WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v. Personal and Pedro Lopez
Case No. D2003-0166
1. The Parties
The Complainant in this administrative proceeding is Goo Goo Dolls, a New York partnership located in Los Angeles, California, United States of America. The Complainant is represented by Pamela C. Gavin of Reed Smith LLP.
The Respondent is John Zuccarini d/b/a Cupcake Patrol, Nassau, N.P., (Burkina Faso). The Respondent is represented by Mr. Ari Goldberger of ESQwire.com Law Firm. The country name indicated above, namely Burkina Faso, is correct per the Whois database data but appears erroneous as the Respondent's domicile is Nassau (Bahamas). The mistake, which clearly was in no way caused by the Complainant, did not prejudice the Respondent since he did receive the Complaint in due time, the best evidence of which is the filing of a Response.
2. The Domain Name and Registrar
The domain name at issue is
3. Procedural History
The Complainant filed a Complaint by e-mail with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 4, 2003. On March 7, 2003, the Center received a hard copy of the Complaint, with supporting evidence.
On March 6, 2003, a Request for Registrar Verification was transmitted to the Registrar, which confirmed the same day that it had received a copy of the Complaint, that the Domain Name was registered with it, and that the Respondent was the current registrant of the Domain Name. The Registrar transmitted to the Center the full whois details related to the Domain Name and confirmed that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applies to the Domain Name.
On March 13, 2003, the Center determined that the Complaint satisfied the formal requirements of 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 the same day, the Center notified the Respondent of the commencement of this proceeding and set April 2, 2003, as the date for the submission of a Response.
The Center received a Response by email on April 5, 2003, hard copies on April 10, 2003, and acknowledged receipt of said Response on April 7, 2003. The Respondent had requested and obtained an extension to file a Response until April 4, 2003. The Panel accepts the Response as forming part of the file even though it was submitted a day later than indicated by the Center.
Between the notification of the Complaint and the Response, several email messages and a letter were exchanged between the Respondent (and/or his representatives) and the Center, as is explained below (under the "Respondent's Contentions" heading).
In the Registrar verification, the Registrar stated, in response to the Center's standard question concerning whether the Respondent (registrant) had submitted to jurisdiction at the principal office of the Registrar (namely Düsseldorf), that the venue and place of performance was Düsseldorf only if the contracting party was a "merchant" or a "legal person under public law or an entity of the federal Special Funds." The Center took the view that this was not a confirmation of jurisdiction at the principal office of the Registrar for disputes concerning or arising from the use of the domain name (between the registrant and parties other than the registrar). Because the Complainant, in the Complaint, had agreed to submit to jurisdiction in Düsseldorf, the Center asked the Complainant to amend the Complaint and to submit to jurisdiction of the local courts "at the address shown for the Respondent in the ICANN Whois database entry" for the Domain Name, which the Complainant did. The Respondent claims that this amendment was unjustified and should result in the Complaint being re-amended or rejected, a view with which the Panel disagrees, as will be explicated below.
On April 14, 2003, the Center invited the undersigned to act as Sole Panelist, as the Parties had elected to have the case resolved by a sole Panelist. On April 15, 2003, the undersigned provided a Statement of Acceptance and Declaration of Impartiality and Independence and on the same day, the Center appointed the undersigned, notified the Parties by email of this appointment and set April 29, 2003, as the Projected Decision Date.
The Panel finds that it was properly constituted and appointed in accordance with the Rules and the Supplemental Rules. It has also independently determined and agrees with the assessment of the Center that the Complaint meets the formal requirements of the Policy, the Rules and the Supplemental Rules.
The language of this administrative proceeding is English, being one of the languages of the registration agreement.
4. Factual Background
The Complainant is a well known group of musicians. The Complainant owns the United States Service Mark Registration No. 2061223, filed May 24, 1996, and registered May 13, 1997, claiming a date of first use in commerce of April, 1988, for the mark GOO GOO DOLLS for entertainment services, namely, live performances by a musical group. In addition the Complainant owns the United States Trademark Registration No. 2063147, filed May 24, 1996, and registered May 20, 1997, claiming a date of first use in commerce of May, 1987, for the mark GOO GOO DOLLS for a series of musical sound recordings and prerecorded videotapes and video discs featuring music (collectively, the"Complainant's Marks").
