WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

National City Corporation v. Party Night Inc., Phayze Inc.

Case No. D2003-0683

 

1. The Parties

The Complainant is National City Corporation, Ohio, United States of America, represented by Sughrue Mion, PLLC, United States of America.

The Respondents are Party Night Inc., Netherlands and Phayze Inc., Paris, France.

 

2. The Domain Names and Registrars

The disputed domain name <natioalcity.com> is registered with IDR Internet Domain Registry Ltd.

The disputed domain name <nationacity.com> is registered with Key-Systems GmbH.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 29, 2003. On September 1, 2003, the Center transmitted by email to IDR Internet Domain Registry Ltd. and Key-Systems GmbH requests for registrar verification in connection with the domain names at issue. On September 2, 2003, IDR Internet Domain Registry Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant.

On September 5, 2003, Key-Systems GmbH 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.

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 Respondents of the Complaint, and the proceedings commenced on September 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was September 25, 2003. The Respondents did not submit any response. Accordingly, the Center notified the Respondentís default on September 30, 2003.

The Center appointed Peter G. Nitter as the sole panelist in this matter on October 6, 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.

 

4. Factual Background

National City Corporation was founded in 1845. Today National City Corporation is a $96 billion (U.S.) financial holding company. The company has its headquarters in Cleveland, Ohio.

Complainant has multiple financial services subsidiaries with over a thousand branches throughout the United States and offers various financial services. Among National Cityís principal activities are commercial and retail banking, consumer finance, asset management, mortgage financing and servicing, and item processing.

National City is the tenth largest banking company in the United States based on total assets. Complainantís common stock is traded on the New York Stock Exchange.

In addition to Complainantís numerous banking locations, National City operates a web site at "www.nationalcity.com". Complainantís web site provides a variety of information including general banking information and mortgage information.

Complainant has always used its trade name, National City Corporation, in connection with its banking and financial services. In addition, National City has used its service mark "NATIONAL CITY" in connection with banking services since 1845. Today, the mark "NATIONAL CITY", alone and in combination with other terms and designs, is registered extensively as a service mark in the United States.

There are eight valid and subsisting U.S. trademark registrations for the "NATIONAL CITY" mark covering a variety of financial services. Reference is made to annex B of the Complaint.

By virtue of the long and extensive use, the "NATIONAL CITY" mark has become well-known in the field of banking and financial services. By virtue of Complainantís long use and the renown of its "NATIONAL CITY" mark, "NATIONAL CITY" when used in connection with banking and financial services is associated exclusively with Complainant.

 

5. Partiesí Contentions

A. Complainant

Relationship Between Party Night Inc. (Respondent 1) and Phayze Inc. (Respondent 2)

Respondent 1 and Respondent 2 are the same entity. Annex C to the Complaint is a paper entitled "Large-Scale Registration of Domains with Typographical Errors" written by Benjamin Edelman of the Berkman Center for Internet & Society at Harvard Law School. As seen from the paper, John Zuccarini, a notorious typosquatter, operates and registers domain names under the names Party Night and Phayze, Respondent 1 and Respondent 2 respectively.

In addition, other WIPO panelists have found that Zuccarini and Party Night and Phayze are the same entity. In Microsoft Corp. v. Party Night, Inc. d/b/a Peter Carrington, WIPO Case No. D2003-0501 the Panel finds it established that ĎParty Night Inc.í and ĎPeter Carringtoní are identical to John Zuccarini. The Panel also found that the Respondent has repeatedly been considered acting in bad faith in numerous proceedings brought pursuant to the Policy in which the owners of well-known trade marks obtained transfer or cancellations of domain names registered by the Respondent.

In AT&T v. Peter Carrington/Party Night Inc., WIPO Case No. D2003-0114 and Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc., WIPO Case No. D2003-0283, the Panels found that Respondents were aliases for John Zuccarini.

Respondent 1 and Respondent 2 in this case are clearly aliases for John Zuccarini. Under Article 3(c) of the Rules, Complainant submits that the Respondents are the same entity and that this Complaint is appropriate.

