WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Electronic Arts Inc. v. John Zuccarini
Case No. D2003-0141
1. The Parties
The Complainant is Electronic Arts Inc., California, United States of America represented by Lisa M. Sitkin and Katherine A. Keating of Steinhart & Falconer, LLP of San Francisco, CA, United States of America.
The Respondent is John Zuccarini, Nassau, Bahamas, represented by Ari Golberger of ESQwire.com Law Firm of Cherry Hill, NJ, United States of America.
2. The Domain Name and Registrar
The disputed domain name <simscity.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com of Rathausufer 16, 40213 Duesseldorf, Germany (the Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 25, 2003, by e-mail and on February 27, 2003, in hard copy. On February 25, 2003, the Center acknowledged receipt of the Complaint. On February 25, 2003, the Center transmitted by e-mail to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue. On February 26, 2003, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. On March 5, 2003, the Center verified that the Complaint satisfied the formal requirements of the 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").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2003. The Response was filed with the Center on March 26, 2003.
The Center appointed Dr. Katalin Szamosi as the sole panelist in this matter on April 3, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The language of the administrative proceeding is English.
4. Factual Background
The Complainant claims to be the worldís leading interactive entertainment software company. Complainant set forth that it develops, publishes and distributes software worldwide for personal computers and video game systems. It cites the SimCity series, the Ultima Online Series and The Sims series as some of its highly popular products.
The Complainant claims to be the registered owner of the trademark SIMCITY and related marks including the marks SIMCITY 2000, SIMCITY 3000, SIMCITY CLASSIC, and THE SIMS. Complainant enclosed copies of the registration certificates and U.S. Patent and Trademark Office Trademark Electronic Search System records of United States trademark registrations for SIMCITY (Reg. No. 1568104), SIMCITY 2000 (Reg. No. 1847189), SIMCITY 3000 (Reg. No. 2254183) SIMCITY CLASSIC (1847414) and THE SIMS (2407266) in Exhibit A to Annex 2 of the Complaint.
Respondent registered the domain name <simscity.com> on April 26, 2000.
On January 23, 2003, Complainant sent a "Cease and Desist" letter to the Respondent via registered mail and e-mail. The letter is enclosed as Exhibit A to Annex 3 of the Complaint.
The Respondent did not respond to the letter, and the Complainant has brought its case before the Center.
5. Partiesí Contentions
The Complainant claims that the said domain name <simscity.com> is nearly identical or confusingly similar to more than one trademark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the said domain name; and that the domain name was registered in and is being used in bad faith. The Complainant requests the Administrative Panel to direct that said domain name be transferred to the Complainant.
Complainant states that the domain name <simscity.com> is nearly identical and is confusingly similar to several trademarks and service mark owned by the Complainant, to which the Complainant owns statutory and common law rights. Complainant argues that the slight differences between its marks and the domain name in question have no legal significance for purposes of determining whether the domain name is identical or confusingly similar to Complainantís marks. As an example, it states that with respect to the SIMCITY mark, the addition of ".com", and the change from plural to singular are irrelevant.
Complainant sets forth that when visiting the domain name in question, the Internet users are diverted to web pages offering links to websites containing graphic pornography and offering related paid subscriptions and services. To support this statement, Complainant enclosed the declaration of Katharine Keating as Annex 3 to the Complaint.
According to the Complainant, the Respondentís sole use of the <simscity.com> domain name has been to hijack consumers seeking Complainantís online products and services for its own financial benefit by diverting them to pornographic websites, and by this Respondent can not establish legitimate rights in the domain name.
Complainant set forth that the Respondentís use of the domain name to direct costumers to pornographic websites does not qualify as "bona fide offering of goods and services". Complainant also sets forth that the Respondent has never sought or obtained a licence from the Complainant to use the domain, and that Respondent has not registered the <simscity> domain name or any corresponding name as a trade or service mark, and that these two facts are sufficient to show the lack of legitimate rights.
