19 to the Complaint.
5. Partiesí Contentions
The Complainant asserts that it is the owner and has rights in numerous registered and common law AT&T trademarks and services marks in the United States as well as many other countries. The Complainant asserts that it also owns numerous marks that use "ATT" without an ampersand and that it has been the registrant of the domain name <att.com> since 1986 and operates a primary corporate web site at this domain name. The Complainant further asserts that it is in the process of registering numerous AT&T BROADBAND marks, which already enjoy common law protection, and that it is the registrant of the domain name <attbroadband.com> since March 2000, and the owner of the web site at this domain name.
The Complainant asserts that it has been selling telecommunications products and services for over a century under the name "AT&T" and phrases that combine "AT&T" or "ATT" with other words. The Complainant asserts that it invested hundreds of millions of dollars in promoting its AT&T brands among consumers in the United States and worldwide. The Complainant asserts that AT&T Broadband is a unit of the Complainant and is the largest provider of broadband services in the United States.
The Complainant asserts that the Domain Names are intended to capture visitors who make common typographical mistakes of either adding a letter, omitting a letter, or switching the order of letters, when searching for the Complainantís web site at <attbroadband.com>. The Complainant asserts that the Domain Names divert visitors almost instantly to a web site that advertises pornography and which leads to a page offering "The Secret to Getting Free XXX Passwords To Top Adult Paysites" and nine advertisements for hard-core pornographic sites. The Complainant further asserts that the Respondent intentionally configured the Domain Names to divert members of the public seeking AT&T broadband products and services for the purpose of generating revenue through Internet traffic and commissions or referral fees for "trial membership" at the sites advertised on <www.amaturevideos.nl>.
The Complainant asserts that although the Domain Names are registered in the name of RaveClub Berlin, this entity has been held to be merely a "doing business as" name for Mr. Zuccarini. The Complainant asserts the fact that RaveClub Berlin and Mr. Zuccarini are one and the same was previously established by the investigation of the United States Federal Trade Commission. The Complainant provided a copy of a recent decision by the United States District Court for the Eastern District of Pennsylvania as Annex 1, where the court considered the Federal Trade Commissionís investigation in its order of injunctive relief against Mr. Zuccarini and his business entities.
The Complainant asserts that the Domain Names are confusingly similar to the Complainantís legal and world famous name, common law marks and registered marks, including AT&T, ATT.COM, 1 800 CALL ATT, CAMP ATT, 1 800 ATT-GIFT, ATT.NET, and AT&T marks that combine AT&T and BROADBAND. The Complainant asserts that the minor alterations do not distinguish the Domain Names in any meaningful way from the Complainantís marks. The Complainant further asserts that the Respondent has combined "att" with variations of "broadband" Ė a term that is not only a communications term that would naturally be publicly associated with the Complainant Ė but also reflects that name of one of the Complainantís largest business units. The Complainant asserts that persons familiar with or looking for the Complainantís broadband service will be confused into thinking that the Domain Names are sites owned, endorsed, sponsored or maintained by the Complainant to promote broadband telecommunications services.
The Complainant asserts that the Respondent has absolutely no rights or legitimate interest in the Domain Names. The Complainant asserts that the Respondent is not the Complainantís licensee, that the Respondent does not own any registered or common law marks containing the terms AT&T, ATT, AT&T BROADBAND, ATTBROADBAND, ATTTBROADBAND, ATTBRAODBAND, ATTBORADBAND, ATTBROADBAN, ATTBRODBAND, or any similar derivation, that the Respondent has not been commonly known by the Domain Names and that the Respondent is not making legitimate noncommercial or fair use of the Domain Names.
The Complainant asserts that the Respondent registered and has been using the Domain Names in bad faith. The Complainant asserts that the Respondent chose to register the Domain Names to exploit the Complainantís marks and goodwill and to divert Internet traffic to his web site. The Complainant further asserts that the Respondent entered into referral fee arrangements that provide remuneration based on each visitor who either sees, clicks on or responds to a given advertisement to which the Respondent diverts traffic. The Complainant asserts that the Respondentís pattern of typosquatting corroborates his bad faith in registering and using the Domain Names and that the pornographic nature of the advertisements to which the traffic is misdirected harms the Complainantís image and further demonstrates the Respondentís bad faith.
Based upon the above, the Complainant requests that the Panelist transfer the Domain Names to it.
No response was received from the Respondent with respect to this proceeding.
6. Discussion and Findings
The Proceeding - Three Elements
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party complainant asserts to an ICANN approved dispute resolution service provider that:
(i) the domain name holderís domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights ("Element (i)"); and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name ("Element (ii)"); and
(iii) the domain name of the domain name holder has been registered and is being used in bad faith ("Element (iii)").
The Panelist can only rule in a complainantís favor only after the complainant has proven that the above-listed elements are present.
Element (i) - Domain Names Identical or Confusingly Similar to the Marks
The Panelist finds that the Complainant has provided sufficient evidence to show that it is the owner of the Complainantís Marks. A review of the second-level domains ("atttbroadband", "attbraodband", "attboradband", "attbroadban" and "attbrodband") of the Domain Names shows that each domain comprises the Complainantís mark AT&T or a slight variation thereof as a prefix and the word "broadband" or a misspelling thereof, that corresponds to a term implying communication and that the public would accordingly associate with the Complainant. The idea suggested by these Domain Names in view of the Complainantís federally registered mark AT&T and the Complainantís long-time use of the mark AT&T is that any possible goods or services associated with or sites accessible at these Domain Names are authorized by the Complainant. The Panelist therefore finds that the Domain Names are confusingly similar to the Complainantís mark AT&T. The ampersand in the Complainantís mark, while currently not reproducible in a domain name, is not considered a distinguishing feature in this case sufficient to avoid a finding that the Domain Names are confusingly similar to the mark AT&T. Nor does the addition or deletion of a single letter or the transposing of two letters in the Domain Names prevent the Domain Names from being considered confusingly similar to the Complainantís mark AT&T. The Panelist therefore finds the Domain Names to be confusingly similar to the Complainantís mark AT&T and that Element(i) has been satisfied .