Respondent 1 - the domain name <nationacity.com>

Respondent 1 registered the domain name <nationacity.com> on May 3, 2002.

Respondent 1ís domain name, <nationacity.com>, is virtually identical to and is confusingly similar to Complainantís service mark and trade name "NATIONAL CITY".

Respondent 1 has registered the domain name <nationacity.com> with a misspelling of the word National.

In other WIPO proceedings, panelists have found "disputed domain names with misspelled variations of trademarks Ö to be Ďconfusingly similar."

Reference is made to: Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791.

It follows that Respondent 1ís domain name <nationacity.com>, with the misspelled wording National, is confusingly similar to Complainantís service mark and trade name "NATIONAL CITY".

Respondent 1 has no rights or legitimate interest in the domain <nationacity.com> in view of National Cityís continuous and long prior use of its mark and trade name "NATIONAL CITY". As another WIPO panelist stated in a similar case involving a domain name misspelling:

"The Respondentís use of the disputed domain name deliberately diverts those Complainantís customers or those Internet users interested in the companyís products who donít know the correct spelling or unintentionally make a typo when typing in the Complainantís mark or name. Consequently, no legitimate non-commercial or fair use of the domain name can be found." Reference is made to Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791.

Respondent 1 registered the domain name <nationacity.com> in bad faith.

There is no justification for Respondent 1ís registration of a domain name which is only a misspelling of Complainantís mark. Respondent 1ís registration of the domain name is intended to and will confuse the relevant purchasing public into believing that Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with the web site which the domain leads to.

Respondent 1 has engaged in "typo-piracy" in an attempt to confuse Internet users. Typo-piracy is in essence a deliberate attempt to attract or divert internet users who mark a common error or spelling mistake in their Internet search.

Respondent 1 is using the domain name <nationacity.com> in bad faith.

Respondent 1 is using the domain name to resolve to a pornographic web site - "www.hanky-panky-college.com". This is not an activity with which Complainant wishes to be associated. Moreover, Respondent 1 has registered the domain name with the express purpose of not permitting Complainant to register and use the domain name.

Respondent 1ís bad faith use and registration is further evidenced by the number of WIPO proceedings in which Respondent 1 has been involved. All of these proceedings have involved registrations of domain names which correspond to famous trademarks and the hosting of pornographic material on the corresponding web site. Reference is made to i.a. Societe des Produits Nestle SA v. Carrington c/o Party Night, Inc., WIPO Case No. D2002-0954, regarding the domain name <nestlesusa.com>; A & F Trademark, Inc. v. Party Night, Inc., WIPO Case No. D2003-0172, regarding the domain names <abercronbieandfitch.com>, <abocrombie.com> and <abrecombieandfitch.com>; Royal Bank of Canada v. Party Night Inc., WIPO Case No. D2003-0280, regarding the domain name <rbcentura.com>; BellSouth Intellectual Property Corp. v. Carrington/ Party Night Inc., WIPO Case No. D2003-0308, regarding the domain names <bellouth.com>; <bellsoouth.com>; <bellsoouth.net>, <bellsouh.com>, <bellsouh.net>, <bellsuth.com>, <bellsuth.net>.

Respondent 1 is in the business of registering and using domain names which correspond to famous trademarks in order to increase its pornographic business maintained at "www.hanky-panky-college.com".

Respondent 1 chose the domain name with full knowledge of Complainantís rights therein. It is further inconceivable that Respondent 1 was unaware of the "NATIONAL CITY" mark, which has been well-known for decades in the banking and financial industry by virtue of Complainantís long and ubiquitous use thereof. Nor could Respondent 1ís selection of the domain name <nationacity.com> have been in anything other than bad faith. The acts herein alleged have been committed with the intent and purpose of creating likelihood of confusion and appropriating and trading upon Complainantís considerable goodwill and reputation.

Respondent 2- the domain name <natioalcity.com>

Respondent 2 registered the domain name <natioalcity.com> on May 17, 2002.