Complainant also claims that based on the longstanding use of the SIMCITY marks, Respondent should have been aware of the association of these marks with the Complainant, and that Respondentís registration and use of the domain can only be regarded as an attempt to exploit the value of Complainantís mark for financial gain.
The Complainant also refers to the cases Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO D2000-1415 and Electronics Boutique Holdings Corp., 2000 WL 1622760, and sets forth that Respondent has registered hundreds of domain names incorporating terms in which he has no rights, and that the majority of these domain names are misspellings of famous names, and this is an evidence of lack of legitimate rights on Respondentís part.
According to Complainantís standpoint, Respondentís registration and use of a domain name corresponding to the trademarks of a well-known company such as Complainant, in order to misdirect Internet users to other websites constitutes bad faith as per Paragraph 4 (b) (iv) of the Policy. Complainant thereby referred to the case National Hockey League and Lemieux Group Lp. v. Domain for sale, WIPO D2001-1185.
Complainant claims that the Respondentís use of the domain name in connection with pornographic websites that contain highly offensive materials could only tarnish distinctiveness and repute of Complainant and the SimCity games, and this demonstrates bad faith on the Respondentís part. Complainant cites the case Electronic Arts Inc v. Sang Hyun Kim, WIPO D2002-0048, which found bad faith when the disputed domain name was linked to pornographic site.
Complainant again claims that Respondent has engaged in a pattern of bad faith registration of domain names, which constitutes bad faith. Thereby Complainant referred to several cases, e.g. webMD Corp v. Cupcake Patrol, NAF FA0011000096106, Minolta Co., Ltd v. Cupcake City, WIPO D2000-1291; Dow Jones & Co., Inc v. John Zuccarini, WIPO D2000-0578.
Respondent claims that there is no basis for transferring the domain name <simscity.com> to Complainant. Respondent sets forth that Sims is a name of several cities in the United States, and the fact that Complainant has a similar trademark does not give it the right to prohibit Respondentís use of this geographic term. According to Respondentís standpoint, Respondentís use of a geographic term in connection with third party advertising establishes its legitimate interest. Furthermore, there is no bad faith on Respondentís part because he has no intent to divert Internet users seeking Complainantís products, and because he had no knowledge of Complainantís trademarks when he registered the domain name in question.
Respondent sets forth that there are at least five Sims cities in the United States of America, including Sims, Arkansas, Sims, Illinois, Sims, Indiana, Sims, Michigan, Sims, North Carolina, and enclosed a print-out of web pages related to these cities under Exhibit 1. Respondent stated that Complainant does not have a trademark for Sims City, and that the word "Sim" is an abbreviation for "simulated", "simulation". Respondent states that he registered the domain name in question because it is composed of a descriptive term, which refers to the U.S. cities known as "Sims", and enclosed a declaration thereof as Exhibit 2. Respondent also sets forth that he uses the domain name in question in connection with bona fide advertising services offered at the website "http://www.yes-yes-yes.com", a site offering advertising links to a number of websites of a general nature. He annexed a print-out of this website as Exhibit 3.
Respondent claims that Complainant does not have a trademark identical to SimsCity, and that where a disputed domain name constitutes a geographic term, the registered trademark and domain must be identical for the complainant to have rights under the Policy. To support this standpoint, Respondent refers to the case Chambre de Commerce et díIndustrie de Rouen v. Marcel Stenzek, WIPO D2001-0348. Respondent concludes that Complainant does not have a trademark identical to the domain name in question, which incorporates a geographic term, and therefore, the Complaint is not grounded.
Respondent sets forth that because "Sims City" is a descriptive term, incorporating a common geographic term, not exclusively used by Complainant, Respondent, ipso facto has rights and legitimate interest in a domain name incorporating that term. He states that the mere ownership of a common term domain should, in and of itself, establish the ownerís rights and legitimate interest, and claims that this principle has been recognized by several ICANN panels. Respondent cites several cases, e.g. Energy Source Inc v. Your Energy Source, Case No 963664 (NAF February 19, 2001), Ultrafem, Inc v. Warren R. Royal, Case No. 97682 (NAF August 2, 2001), First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840, and emphasised that with the principle of these cases, the Respondent prevailed in the case Knight-Ridder, Inc. v. Cupcake Patrol a/k/a John Zuccarini, No. 96551 (NAF March 6, 2001) where a disputed domain incorporated a common term.