Element (ii) - Rights or Legitimate Interests in the Domain Names
There is no evidence that the Complainant has at any time ever licensed, sponsored, endorsed or authorized the Respondent to register or use the mark AT&T in any manner. In addition, no evidence has been presented that before notice to the Respondent of the dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Names in connection with any type of bona fide offering of goods or services or that the Respondent is commonly known by the Domain Names, as an individual, business or otherwise. Rather the Complainant has presented sufficient evidence and the Panelistís own review of the Respondentís use of the Domain Names result in a finding that the Respondent is misleadingly diverting consumers to pornographic and commercial web sites in an apparent attempt to profit from referral fees for the Internet traffic misdirected to these Domain Names. See also, Shields v. Zuccarini, 254 F.3d 476, 486 (3d Cir. 2001) (Respondent testified that "he has more than three thousand web sites and earns between $800,000 and $1,000,000 a year from their use"). Such use of the Domain Names by the Respondent cannot be considered as being legitimate noncommercial or fair use of the Domain Names. The Panelist therefore concludes that the Respondent has no rights or legitimate interests in the Domain Names and that Element (ii) has been satisfied.
Element (iii) - Domain Names Registered and Used in Bad Faith
As extensively noted by the Complainant, the Respondent has engaged in a pattern of conduct of registering domain names consisting of misspellings of famous names and trademarks and has admitted in a court testimony that "he registers domain namesÖbecause they are likely misspellings of famous marks or personal names" and that "he is in the business of profiting from the publicís confusion and that he does, in fact profit from this confusion." See Shields v. Zuccarini, 254 F.3d at 483-487. Furthermore, the Complainant has submitted evidence of the Respondent having registered and used a domain name incorporating a misspelling of the Complainantís mark AT&T in bad faith in another Policy decision. See AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002) (<atttwireless.com>). When also considering the Complainantís mark being well known and having a strong reputation, as supported in the uncontested evidence submitted, along with the number of Domain Names registered by the Respondent in this proceeding that are confusingly similar to the Complainantís mark AT&T, it is apparent that the Respondent had actual knowledge of the Complainantís mark and its rights therein at the time of registering the Domain Names.
To further support its assertion of bad faith by the Respondent, the Complainant has provided significant evidence of the Respondent himself or through his various businesses having been found to have registered and used numerous domain names consisting of misspellings of trademarks and famous names in bad faith in other Policy decisions, including one decided by the present Panelist. See, e.g., AT&T Corp. v. John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002) (<atttwireless.com>); NCRAS Management LP v. Cupcake City and John Zuccarini, WIPO Case No. D2000-1803 (February 26, 2001) (<nationalrentalcar.com>); At Home Corporation v. John Zuccarini, WIPO Case No. D2000-1524 (January 30, 2001) (<bluemountian.net>, etc.); Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415 (January 23, 2001) (<nicholekidman.com>, etc.); Link Clicks Inc. d/b/a/ Ad Here and TOTALLYFREESTUFF.COM v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2000-1547 (January 12, 2001) (<totalyfreestuff.com>); WebMD Corporation v. Cupcake Patrol, NAF Case No. FA0011000096106 (January 2, 2001) (<wemd.com>); United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449 (December 29, 2000) (<dillbert.com>); F.A.O. Schwartz v. John Zuccarini, NAF Case No. FA0010000095828 (December 1, 2000) (<faoscwartz.com>, etc.); Hewlett-Packard Company v. Cupcake Patrol, NAF Case No. FA0010000095822 (November 20, 2000) (<hewlettpacker.com>, etc.); 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) (<abecrombie.com>, etc.); Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578 (August 28, 2000) (<wallstreetjounal.com>, etc.); Diageo plc v. John Zuccarini, WIPO Case No. D2000-0541 (August 22, 2000) (<guines.com>). In addition, the Complainant has submitted sufficient evidence showing that the Domain Names resolve to sites where the Respondent is using the Complainantís mark as well as a slight variation thereof in the Domain Names to intentionally attract and subject users to pornographic and promotional sites and pop-up windows for apparent commercial gain. The Respondentís bad faith registration and use are further supported by the adult content of the web sites to which the Domain Names have been and are linked to and by the Respondentís failure to provide accurate contact information in the registrations for these Domain Names.
When viewing the findings and evidence submitted in their entirety, the Panelist concludes that the Respondent has registered and is using the Domain Names in bad faith for the purpose of creating a likelihood of confusion with the Complainantís mark AT&T, as to the source, sponsorship, affiliation or endorsement of the sites to which the Domain Names redirect users or of the products and services offered on those sites. The Panelist therefore finds that Element (iii) has been satisfied.
The Panelist concludes that: (i) the Domain Names are confusingly similar to the Complainantís mark; (ii) the Respondent has no rights or legitimate interests in the Domain Names; and (iii) the Respondent has registered and is using the Domain Names in bad faith. The Panelist therefore requires that the registration of the domain names <atttbroadband.com>, <attbraodband.com>, <attboradband.com>, <attbroadban.com> and <attbrodband.com> be transferred to the Complainant.
Dated: September 5, 2002
1. Based upon the Panelistís finding that the Domain Names are confusingly similar to the Complainantís federally registered mark AT&T, it is not necessary to make a finding of whether the Complainant has common law rights in the marks AT&T BROADBAND and AT&T BROADBAND and Design.