Respondent 2ís domain name, <natioalcity.com>, is virtually identical to and is confusingly similar to Complainantís service mark and trade name "NATIONAL CITY".

Respondent 2 has registered the domain name with a misspelling of the word National. Reference is made to the same decisions as under the section about Respondent 1.

Respondent 2ís domain name <natioalcity.com>, with the misspelled wording NATIONAL, is confusingly similar to Complainantís service mark and trade name "NATIONAL CITY".

Respondent 2 has no rights or legitimate interest in the domain <natioalcity.com> in view of National Cityís continuous and long prior use of its mark and trade name "NATIONAL CITY". Reference is made to Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791.

Respondent 2 registered the domain name <natioalcity.com> in bad faith.

There is no justification for Respondent 2ís registration of a domain name which is only a misspelling of Complainantís mark. Respondent 2ís registration of the <natioalcity.com> domain name is intended to and will confuse the relevant purchasing public into believing Complainant maintains, or has approved, endorsed or is the sponsor of, or is otherwise associated with Complainant.

Respondent 2 has engaged in "typo-piracy" in an attempt to confuse Internet users.

Respondent 2 is using the <natioalcity.com> domain name in bad faith.

Respondent 2 is using the disputed domain name to resolve to a pornographic web site "www.hanky-panky-college.com". This is not an activity with which Complainant wishes to be associated. Moreover, Respondent 2 has registered the domain name with the express purpose of not permitting Complainant to register and use the domain name.

Respondent 2ís bad faith use and registration is further evidenced by the number of WIPO proceedings in which Respondent 2 has been involved. All of these proceedings have involved registrations of domain names which correspond to famous trademarks and all of the domain names to resolve to affiliated pornographic web sites. Reference is made to Ameriquest Mortgage Co. v. Phayze Inc., WIPO Case No. D2002-0861, regarding the domain name <ameriquestmortage.com> which resolves to "www.hanky-panky-college.com"; BellSouth Intellectual Property Corp. v. Phayze Inc., WIPO Case No. D2003-0336 regarding the domain name <bellsotuh.net> which resolves to "hankypankycollege.com". These are just some of the proceedings involving Respondent 2. Respondent 2 is in the business of registering and using domain names which correspond to famous trademarks in order to increase its pornographic business maintained at "www.hanky-panky-college.com".

In addition, it appears Respondent 2ís contact information provided in the <natioalcity.com> registration is inaccurate. As stated, Respondent 2 has provided the same address as provided by Respondent in the registration information for the domain name <ameriquestmortage.com>. Reference is made to Ameriquest Mortgage Company v. Phayze Inc., WIPO Case No. D2002-0861. In this case, the Panel determined that the Registrant 2ís contact information was incorrect and mail undeliverable to that address. Accordingly, Respondent 2 is in violation of paragraph 2(a) of the Policy.

Respondent 2 chose the domain name <natioalcity.com> with full knowledge of Complainantís rights therein. It is further inconceivable that Respondent 2 was unaware of the "NATIONAL CITY" mark, which has been well-known for decades in the banking and financial industry by virtue of Complainantís long and ubiquitous use thereof. The acts herein alleged have been committed with the intent and purpose of creating likelihood of confusion and appropriating and trading upon Complainantís considerable goodwill and reputation.

B. Respondent

The Respondents did not reply to the Complainantís contentions.

 

6. Discussion and Findings

It is incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. However, under the paragraph 5(e) if the Respondent does not submit a response and in the absence of exceptional circumstances, "the Panel shall decide the dispute based upon the Complaint". Further, under paragraph 14 of the Rules where a party does not comply with any provision of the Rules, the panel "shall draw such inferences therefrom as it considers appropriate."

Identity of Respondent

The Complainant asserts that Respondent 1 and 2 are the same entity.

As a rule, under the Policy and the Rules a case can not be brought against multiple respondents. Article 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that they are registered by the same domain name holder. However, situations may arise in which multiple domain name holders should be equated with one domain name holder for the purpose of this provision, so that a complaint against more than one domain name holder should be allowed.