The Complainant is the owner and operator of the World Wide Web site located
The Respondent registered the Domain Name on May 7, 2000.
5. Parties' Contentions
In support of the Complaint, the Complainant asserts the following:
The Domain Name was registered well after Complainant acquired common law and US registration rights in each of the Complainant's Marks.
The Domain Name is confusingly similar to Complainant's Marks. The domain name
Respondent's Domain Name automatically redirects the user to the website located
The Complainant has never granted the Respondent any rights to any of the Complainant's marks, or any derivatives thereof. The Respondent's opportunistic registration of a domain name using an aberrant spelling of the Complainant's Mark is not in connection with a bona fide offering of goods or services pursuant to Policy paragraph 4(c)(i).
The Respondent is not generally known by the Domain Name and he is not making a legitimate non-commercial or fair use of such name. The Complainant also asserts that the Respondent is notorious for his practice of use of aberrant spellings in domain names to divert Internet users to websites containing advertisements, primarily for pornography and gambling websites and referred in the Complaint to several decisions under the Policy and court cases, notably in the United States.
The Respondent registered the Domain Name primarily for the purpose of obtaining
compensation for diverting people who intended to go to
The Respondent submitted a Response in which he attacks the Complaint on two fronts. The first is an attack on the validity of this administrative proceeding owing to a change in the Mutual Jurisdiction election by the Complainant. The second is the more usual attack of the Complainant's assertions.
The facts that gave rise to the Respondent's arguments concerning Mutual Jurisdiction were explained above. Essentially, the Respondent believes that the Center was not justified in asking the Complainant to amend the Complaint to submit to the jurisdiction at the Respondent's location. The Respondent stated that it would prefer to litigate the matter (if it should go to court) in Düsseldorf (the Registrar's location) instead of his own location.
As to the second part of his attack (on the substance of the Complaint), the Respondent does not deny that the Complainant owns trademarks for the term Goo Goo Dolls or that the Disputed Domain incorporates a misspelling of such mark. But the Respondent asserts that there is absolutely no evidence that Respondent registered the Domain Name with the intent to sell it to Complainant, to disrupt its business, to prevent it from registering its trademark, or to confuse consumers. Respondent simply registered what he believed to be the misspelling of a common term which is slang for women (i.e. "dolls") making "goo goo" eyes. Absent direct proof that a descriptive term domain name was registered or acquired solely for the purpose of profiting from Complainant's trademark rights, there can be no finding of bad faith registration and use. The registrant of a domain name incorporating a mere misspelled generic common term has a legitimate interest in the disputed Domain Name. "Goo goo dolls" is composed of the common term "goo goo," as in "goo goo eyes," and "dolls," Respondent, thus, has a legitimate interest in the disputed Domain Name. The third element that Complainant must show is Respondent's bad faith registration and use. The Respondent argued that it fails on this count as well for the same reasons.
6. Discussion and Findings
6.1 Validity of the Proceeding
The Panel must discuss first the issue of validity of this Administrative Proceeding under the Policy, in view of the Respondent's objection based on the change of Mutual Jurisdiction in the Amended Complaint.
Paragraph 1 and 3 (b) (xiii) of the Rules state that the Complaint must specify an express choice of one (or both) of the two Mutual Jurisdiction options, i.e. the courts at the location of the principal office of the registrar (provided the domain name holder has submitted in its registration agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) and/or the domain name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider. The Complainant in this case has done both successively. Because the Rules do not specify that one option is better than the other, the Respondent's claim could be rejected on that ground alone. But there are several other reasons why the Respondent's objection must fail.