Respondent also claims that the use of the domain name in connection with advertising links establishes his legitimate interest. He cited the cases Williams, Babbit & Weisman, Inc. v. Ultimate Search, No 98813 (NAF October 8, 2001) and GLB Servicos Interativos S.A. v. Ultimate Search, WIPO D2002-0189, and claims that the registration of generic and descriptive terms, and the use of such domains through offering advertising links constitutes a legitimate interest. Respondent also notes that the website to which the domain name in question is directed, <yes-yes-yes.com> does not offer pornography, but rather advertising links of a general nature, including, but not limited to dating, travel, auctions, education, business, gambling and shopping.
Respondent also claims that the domain name in question was not registered and in not being used in bad faith.
First, Respondent claims that since the UDRP was not intended to apply to geographic terms, the disputed domain could not have been used in bad faith. To support this argument, Respondent refers to the First WIPO Internet Domain Process and the Second WIPO Internet Domain Name Process, and among others, the case Port of Helsinki v. Paragon International Projects Ltd, and Sorel Corporation v. Domaine Sales Ltd. No. 096674 (NAF March 28, 2001).
Secondly, Respondent states that he did not intend to misdirect users of the Internet, and that Complainant did not prove such an intent. The intention is a precondition of finding bad faith by the Respondent.
Thirdly, Respondent sets forth that the previous decisions against the Respondent must not prejudice this case, since this case has to be judged on the facts of this case.
6. Discussion and Findings
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs the Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the above, the first question that has to be decided by the Panel is whether the domain name in question is identical with or confusingly similar to the Complainantís trademarks. From the submitted documents, it can be established that Complainant has several trademarks, in which the word SIMCITY is the distinctive element, and one of its trademarks is SIMCITY under the registration number 1568104.
With reference to the case Williams, Babitt &Weisman, Inc. v. Ultimate Search (NAF 98813) a decisive question is whether the mark has acquired distinctiveness when associated with the Complainantís goods or services. The standpoint of the Panel in this proceeding is that the well-known ness and good reputation of the mark SIMCITY ensures the distinctive character. Therefore, the SIMCITY trademark offers goods and services to the consumers with a good reputation.
Respondent claims that where a disputed domain name constitutes a geographic term, the registered trademark and domain must be identical for the complainant to have rights under the Policy. To support this standpoint, Respondent referred to the case Chambre de Commerce et díIndustrie de Rouen v. Marcel Stenzek, WIPO D2001-0348, where the disputed domain name was <rouen.com> and the trademark in question was C.C.I. ROUEN E.S.C. ROUEN LíESPIRIT DE CONQUETE. This standpoint of the Respondent is not grounded. In this case, only one element of the trademark constituted the domain name, which means that, when comparing the domain and the trademark, the identity of only one element does not establish the confusing similarity.
In the case Port of Helsinki v. Paragon International Projects Ltd., WIPO Case No. D2001-0002, the disputed domain name was <portofhelsinki.com>. The Panel in this case rejected the Complainant, based on the fact that the complainant had no trademark rights for the word portofhelsinki.
In the present procedure, the Panel establishes that Complainant has a trademark, and that the domain name differs from the trademark in only one letter. This small difference establishes the confusing similarity with the distinctive and well known SIMCITY trademark. The Panel refers to the case Knight-Ridder, Inc v. Cupcake Patrol a/k/a John Zuccarini (NAF 96551), where the difference in one letter (the absence of the word "the" in the domain is irrelevant) between the trademark (THE MIAMI HERALD) and the domain (<miamihearld.com>) was found confusingly similar.
According to Paragraph 4 (a) (1) both identity and confusing similarity has to be examined. The Panel establishes that this should be authoritative also in those cases, where the domain name incorporates a geographic name. There is no serious reason to deviate from this principle regarding geographic names, especially in those cases where the geographic name is not linked to an individual geographic place.
