WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Coldwater Creek Inc. v. John Zuccarini

Case No. D2003-0708

 

1. The Parties

The Complainant is Coldwater Creek Inc., Sandpoint, Idaho, United States of America, represented by Foster Pepper & Shefelman, PLLC, United States of America.

The Respondent is John Zuccarini, Chiriqui, Panama.

 

2. The Domain Name and Registrar

The disputed domain name <coldwatercrek.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

 

3. Procedural History

The Complaint was filed electronically with the WIPO Arbitration and Mediation Center (the "Center") on September 8, 2003, hardcopies of which were received at the Center on September 10, 2003. On September 9 and 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 at issue. On September 10 and 23, 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. 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 September 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 16, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on October 21, 2003.

The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on October 31, 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

Complainant is the owner of the following trademark registrations:

TRADEMARK

REG. No.

Class

(Intíl)

DATE OF REGISTRATION

COUNTRY

"COLDWATER CREEK"

1,531,418

42

March 21, 1989

USA

"COLDWATER CREEK"

1,861,320

42

November 1, 1994

USA

"COLDWATER CREEK"

1,876,534

14, 16,

25

January 31, 1995

USA

"COLDWATER CREEK"

2,217,173

35

January 12, 1999

USA

"COLDWATER CREEK"

2,544,861

35

March 5, 2002

USA

"COLDWATER CREEK"

2,555,721

25

April 2, 2002

USA

"COLDWATER CREEK"

2,602,690

04

July 30, 2002

USA

"COLDWATER CREEK"

2,634,836

30

October 15, 2002

USA

"COLDWATER CREEK"

2,714,390

03

May 6, 2003

USA

"COLDWATER CREEK" (AND DESIGN)

2,740,447

25

July 22, 2003

USA

"COLDWATER CREEK"

TMA

448,547

-

January 10, 2001

CANADA

"COLDWATER CREEK"

002378594

29

November 22, 2002

Community Trademark

"COLDWATER CREEK"

000815787

04, 14,

16, 18,

21, 24,

25, 35,

39

April 10, 2002

Community Trademark

"COLDWATER CREEK"

4283173

20, 24,

25

June 11, 1999

Japan

"COLDWATER CREEK"

4556805

29

April 5, 2002

Japan

"COLDWATER CREEK"

4110594

16

February 6, 1998

Japan

"COLDWATER CREEK"

4332739

35

November 5, 1999

Japan

"COLDWATER CREEK"

3339541

14

August 15, 1997

Japan

The contested domain name <coldwatercrek.com> was registered on October 24, 2000.

 

5. Partiesí Contentions

A. Complainant

A.1. Identity or Confusing Similarity

Complainant submitted the following arguments:

- That since 1984, Complainant has been and continues to be extensively engaged in the manufacture, distribution, advertising, promotion and sale of womenís clothing throughout the United States and internationally.

- That the trademark COLDWATER CREEK has been in use continuously since 1984, in connection with numerous products and services.

- That due to significant marketing and promotional efforts, consumers currently spend in excess of $300 million per year on COLDWATER CREEK brand items through catalog, online and retail sales; that Complainant has developed considerable and valuable goodwill and reputation with respect to the COLDWATER CREEK mark, through marketing and advertising activities; and that COLDWATER CREEK has reached well-known or famous trademark status.

- That a significant component of Complainantís business is through online purchases; that the domain name <coldwatercreek.com> has been in use in connection with Complainantís website since 1998; and that  consumers are familiar with the "www.coldwatercreek.com" website promoted in Complainantís retail outlets and on mail order catalogs mailed to consumers periodically throughout the year.

- That the domain name <coldwatercrek.com> is nearly identical to Complainantís domain name <coldwatercreek.com>; that the two names differ by only one letter "e" and the differences between the names could easily be attributed to a typographical error.

