WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Collections Etc., Inc. v. RaveClub Berlin

Case No. D2002-0698

 

1. The Parties

Complainant is Collections Etc., Inc., an Illinois corporation with its principal place of business at 450 Jarvis Avenue, Des Plaines, Illinois 60018-1951, United States of America.

Respondent is RaveClub Berlin located at 600 Haddonfield Road, Cherry Hill, New Jersey 08034, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is <colectionsetc.com> (the "Domain Name").

The Registrar is CSL Computer Service Langenbach GmbH d/b/a Joker.com, Rathausufer 16, 40213, Duesseldorf, Germany.

 

3. Procedural History

On July 24, 2002, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint via email. On July 24, 2002, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On July 26, 2002, the Center received the Complaint in hardcopy along with the required fee.

On August 2, 2002, after the Center sent a Request for Verification to the Registrar requesting verification of registration, the Registrar confirmed that it is the registrar of the Domain Name.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On August 2, 2002, the Center sent the Complaint and a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent with a copy to the Complainant. This notification was sent via email and courier, with the courier package being returned to the Center.

On August 26, 2002, the Center advised the Respondent that it was in default for failing to file a Response. Since August 26, 2002, no Response has been received.

On September 2, 2002, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Paul C. Van Slyke (the "Panelist"), the Center notified the parties of the appointment of the sole Panelist.

On September 9, 2002, after a review of the case file, the Panel issued an Interim Order pursuant to Rule 12 requesting an additional submission from the Complainant. The Interim Order instructed the Complainant to provide proof of its asserted common-law trademark rights in the COLLECTIONS ETC service mark. The Complainantís submission was limited to the above information only.

On September 23, 2002, Complainant responded to the Interim Order.

 

4. Factual Background

Complainant, Collections Etc., Inc., sells household and gift items through its printed catalogs, Internet operations, and an outlet store under its COLLECTIONS ETC. mark. The mark has been in use since January 1997. To Complainantís knowledge its use has been substantially exclusive and no other party has ever claimed that Complainantís use of the mark infringes or dilutes rights in any other mark. Currently, Complainantís catalogs are mailed out approximately eleven (11) times a year with each mailing consisting of between one (1) and twelve (12) million copies. Those mailings and other marketing campaigns have resulted in over three (3) million orders being shipped per year to Complainantís customers throughout the United States. Those shipments are sent in packaging bearing the COLLECTIONS ETC. mark. Since 1997, Complainant has spent more that $75 million on advertising and promotion of its mark, including catalog distribution and website development.

Complainant owns the domain name <collectionsetc.com> and operates a website devoted to its retailing operation at that domain name. Since it began operation in 1999, Complainantís official website has received over two (2) million visits.

Respondent is RaveClub Berlin. It appears Respondent is under the control of a Mr. John Zuccarini, a known cybersquatter. The issue of Mr. Zuccariniís relationship to this proceeding is discussed in more detail, below. Respondent did not provide a Response to the Complaint.

Respondent registered <colectionsetc.com> on March 1, 2001, and currently uses the disputed domain name to redirect users to the <hanky-panky-college.com> and <yes-yes-yes.com> sites, which serve as entry sites promoting still other sites dealing with pornography and gambling. Any attempt by a visitor to the <colectionsetc.com> site to close the browser window or exit the above sites results in the launching of new browser windows directed at the same or similar types of pages. This technique is commonly referred to as "mousetrapping" and creates an insidious sort of video game where the user must close all browser windows before new ones are automatically launched.

Complainant has attempted to contact Respondent via postal mail concerning the Domain Name but was notified that the address given for Respondent in the Registrarís whois database does not exist. Additionally, Complainant attempted to contact the Respondent via email, but did not receive a response.

This instant proceeding represents the second UDRP proceeding brought by Complainant against an entity under the control of Mr. Zuccarini related to the COLLECTIONS ETC. mark. In the previous proceeding, Cupcake Patrol, owned by Mr. Zuccarini, registered the domain name <collectionetc.com>. Complainant filed a UDRP complaint on March 2, 2001, and a decision ordering the transfer of the disputed domain name was made on May 10, 2001. The proceeding is Collections Etc., Inc. v. Cupcake Patrol (WIPO Case No. D2001-0305).