Respondent claimed that there are several cities called SIMS in the United States of America. The Panel established that there are indeed several cities called SIMS, but according to the information of the U.S. Gazetteer on the website of the U.S. Census Bureau (www.census.gov) the full names of the SIMS cities in Michigan and Indiana are SIMSTOWNSHIP, MI and SIMSTOWNSHIP, IN. Regarding other geographical places called SIMS, the indication of the respective state is needed in order to be sufficiently individualised. At this point it has to be noted that the website of the city of Sims, Arkansas can be found under the domain name <simsarkansas.com>.
Therefore, SIMS in itself, without the indication of the state name, is merely an individually unidentifiable geographic name.
It should be noted that regarding the geographic names, several opinions have evolved. There are several categories of geographical names, two of which have to be emphasised. One category is the "World Heritage List", which has cultural or historical importance. The list was prepared by UNESCO, and the sites forming part of the cultural and natural heritage are under special protection both from a trademark law perspective, and according to the Policy.
The other main category is constituted by individually identifiable place names. The registration of these names as domain names is not prohibited by the Policy. However, it can be established that several European countries have excluded the registration of names of places in their countries as domain names, and that several European courts found that the registration of names of places infringes the trademark rights of the respective cities. Such cases are for example the decision of the Landesgericht of Munich in the <heidelberg.de> case, the decision of the Tribunal de Grand Instance of Draguignan in the <saint-tropez.com> case. Nevertheless, the Policy does allow the registration of such names as domain names.
Concerning cases regarding place names within countries under the Policy, the Panel in the case <portofhelsinki.com> (Port of Helsinki v. Paragon International Projects Ltd., WIPO Case No. D2001-0002) made the following statement:
"The Policy consequently does not presently apply to, for instance conflicts between domain names and geographical indication of signs or symbols that are not supported by trademarks/service marks. The Panel cannot agree with the contention that a unique geographical name should be considered as belonging to the legal authority of the geographical area in question under the Policy. Protection for geographical names can be provided through other means, such as the special protection for geographical indications and not per se under trademark law."
The Panel agrees with the above mentioned in the present case, but in the Panelís opinion, the fact that the geographic name does not automatically belong to the legal authority of the geographical area in question, should not mean such freedom, that any person is entitled to register the given geographical name regardless of any legal or other motivation. In those cases, where a person claims the registration of a domain name without having any motivation regarding the domain name, then this person can not expect a more favourable decision concerning a geographical name, than concerning other domains.
The Respondent has not shown or verified any connection or motivation to any of the SIMS cities, which would in any way support his privileged position regarding this geographical name.
Furthermore, it should be noted that the Second WIPO Domain Name Internet Process also dealt with the protection of geographical names as domain names, and in Paragraph 273 recommended that
"It is recommended that the consideration of any measures to protect the names of places in the gTLD should be restricted, at this stage, to the names of (i) countries; and (ii) administratively recognized regions and municipalities within countries."
Regarding the generic nature of the word SIMS, the Panel is of the opinion that the geographical names and the generic names (common terms) are not the same category. Therefore, the cases regarding generic names referred to by the Respondent, and the Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy dated October 24, 1999 concerning trademarks and generic names are not relevant in the present proceeding.
Based on the above, the Panel finds that the one letter difference between the trademark SIMCITY and the domain name in question does not establish the sufficient distinctive character, and that Respondentís arguments concerning geographic names is not grounded, therefore, the Panel finds the first requirement under Paragraph 4 (a) of the Policy to be fulfilled.
B. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the domain name in question. The Panel is of the opinion, that the decisive point in this question is whether or not any person should be entitled to register a domain name incorporating a geographic name freely and without any motivation.
