WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Federated Western Properties, Inc. v. John Zuccarini dba Cupcake Patrol, RaveClub, and RaveClub Berlin
Case No. D2003-0298
1. The Parties
The Complainant is Federated Western Properties, Inc., Las Vegas, Nevada, of United States of America, represented by Amster, Rothstein & Ebenstein of United States of America.
The Respondent is John Zuccarini dba Cupcake Patrol, RaveClub, and RaveClub Berlin, Düsseldorf, of Germany.
2. The Domain Names and Registrar
The disputed domain names <bloomigdales.com>, <bloomimgdales.com>, <bloomindale.com> and <bloomingsdale.com> are registered with CSL Computer Service Langenbach GmbH dba Joker.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 16, 2003. On April 17, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name(s) at issue. On April 22, 2003, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email 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 for each Domain Name. The Complainant filed three amendments to the Complaint on May 2, 2003, May 5, 2003, and May 19, 2003, respectively. The Center verified that the Complaint together with the amendments to 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 May 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2003. The Response was filed with the Center on May 26, 2003.
The Center appointed Andrew Mansfield as the sole panelist in this matter on June 18, 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 proceeding is English.
4. Factual Background
Complainant is the owner of the trademark BLOOMINGDALE’S, which is the subject of the following trademark registrations:
United States Trademark Registration No. 1,999,984
of September 10, 1996, for:
apparel, namely blazers, jackets, skirts, pants, sweaters, knit tops, shirts, blouses, shorts, dresses, coats, hats, shoes, s carves, gloves and belts;
United States Trademark Registration No. 2,010,033
of October 22, 1996, for:
apparel, namely blazers, jackets, skirts, pants, sweaters, knit tops, shirts, blouses, shorts, dresses, coats, hats, shoes, scarves, gloves and belts;
United States Trademark Registration No. 1,614,408
of September 18, 1990, for:
United States Trademark Registration No. 1,581,982
of February 6, 1990, for:
United States Trademark Registration No. 1,467,712
of December 1, 1987, for:
retail department store services; and
United States Trademark Registration No. 945,425
of October 17, 1972, for:
department store services.
Complainant is also the owner of United States Trademark Registration No. 2,346,849 of May 2, 2000, for the mark WWW.BLOOMINGDALES.COM for:
electronic retailing in the field of general merchandise by means of a global computer network.
The Panel has reviewed the Copies of the Certificates of Registration and assignment documents reflecting transfer of ownership to Complainant for the above-referenced marks and adopts Complainant’s practice of referring to those marks as the "Bloomingdale’s Trademarks."
The Panel also agrees that Bloomingdale’s Trademarks are world famous in the field of department store shopping because of their long and continuous use.
5. Parties’ Contentions
Complainant asserts that the Domain Names are "virtually identical and confusingly similar" to the Bloomingdale’s Trademarks. Complainant also asserts that Respondent has no legitimate rights to the Domain Names and that his bad faith is apparent from prior UDRP decisions, United States Federal Trade Commission Actions and prior United States judicial opinions. In addition, bad faith, according to Complainant, may be inferred from the fact that Respondent links the Domain Names to pornographic websites and/or advertising.
Respondent claims that he registered the Domain Names as misspellings of geographic locations; namely, Bloomingdale. Respondent asserts that there are fourteen cities by that name in the Untied States. Respondent specifically argues that "the mere fact that the [Bloomingdale’s Trademarks] incorporate geographic domains precludes a finding of bad faith."
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Names are examples of what is sometimes termed "typo squatting." The Domain Names are misspellings or typographically incorrect versions of the Bloomingdale’s Trademarks. The Panel finds that the Bloomingdale’s Trademarks and the Domain Names are confusingly similar. "Typosquatted domain names are intended to be confusing so that Internauts, who unwittingly make common typing errors, will enter the domain name instead of the mark. The contested domain name certainly qualifies in that regard." National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011. A more recent Panel found that "it is well established that domain names that are misspellings of trade and service marks may be confusingly similar." Continuing, the Panel wrote that "typo-squatting is intended to be confusing to Internet users in order to lure them to the registrants’ websites." Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161.
B. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the Domain Names. Even if the Panel were to find that the typo squatting pertaining to the Domain Names related to geographic locations, Respondent has no connection whatsoever to any of those locations. However, the Panel does not find that the Domain Names relate to geographic locations.
C. Registered and Used in Bad Faith
Respondent has a long, documented past wherein his registration of other domain names was found to have been accomplished in bad faith. This case is no different. Based upon notice of the United States Federal Trade Commission action against Respondent and a review of United States case law and prior UDRP decisions, it is clear that Respondent seeks to profit from confusion between trademarks and his typo squatted domain names.
Respondent argues that the Domain Names are misspellings of a geographic location. It appears that prior WIPO panels interpreting the UDRP have determined both that geographic locations are not "trademarks" and the UDRP was not designed to protect place names. Chambre de Commerce et d’Industrie de Rouen v. Marcel Stenzel, WIPO Case No. D2001-0348, provides a thorough review of prior disputes and panel decisions on this issue. In effect, this finding often results in affirming the "first in time" registration of a domain name relating to a geographic location.
Respondent’s argument that the Domain Names relate to geographic locations fails. The Domain Names are not the exact spellings of geographic locations. Respondent appears to argue that he has, in a fashion, typo squatted the geographic location of "Bloomingdale." While geographic locations cannot be monopolized by registering a trademark, Respondent has not registered any domain name that truly is a geographic location. Thus, the finding in Neusiedler Aktiengesellschaft v. Vinayak Kulkarni, WIPO Case No. D2000-1769 concerning geographic names, and other similar disputes, is not applicable to the facts of this dispute.
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 Names be transferred to the Complainant.
Date: June 30, 2003