 

5. Partiesí Contentions

A. Complainant

Complainant contends that the <colectionsetc.com> domain name is substantially similar to Complainantís service mark COLLECTIONS ETC and its official domain name <collectionsetc.com> and the only difference is the variation in spelling.

Complaint argues that Respondentís use of the Domain Name damages the goodwill that Complainant has developed in its mark and that Respondentís use of the Domain Name is likely to confuse members of the public as to the source of Complainantís services and the services provided by Respondent. Additionally, Respondentís actions create a false and negative association between Complainant, its COLLECTIONS ETC mark, and Respondentís Internet pornography and gambling sites.

Complainant asserts that a Mr. John Zuccarini is the owner of the Respondent, RaveClub Berlin. Complainant points out that Mr. Zuccarini has been the subject of numerous domain name dispute proceedings, as well as several court actions, and most recently the subject of a suit by the Federal Trade Commission (the "FTC").

Complainant asserts that Respondentís use of the Domain Name has no legitimate purpose and that Respondent registered the Domain Name solely for the purpose of misdirecting Complainantís customers in order to collect advertising fees and generate sales revenues.

Finally, Complainant asserts that Respondent, under the direction of Mr. Zuccarini, registered the disputed domain name on the same day that Complainant initiated the first UDRP proceeding and that the previous proceeding, as well as the timeliness of the registration of the Domain Name currently being disputed, evidence Mr. Zucarriniís bad faith registration of the Domain Name at issue in this Complaint.

B. Respondent

Respondent did not file a Response.

 

6. Discussion and Findings

Paragraph 10(d) of the Rules states that the "Panel shall determine the admissibility, relevance, materiality and weight of the evidence." Paragraph 15(a) further states that " a Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Because both the Complainant and Respondent are entities based in the United States, the Panel shall look to rules and principles of law set out in the statutes and cases of the United States.

Even though Respondent has failed to file a Response or to contest any assertion made by Complainant, the Complainant still has the burden of proving the essential elements of the claim. The Panel will review the evidence to ensure that the Complainant has met its burden. Specifically, paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

(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 legitimate interest in respect of the domain name; and

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

A. Confusingly Similarity to Complainantís Trademark.

The Policy and Rules state that a Complainant must show that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. A mark need not be registered with the Unites States Patent and Trademark Office, as rights can be acquired based on common law usage. In the present case, Complainant asserts that its rights to the COLLECTIONS ETC. mark are derived from common law usage and not registration.

The Panel finds that by a preponderance of the evidence submitted via the original Complaint and the additional submission, that COLLECTIONS ETC. is a mark in which Complainant has common law rights. The fact that the mark has been used since 1997 throughout the United States and has helped generate over $300 million in sales indicates that Complainant has used and advertised its mark in such a way as to acquire rights in the mark.

The Complainant must also prove that the disputed domain name is identical or confusingly similar to Complainantís mark. It is well settled that misspelling of marks does not remove the confusing similarity between the marks. In one case, the disputed domain name <smirnof.com>, consisting of the world-famous SMIRNOFF mark minus the final "f" did not serve to distinguish the disputed domain name and thus was found to be confusingly similar. See Guinness UDV North America, Inc. v. Dallas Internet Services, (WIPO Case No. D2001-1055); See also Williams-Sonoma, Inc. v. Polanski, (WIPO Case No. D2001-0236). Thus in the present case, the simple deletion of the second internal "L" does not make the <colectionsetc.com> domain name distinguishable from Complainantís mark, COLLECTIONS ETC. Therefore, the Panel finds that the Domain Name is confusingly similar to the Complainantís mark pursuant to Policy paragraph 4(a).