Paragraph 250 of the WIPO Interim Report states:
"It should be noted that the complaints in many of the Court and UDRP cases referred to above were based on the alleged abuse of a trademark registered in the name of the complainant and incorporating the place name subject to the dispute. Furthermore, usually the domain names were deemed infringing in the light of the nature of the activity conducted under the domain name and the motivation of the registrants. The cases therefore do not necessarily stand for the proposition that the registration of a city name or the name of a region, as such, is to be deemed abusive."
The Panel agrees with the above statement, nevertheless the Panel is of the opinion that Respondent should prove a motivation to the given geographical place. In the present case, regarding the name SIMSCITY, the Respondent did not submit any evidence, which would establish any connection to the SIMS cities. Such a motivation could be any personal relation to the cities, or any association regarding goods or services containing a geographic name. Furthermore, in the present proceeding, Respondent did not even indicate which place he was thinking about, since SIMS in itself is individually not identifiable name (see above). The Panel therefore establishes that Respondent did not prove any motivation in connection with the name SIMS.
The Panel also established that the Respondent does not carry out any activity under the domain name in question, and that he does not operate an own website under this name. The web site connected to <simscity.com> is automatically linked to the advertising web site under "www.yes-yes-yes.com", from which the links lead to the web site "www.roar.com". These sites have absolutely no connection to the name SIMSCITY.
Therefore, based on the above, it can be established that Respondent has no rights or legitimate interests in the domain name in question.
C. Registered and Used in Bad Faith
According to Paragraph 4 (b) (iv) of the Policy, it is evidence of bad faith that, "by using the domain name, the [respondent] has intentionally attempted to attract, for commercial gain, Internet users to [his or her] 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 [the respondentís] website or location or of a product or service on [the respondentís] website or location."
The Panel accepted that the Complainant, owner of the trademark SIMCITY, is a well-known company whose websites are frequently visited by Internet users. The Panel also accepted that the domain name in question is a misspelling of the trademark SIMCITY, therefore it is confusingly similar thereto. The domain name registered by the Respondent misdirects the Internet users, because the one letter difference is not sufficient enough to ensure the necessary distinctiveness. Furthermore, the only explanation of Respondentís actions is that he intended to divert the Internet users seeking websites associated with the Complainant and its products, and that he appears to have done so to profit from fees paid by advertisers. This in and of itself can show bad faith.
Also an evidence of bad faith is that Respondentís intent was the confusing ness. It can be established that Respondent registered several domains, which showed little difference and were confusingly similar to other partiesí well-known trademarks. Such cases were among others, Dow Jones & Co., Inc v. John Zuccarini, WIPO D2000-0578, Abercrombie &Fitch Stores, Inc v. John Zuccarini d/b/a Cupcake Patrol, WIPO D2000-1004. According to the Panelís view, every case has to be decided based on its own facts, and that this case has to be examined with an open mind. The Respondent can not be found to be in bad faith based exclusively on the fact that he registered other domain names with the misspelling of famous trademarks and names protected by common law names. However, the Panel is of the opinion, that if the Respondent has been found to be a cybersquatter on more occasions, and in the present case has registered a domain name by misspelling a famous trademark as well, then Respondent has to present very strong evidence that he acted in good faith. The Panelís standpoint is that Respondent has not done so, and taking all circumstances into account, the bad faith registration and use of the domain name in question by the Respondent can be rendered likely.
The Panel refers to its previous findings that Respondent does not operate an own website under the domain name in question, and that the explanation of Respondentís use of the disputed domain is that he intends to divert the Internet users, and that he appears to do so to profit from fees paid by advertisers. Furthermore, when exiting the website "www.yes-yes-yes.com" (to which the website <simscity.com> is automatically linked), more windows pop-up ("http://prescription-drugs.org", "http://mp3messenger.com"), which make exiting the Internet more difficult. These findings also support the bad faith use by the Respondent.
Based on the above, the Panel found that Respondent registered and uses the domain name in question in bad faith. The Panel took into account the cases referred to by both the Complainant and the Respondent, but based the decision solely on the evidence presented, the declarations of the parties, and on the careful examination of the circumstances.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <simscity.com> be transferred to the Complainant.
Dr. Katalin Szamosi
Dated: April 15, 2003