- That the use of the domain name <coldwatercrek.com> blurs the distinctiveness of the trademark COLDWATER CREEK and dilutes the value of the mark as a source identifier.

A.2. Respondentís lack of rights or legitimate interests in respect of the domain name

Complainant filed the following arguments:

- That Respondent is not licensed to use the trademark COLDWATER CREEK or any term that would be considered confusingly similar to the allegedly famous trademark COLDWATER CREEK.

- That Respondent is not known by the domain name <coldwatercrek.com> nor has it conducted any genuine business using the term "coldwatercrek", or referring to the domain name <coldwatercrek.com>.

- That Respondent is not making non-commercial or fair use of the contested domain name <coldwatercrek.com>.

- That Respondentís domain name was registered as an obvious misspelling of Complainantís well known trademark COLDWATER CREEK to redirect Internet users to its site; that when the disputed domain name is entered in the browser line, "mouse trapping" occurs; that there is no connection of any kind between the advertisements displayed or within "adult material" displayed in connection with the contested domain name and the terms "cold water", "creek" or "crek."

- That Respondent has been determined in numerous prior administrative proceedings under the Policy to have engaged in abusive domain name registration in similar circumstances (and cites FTC v John Zuccarini, (D.C. E.D. Penn)).

- That Respondent was recently arrested in Florida in connection with his domain name activity.

- That Respondent should be considered as having no rights or legitimate interests in respect of the domain name <coldwatercrek.com>; that apparently Respondentís sole purpose for registering the domain name <coldwatercrek.com> was to intentionally attempt to misdirect Internet users to its cite when they intended to reach the site to which the domain name <coldwatercreek.com> resolves, which is owned and operated by Complainant, the owner of multiple trademark registrations for COLDWATER CREEK.

- That the activity that is a subject of this Complaint is another example of illegal domain name activity by Respondent - known offender, Mr. Zuccarini.

A.3. Bad faith registration and use

Complainant submitted the following allegations:

- That apparently Respondentís sole purpose for registering the disputed domain name <coldwatercrek.com> was to intentionally attempt to misdirect Internet users to its cite when they intended to reach the site to which the domain name <coldwatercreek.com> resolves.

- That multiple attempts by Complainant to reach Respondent by mail, e-mail or fax have been futile; that letters have been returned; that the contact information listed on the relevant WHOIS database is incomplete and seems to be a conscious effort on behalf of Respondent to remain anonymous.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), the Complainant must prove that:

"(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and

(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."

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

As the Respondent has failed to submit a response to the Complaint, the Panel may choose to accept as true all of the allegations of the Complaint. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487 (August 12, 2002); Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000).

A. Identical or Confusingly Similar

Complainant has submitted sufficient evidence to prove that it holds exclusive rights to the trademark COLDWATER CREEK.

Complainant has argued and proved that the trademark COLDWATER CREEK has been extensively publicized and that it is distinctive of the wares and services that it covers.

Respondentís deletion of a letter "e" from Complainantís trademark COLDWATER CREEK creates a term that is confusingly similar to such mark. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441 (July 13, 2000), in that "The domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive."

The elimination of a space between the words "coldwater" and "creek" (which cannot be reproduced in the domain name anyway), as well as the addition of the generic top-level domain (gTLD) ".com" to the contested domain name are without legal significance. See CBS Broadcasting Inc. v. Worldwide Webs, Inc., WIPO Case No. D2000-0834 (September 4, 2000). See also Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859 (December 4, 2000), (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300 (June 13, 2000); J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035 (March 23, 2000)).

The disputed domain name <coldwatercrek.com> is confusingly similar to Complainantís trademark COLDWATER CREEK, visually and phonetically. The deletion of a letter "e" in the disputed domain name adds no distinctiveness to such domain name, as compared to said trademark.