In the paper entitled "Large-Scale Registration of Domains with Typographical Errors" by Benjamin Edelman it appears that a number of registrations of domain names with typographical variations on well-known names is registered by John Zuccarini, doing business under multiple names, including Party Night Inc., Phayze 1 and Phayze 2.

In other WIPO cases John Zuccarini is found to be identical to both Party Night Inc. and Phayze. Reference is made to Microsoft Corporation v. Party Night Inv. D/b/a Peter Carrington, WIPO Case No. D2003-0501 and Washington Mutual Inc. v. Phayze Inc., Peter Carrington and Party Night Inc., WIPO Case No. D2003-0283.

The Respondents have not contradicted the assertion of the Complainant that they are the same entity, as they have elected not to respond.

On the basis of the above the Panel finds that the Respondents are to be regarded as one and the same in the context of this proceeding. The Panel therefore allows the Complaint in relation to both Respondents.

Identical or Confusingly Similar

The disputed domain names are <nationacity.com> and <natioalcity.com>.

"NATIONAL CITY" is the registered service mark of the Complainant. The Complainant has 8 valid and subsisting registrations in the US. The service mark is used since 1845, and is very well-known within the field of banking and financial services in the US.

The disputed domain names registered by the Respondents are with the exception of one letter, respectively "l" and "n", identical to Complainantís service mark.

The missing letters are variations of the service mark of the Complainant that may not be noticed by members of the public upon first or even second glance and at the same time a possible typographical error that the Internet user who wishes to reach the Complainant would make in typing the name of "National City" as "nationalcity".

The domain names is thus found to be confusingly similar to the service mark in which the Complainant has rights.

The Panel is satisfied that the Complaint has met the requirements of paragraph 4(a) of the Policy.

Rights or Legitimate Interests

The Complainant has not licensed or otherwise permitted the Respondents to use its service mark or to apply for any domain name incorporating any such mark.

The use of the disputed domain names by the Respondents is not done in connection with a bona fide offering of goods or services. The Respondents are not commonly known by the disputed domain name.

There is no evidence before the Panel in this case that the Respondents have any legitimate interest in the domain names for the purposes of paragraph 4 (c) of the Policy.

The Panel draws the inference from the Respondentsí failure to respond to this administrative proceeding, that the Complainant is correct in its assertion that the Respondents have no rights or legitimate interests in the disputed domain names.

Registered and Used in Bad Faith

The "NATIONAL CITY" service mark has been well-known for decades in the banking and financial industry. It cannot be reasonably argued that the Respondents could have been unaware of the service mark when registering the disputed domain names.

The domain names do not at present lead to any web pages. The Panel does, however, rely on the fact presented in the Complaint regarding the content of the mentioned web pages, and therefore finds that the domain names previously did lead to web pages offering pornographic material.

The use of the domain names to offer pornographic material certainly tarnishes the Complainantís existing marks, which is evidence of bad faith. Reference is made to America Online, Inc. v. Viper, WIPO Case No. D2000-1198, MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205 and America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661.

The Panel finds that bad faith is evidenced by Respondentsí registrations of several other domain names identical to, or confusingly similar with, well-known trademarks, many of them pointing to pornographic websites. Reference is made to annex C of the Complaint and to the decisions referred under section 5A above.

Respondents have also given false contact details in breach of their registration agreement, as the Complaint in hardcopy could not be delivered to the addresses registered on the Respondents. In addition Respondent 2 has also registered a false telephone number or address. If Respondent 2 really had an establishment or office under the address in France as indicated, the telephone number corresponding to this address would be starting with a "+33" since this is the country code for France. The registered telephone number for Respondent 2 starts with "+42". Reference is made to Ameriquest Mortgage Company v. Phayze Inc., WIPO Case No. D2002-0861. Providing false contact details is considered by the Panel as an element of bad faith in this case.

The Panel concludes that the Complainant has established this element.

 

7. Decision

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, <nationacity.com> and <natioalcity.com> be transferred to the Complainant.

 


 

Peter G. Nitter
Sole Panelist

Dated: October 20, 2003