B. Rights or Legitimate Interest

Before discussing Respondentís rights in the Domain Name, attention must be directed at the assertion of Complainant that Respondent, RaveClub Berlin is an entity under the control of or owned by Mr. John Zuccarini. The only evidence offered by Complainant that Respondent and Mr. Zuccarini are for all accounts one and the same is an FTC case against Mr. Zuccarini, individually, and various entities under which Mr. Zuccarini does business. In the FTC case, the Respondent is listed as one of Mr. Zuccariniís business entities. The case is FTC v. Zuccarini, 2002 WL 1378421, at *1 (E.D. Pa. April 9, 2002). The Respondent is simply listed as a defendant and is not specifically addressed or mentioned by name anywhere in the text of the decision. While this may appear to be a minor issue, it is not. All of Complainantís evidence concerning not only the Respondentís rights or legitimate interest in the Domain Name as well the last prong, Respondentís bad faith, concerns Mr. Zuccarini as an individual or operating as another of his other business entities and not Respondent itself. Therefore, to ensure the minimum burden of proof is met for all three prongs under Paragraph 4(a), the Panel must be satisfied that Mr. Zuccarini and Respondent are linked.

To determine this issue, the Panel looked to the Federal Rules of Evidence relating to judicial notice. According to Rule 201, "a judicially noticed fact must be one not subject to reasonable dispute in that it is Ö capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned." Additionally, it is noted in Section c of Rule 201 that "a court may take judicial notice, whether requested or not." The Panel concludes that the inclusion of the Respondent as a defendant by the FTC is a fact capable of accurate and ready determination by resort to sources whose accuracy cannot reasonably be questioned and that this fact is enough to link Mr. Zuccarini to Respondent.

Furthermore, it should be noted that Respondent was given an opportunity to refute the link with Mr. Zuccarini and failed to respond in any way. Therefore, the Panel concludes that it is appropriate to take notice of Respondentís status as a defendant in the FTC case and thus its link to Mr. Zuccarini.

Thus, we proceed to Complainantís assertion that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy, paragraph 4(a)(ii).

Prior panels have indicated that a history of complaints filed against a respondent are indicative of no legitimate right of use. See e.g. Schott Glas and NEC/Schott Components Corp. v. Necshott, (WIPO Case No 2001-0127). In the present case, it appears that Mr. Zuccarini has been involved in several UDRP proceedings and lawsuits, including the FTC case, and a prior UDRP proceeding involving this Complainantís mark. The previous decisions and cases indicate that Mr. Zuccarini operates a for-profit business by registering confusing domain name and redirecting users to pornography, gambling, or other sites. The FTC case alone has resulted in a judgment against Mr. Zuccarini in the amount of $1.8 million and an injunction preventing him from continuing in his chosen profession.

This evidence is only strengthened by the fact that Mr. Zuccarini must have been aware of the Complainantís mark. Respondent registered the Domain Name on the same date as a complaint was filed against Mr. Zuccarini and another of his business entities over Mr. Zuccariniís registration of the <collectionetc.com> domain name. Respondentís registration of a domain name confusingly similar to a mark, the existence of which Respondent was made very aware of, indicates that Respondent has no legitimate right or interest in the Domain Name.

Therefore, the Panel finds that the Complainant has sustained its burden of proving the Respondent, through the actions of Mr. Zuccarini, lacks rights to or legitimate interest in the Domain Name.

C. Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith violation of the Policy paragraph 4(a)(iii).

The Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Domain Name. In the instant case, paragraph 4(b)(iv) is most relevant. Under this paragraph, bad faith may be shown in cases where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondentís web site or other online location by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of Respondentís web site or location.

The evidence shows that Mr. Zuccarini has profited greatly from his registration of hundreds of confusing domain names and redirection efforts. In the instant case, it appears that any time a user enters the Domain Name into a browser window and is redirected to the <hanky-panky-college.com> and other similar sites, Mr. Zuccarini profits. All the while, the goodwill associated with Complainantís mark is being tarnished as users attempting to reach a Complainantís site are redirected to unsavory sites.

The Panel finds this conduct by Respondent to be evidence of bad faith and finds that Complainant has met its burden as to this prong.

 

7. Decision

Accordingly, the Panel concludes that (a) the Domain Name is confusingly similar to Complainantís common law trademark; (b) Respondent has no rights or legitimate interest in the Domain Name; and (c) Respondent has registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to the Complainant.

 


 

Paul C. Van Slyke
Sole Panelist

Dated: September 26, 2002