This Panel examined, first, the origin of the above-mentioned paragraphs in the Rules, which, though not labeled as such, were mentioned in three major reports concerning the Policy, namely the Green Paper , the White Paper and the WIPO Final Report. These documents seem to indicate that the Mutual Jurisdiction rule was created as a sort of review process that would offer the losing party a venue that otherwise would not have personal jurisdiction over the Complainant. In order to provide a fairer opportunity, the Rules offer two choices for such jurisdiction: the place of the Registrar and the Respondent's place of business/domicile. Both options are not supposed to exclude jurisdiction other courts might have with respect to the domain name. Except for the above, the three documents offer little guidance on the present disagreement between the parties to this administrative proceeding. Yet, this Panel was able to conclude that the Respondent's request to remand this proceeding or deny the Complaint based on the amendment of the Mutual Jurisdiction should be denied on the following grounds:
First, the Rules (and their history) do not specify that one of the two Mutual Jurisdiction options is better than the other. See Milbank, Tweed, Hadley & McCloy LLP v. John Zissu , WIPO Case No. D2001-0894; Robert Half International Inc. and Robert Half Inc. v. Frank J McNamara and Accountancy Software Consultancy Limited, WIPO Case No. D2002-0261; Draw-Tite, Inc. v. Plattsburgh Spring Inc., WIPO Case No. D2000-0017 ("Respondent further objects to the fact that Complainant submitted itself to the jurisdiction of Herndon, Virginia, where Registrar NSI is located, under Par. 3(b)(xiii) of the UDRP Rules. Respondent asserts that 'pursuant to the policy, rules and the registration agreement filed by Respondent the Mutual Jurisdiction must be the jurisdiction in which the offices of Respondent are located, i.e. Plattsburgh, New York, U.S.A.' Respondent's argument is not well taken. First, the registration agreement filed by Respondent binds Respondent, not Complainant, to submit to the UDRP Policy. UDRP Policy, Section 4(a). Second, both the UDRP Policy and the UDRP Rules permit a Complainant to submit itself to a Mutual Jurisdiction at one of two locations"); Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol, WIPO Case No. D2001-0654; Societe Des Produits Nestle, S.A., and Nestle India Ltd., v. M/s Sandesh Medicos, WIPO Case No. D2000-0976; The Sportsman's Guide, Inc. v. John Zuccarini, WIPO Case No. D2001-0617 ("In his Response, Respondent requests the Panel to rule that the jurisdiction and venue of any cause of action challenging a decision of this Panel be subject to the Courts of Justice located in Geneva, Switzerland, presumably because the principal office of the Registrar in this case is in Geneva. The Panel declines such request. The relevant rules require the Complainant to submit, with respect to any challenge to the proceeding, to the jurisdiction of the courts in at least one specified "Mutual Jurisdiction."); and Wal-Mart Stores, Inc . v. Su Rong Ye, WIPO Case No. D2002-0771 ("The information about OnlineNIC, Inc.'s principal place of business and whether or not the Respondent had submitted in his or her registration agreement to the jurisdiction of the courts in that place is information which is peculiarly in the possession of OnlineNIC, Inc. and the Respondent. It is not something that the Complainant could reasonably be expected to know and, on the basis of the statements in the case file, it is clear that the Complainant has made a good faith election within the Rules. Moreover, the proposed Second Amendment can hardly be detrimental to the Respondent since it would make his or her local courts the relevant jurisdiction, thus avoiding the potentially heavy expense of litigating in foreign courts in, possibly, a foreign language") . What the Complainant must do, in short, is choose one or both and this s exactly what the Complainant did in this case.
Second, the decision of this Panel does not withdraw jurisdiction from courts in any country. The private international law rules that apply to the registration agreement and to the Parties' conduct (e.g., in tort) remain unaffected.
Third, the Respondent did not allege any prejudice in having this matter settled at his own address. In fact, the Center's decision to ask the Complainant to amend the Complaint could be said to be in the Respondent's interest by forcing the Complainant to submit to jurisdiction at the Respondent's venue.
Fourth, the Center's decision certainly appears far from unreasonable when the language of the agreement is carefully considered. In fact, this Panel would have reached the same conclusion for the following reasons: Jurisdiction at the Registrar's location (Düsseldorf) is established in the registration agreement in three cases: when the registrant is a merchant or a "legal person under public law or an entity of the Federal Special Funds" ("öffentlich-rechtliches Sondervermögen"). No one has argued that the Respondent is an entity of the Federal Special Funds. But the Respondent apparently did try to argue the two other options.