Paraphrasing AT&T Corp. v. Global Net 2000, Inc., WIPO Case No. D2000-1447 (December 23, 2000), this Panel finds that but for the elimination of one letter "e", the subject domain name would be identical to Complainantís trademark COLDWATER CREEK. It clearly is similar. It is also confusing (see also CBS Broadcasting Inc. v. Worldwide Webs, Inc., supra).

Following VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446 (January 31, 2001), this Panel concludes that Respondent appears to have employed minor misspellings of Complainantís mark to take bad faith advantage of spelling errors made by Internet users while attempting to enter Complainantís Internet address from the web browser, i.e., that Respondentís conduct falls within the definition of Ė "typosquatting", which consists of taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom.

According to Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, GlobalNet 2000, Inc. and Yahoo Search, Inc., WIPO Case No. D2000-0587 (August 10, 2000), typosquatting is "a practice that has been condemned and been found to be confusingly similar to the marks which they mimic".

Therefore, the Panel finds that the domain name <coldwatercrek.com> is confusingly similar to the trademark COLDWATER CREEK in which Complainant has rights. The first requirement of the Policy has been met.

B. Rights or Legitimate Interests

The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:

"(i) before any notice to you 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 (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you 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 trademark or service mark at issue." (Policy, paragraph 4(c))

Complainant has argued that it has not granted Respondent a license to use the trademark COLDWATER CREEK, or any term that would be considered confusingly similar to said trademark. In this sense, the Panel follows TPI holdings, Inc. v. John Zuccarini, WIPO Case No. D2001-0797 (August 22, 2001), in that: "[o]nce a Complainant makes a prima facie showing that a Respondent lacks rights in the Domain Name, the burden of proof shifts to the Respondent to come forward with demonstrable evidence proving a legitimate interest in the Domain Name"Ö "This is consistent with the Policy in paragraph 4(c)(iii), which speaks in terms of the Respondent demonstrating his rights or legitimate interests to the Domain Name for legitimate non-commercial or fair use purposes. The Policy strikes a fair relationship between the overall onus of proof in regard to an issue in a case as contrasted with the proof of a fact material to that issue". Accordingly, the Panel finds no evidence in the record showing that Respondent is entitled to use the trademark COLDWATER CREEK, and that Respondent has not submitted any piece of evidence proving a legitimate interest in the contested domain name.

Respondent has not shown that he has made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. In fact, Complainant has argued that Respondent was doing exactly the opposite, i.e., using the disputed domain name to attract Internet users to Respondentís cite, where such users were mouse-trapped. Previous Panels have found that Respondent has been continuously engaged in mouse-trapping behavior (see, for example NCRAS Management, LP v. Cupcake City and John Zuccarini, WIPO Case No. D2000-1803 (February 26, 2001), citing in turn WebMD Corporation v. Cupcake Patrol, NAF Case No. FA96106 (January 2, 2001), United Feature Syndicate, Inc. v. Mr. John Zuccarini, WIPO Case No. D2000-1449 (December 29, 2000), Microsoft Corporation v. Cupcake Patrol, WIPO Case No. D2000-1344 (December 10, 2000). Deviating Internet users and preempting them from reaching their intended destination, in order to trap them into a site that they did not choose to visit, cannot constitute a bona fide offering of goods or services.

According to the evidence filed by Complainant, Respondent is not known by the domain name <coldwatercrek.com>. Moreover, Respondent is well known in the world of the Domain Name System (DNS), not as <coldwatercrek.com>, but as John Zuccarini, a consuetudinary cybersquatter.

Respondentís behavior cannot be catalogued as "legitimate, noncommercial or fair use" of the domain name. Respondent has engaged in a typosquatting practice to divert consumers looking for Complainantís products or services on the Internet. Such users are mislead and confused by Respondentís domain name, and diverted to Respondentís website against their will, where they are trapped thereafter. Complainant has argued that Respondent displays advertisements and adult material in his site. Respondent has not contested this argument. Such content cannot give rise to a legitimate, noncommercial or fair use of the domain name.