First, the Respondent's representative in this proceeding argued that his client was a "legal person" (email dated April 1, 2003). On this first option, the answer appears to be negative. The expression "legal person under public law" (in German, "eine juristische Person des öffentlichen Rechts") is used to differentiate these entities from natural persons ("natürliche Person"). The Respondent is a natural person. If the fact that he is "doing business as" the "Cupcake Patrol" is sufficient to create a new legal entity, this has not been demonstrated in any way. Based on German law, it seems that there would have to be evidence that a "dba" designation creates a legal entity under that entity purported place of formation, namely the Bahamas. Again, this has not been demonstrated or even argued in this case.
Second, in a letter addressed to the Center dated March 21, 2003, by a previous representative of the Respondent (Mentha & Associés, Geneva), the Respondent seemed to be arguing the other option, namely that the Respondent was a "merchant" ("Kaufmann" in German) because the Respondent was "in the business to provide 'click thru' traffic for certain Internet based advertisers". The Panel notes that this point is not argued in the Response. More importantly, it is not clear that a "merchant" is simply someone who is "'in business." In fact, based on German law, it is far from obvious that the Respondent would qualify as a merchant. The expression "Merchant" is defined in paragraphs 1 to 7 of the German Commercial Code ("Handelsgesetz-buch"). According to paragraph 1 of the Code, a merchant is a person who runs a business, except small businesses. Paragraphs 2 and 5 then deal with businesses registered in the Trade Registry (if not already included under para.1, i.e. also small ones). Here, there is no evidence that the Respondent is registered in the Trade Registry. Finally, other paragraphs of the Code apply to other types of businesses (e.g., agriculture and forestry businesses and incorporated entities).
Lastly, the jurisdiction clause in the registration agreement does not state that it applies to "disputes concerning or arising from the use of the domain name." Therefore, it is questionable whether the registrant's submission to the jurisdiction of Düsseldorf would apply to disputes between the domain name registrant and parties other than the registrar, even in cases where the registrant is "a merchant or a legal person under public law or an entity of the Federal Special Funds."
Based on the above, the Center was thus reasonably justified in considering that the first leg of the Mutual Jurisdiction rule (based on the location of the Registrar) was not satisfied because that option requires evidence that "the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name" (definition of Mutual Jurisdiction in Rule 1) and no such evidence was provided. The Panel notes again that the Respondent has provided no evidence to the effect that the amendment to the Complaint (which had the effect of giving jurisdiction to courts at the Respondent's location) would in any way prejudicial to him.
6.2 Substance of the Complaint
In accordance with Paragraph 4(a) of the Policy, in order to succeed on substance in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements are satisfied:
1. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.1);
2. The Respondent has no rights or legitimate interests in respect of the Domain Name (see below, section 6.2); and
3. The Domain Name has been registered and is being used in bad faith (see below, section 6.3).
Paragraph 4(a) in fine of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
6.2.1 Is the Domain Name Identical or Confusingly Similar to a Trademark in Which Complainant has Rights?
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the Domain Name identical or confusingly similar to such trademark or service mark.
There is no need to belabor this first question. The validity of the registered mark(s) GOO GOO DOLLS is acknowledged by the Respondent as is the similarity (identity) between the Complainant's marks and the Domain Name.
6.2.2 Does the Respondent Have Rights or Legitimate Interests in the Domain Name?
The Complainants submits that the Respondent has no rights or legitimate interests in the Domain Name based on the Complainant's prior use of the Complainant's marks and was never authorized to use Respondent's mark. The Respondent alleges that redirection to a pornographic website/advertisement using a misspelling of such marks is a bona fide offering of goods or services using a common term, namely "goo goo.".
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trade mark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue."
The Respondent's argument relies heavily on the fact that the Complainant's marks are composed of descriptive terms (namely "goo goo" and "dolls") and that by using "goo goo" to redirect users to pornographic sites, he is making a legitimate commercial use of the Domain Name.