The Panel thus finds that Respondent has no rights or legitimate interests in the disputed domain name. The second requirement set forth in the Policy has therefore been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."

Complainant has proved that Respondent is conducting a typosquatting practice, i.e., taking advantage of common misspellings made by Internet users who are looking for a particular site of a particular provider of goods or services, in order to obtain some benefit therefrom. Respondent has submitted no justification for registering a domain name that is almost identical to Complainantís trademark COLDWATER CREEK, but for the elimination of a letter "e", and the deletion of a space (which cannot be reproduced in the domain name anyway Ėsee point 6A supra).

Typosquatting has been held under the Policy to be evidence of bad faith registration of a domain name (see News Group Newspapers Limited and News Network Limited v. Momm Amed Fa, WIPO Case No. D2000-1623 (January 18, 2001); America Online, Inc. v. Intellectual-Assets.com, Inc., WIPO Case No. D2000-1043 (December 14, 2000); Link Clicks Inc. d/b/a Ad Here and TOTALLYFREESTUFF.COM v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2000-1547 (January 12, 2001).

Even if the user who arrives at Respondentís website may promptly conclude that it is not what he or she was originally looking for, Respondent has already succeeded in its purpose of using the [trade and] service mark to attract the user with a view to commercial gain (Yahoo! Inc. and GeoCities v. Data Art Corp. et al., WIPO Case No. D2000-0587, citing in turn National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO Case No. D2000-0118 (April 17, 2000)).

According to TPI holdings, Inc. v. John Zuccarini, WIPO Case No. D2001-0797 (August 22, 2001), the practice of registering Domain Names which are the same as trademarks or service marks in which the Complainant has rights, but changing one letter in these names, is a breach of the Policy. Examples of such cases in which the Respondent has been the losing party include: Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; Diageo p.l.c. v. John Zuccarini, WIPO Case No. D2000-0541; Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578; Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini, WIPO Case No. D2000-0928; Saks & Company v. John Zuccarini, WIPO Case No. D2000-1285. In the Encyclopaedia Britannica case, there were four domain names at issue, two in Dow Jones, twenty-three in Yahoo, and only one in Saks & Company. There are others. The Respondentís conduct has also been examined by a United States court in Shields v. Zuccarini, 54 U.S.P.Q. 2d 1166 (E.D.Pa. 2000). The Respondent has registered variations of other famous trademarks, trade names, and celebrity names such as "Sony", "Blue Mountain Arts", "Hewlett-Packard", "National Car Rental", "Britney Spears", "Salma Hayek", "Oprah Winfrey", "Jennifer Lopez", "Star Wars", "Mayo Clinic", "Michael Jordan", "Ally McBeal", "Ricky Martin", "USA Today", "Taco Bell", "Austin Powers", "Microsoft" and "Playboy". Indeed, according to the opinion in the Shields case, the Respondent admitted that he had registered "thousands of other domain names, because [underlining added] they are confusingly similar to othersí famous marks or personal names -- and thus are likely misspellings of these names -- in an effort to divert Internet traffic to his sites".

Respondent has distinguished himself for free-riding on the goodwill of others, particularly by registering domain names that are identical or confusingly similar to trademarks owned by third parties, in order to profit from said domain names. This case is no exception. Respondent has obtained a domain name that is confusingly similar to Complainantís trademark COLDWATER CREEK. The domain name <coldwatercrek.com> is a common misspelling of said mark and was registered to create confusion among those Internet users who are looking for Complainantís products and services. The disputed domain name has been used for diverting Internet users to Respondentís site, where they are mouse-trapped and exposed to Respondentís advertisements and adult content. Such practice has been considered by other Panels to constitute bad faith registration and use. This Panel agrees.

The third requirement of the Policy has therefore been fulfilled.

 

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 name <coldwatercrek.com> be transferred to the Complainant.

 


 

Kiyoshi I. Tsuru
Sole Panelist

Dated: November 15, 2003