The Panel should state, first, that the type of business in which the Respondent is involved is not a consideration. That said, the Panel must disagree with the Respondent's contention that the Domain Name is "only using a common slang term for women" (i.e. "dolls") making "goo goo" eyes. The expression "goo goo" is not found in the dictionary. In fact, the Webster's Encyclopedic Unabridged Dictionary has an entry for "goo goo eyes" but not for "goo goo" used separately. A search on the Internet lead this Panel to a similar conclusion: "goo goo" has not been shown to be a common descriptive term. Put differently, the Respondent might be able to argue successfully that "goo goo eyes" is such a common term but has adduced no evidence to support his claim that "goo goo" used alone (in adjective form) is a common, descriptive term.
The Domain Name is a simple misspelling of a protected mark, such misspelling being clearly used to attract Internet users trying to reach the Complainant's site/redirect. No legitimate, bona fide offering of goods or services is made by the Respondent. The Respondent is not generally known by the Domain Name, and the Domain Name is in fact not used on the sites to which users are redirected and "mouse-trapped," as defined in, e.g., Shields v. Zuccarini, 254 F.3d 476, 480 (3rd Cir., 2001) ("Zuccarini's sites featured advertisements for other sites and for credit card companies. Visitors were trapped or 'mousetrapped' in the sites, which, in the jargon of the computer world, means that they were unable to exit without clicking on a succession of advertisements.")
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name.
6.2.3 Is There Evidence of Registration and Use of the Domain Name in Bad Faith?
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's web site or location or of a product.
The Complainant must prove that the Domain Name was both registered and used in bad faith.
The Domain Name
On the basis of the above, the Panel has no difficulty in concluding that the Domain Name was registered and is being used in bad faith as contemplated in paragraph 4(b) of the Policy.
On the basis of the elements set out above, the Panel finds that:
1. The Domain Name
2. The Respondent does not have any rights or legitimate interests in respect of the Domain Name;
3. The Domain Name was registered and is being used in bad faith.
Therefore, in accordance with Paragraphs 4(a) and 4(i) of the Policy and 15
of the Rules, the Panel orders that the Domain Name
Dated: April 24, 2003
1. A Proposal to Improve Technical Management
of Internet Names and Addresses, http://www.nyls.edu/cmc/misc/dnsdraft.htm:
"Trademark holders have expressed concern that domain name registrants in faraway
places may be able to infringe their rights with no convenient jurisdiction
available in which the trademark owner could file suit to protect those rights.
At the time of registration, registrants could agree that, in the event of a
trademark dispute involving the name registered, jurisdiction would lie where
the registry is domiciled, where the registry database in maintained, or where
the "A" root server is maintained. We seek comment on this proposal, as well
as suggestions for how such jurisdictional provisions could be implemented."
2. Management of Internet Names and Addresses, http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm: "The suggestion that domain name registrants be required to agree at the time of registration to submit disputed domain names to the jurisdiction of specified courts was supported by U.S. trademark holders but drew strong protest from trademark holders and domain name registrants outside the United States. A number of commenter characterized this as an inappropriate attempt to establish U.S. trademark law as the law of the Internet. Others suggested that existing jurisdictional arrangements are satisfactory. They argue that establishing a mechanism whereby the judgment of a court can be enforced absent personal jurisdiction over the infringer would upset the balance between the interests of trademark holders and those of other members of the Internet community.[…] Under the revised plan, we recommend that domain name holders agree to submit infringing domain names to the jurisdiction of a court where the "A" root server is maintained, where the registry is domiciled, where the registry database is maintained, or where the registrar is domiciled. We believe that allowing trademark infringement suits to be brought wherever registrars and registries are located will help ensure that all trademark holders - both U.S. and non-U.S. - have the opportunity to bring suits in a convenient jurisdiction and enforce the judgments of those courts."
3. The Management of Internet Names and Addresses: Intellectual Property Issues, http://wipo2.wipo.int/process1/report/, paragraphs 138-147.
4. See http://web.archive.org/web/20011122025429/http://themis.wustl.edu/ibll/CivilPro/Germany.htm.