Primedia Magazine Finance Inc. v. John D. Zuccarini

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

PRIMEDIA

Magazine Finance Inc. v. Zuccarini

Case No.

D2000-1186

1. The Parties

The Complainant is PRIMEDIA

Magazine Finance Inc., a Delaware corporation having a place of business in

New York City, New York, USA.

The Respondent is John

Zuccarini, an individual having a postal address in Andalusia, Pennsylvania,

USA.

2. The Domain Names

and Registrar

The following three domain

names are disputed:

"seventeen-mag.com"

"seventeen-magazine.com"

"seventeenmagizine.com"

The registrar for each

of these domain names is CORE Internet Council of Registrars ("CORE"),

Geneva, Switzerland. 1

The domain name "seventeenmagazine.com"

is not at issue in this case.

3. Procedural History

The essential procedural

history of the administrative proceeding is as follows:

Complainant initiated the

proceeding by the filing of a Complaint via e-mail, received by the WIPO Arbitration

and Mediation Center ("WIPO") on September 7, 2000. A hardcopy of

the Complaint was received via courier by WIPO on September 12, 2000. Payment

by Complainant of the requisite fees accompanied the courier mailing. On September

26, 2000, WIPO completed its formal filing compliance requirements checklist.

On September 27, 2000,

WIPO transmitted to the parties the document entitled, Notification of the

Complaint and Commencement of the Administrative Proceeding, together with a

copy of the Complaint. WIPO transmitted these documents to Respondent Zuccarini

via post/courier and email. Although WIPO’s attempts to fax these documents

to Respondent were unsuccessful, there is evidence that WIPO achieved actual

notice to Respondent via post/courier and email.

In its Notification, WIPO

advised that the response was due by October 16, 2000. WIPO also advised the

parties of September 27, 2000, as the date of commencement of this administrative

proceeding, pursuant to the Rules for Uniform Domain Name Dispute Resolution

Policy ("Rules"), paragraph 4(c).

WIPO received no response

from Respondent. On November 1, 2000, WIPO transmitted to the parties a document

entitled, Notification of Respondent Default. On November 13, 2000, WIPO advised

the parties via email that the undersigned had been appointed as the sole panelist

of the Administrative Panel (the "Panel") in this matter. WIPO also

advised that, absent exceptional circumstances, the Panel would be required

to forward its decision to WIPO by November 26, 2000.

The Panel has not received

any requests from Complainant or Respondent regarding further submissions, waivers

or extensions of deadlines. The Panel has not found it necessary to request

any further information from the parties. The Panel is of the opinion that the

Complaint is in compliance with the relevant formal requirements, and that Respondent

was properly notified in accordance with the Rules, paragraph 2(a). The proceedings

have been conducted in English.

4. Factual Background

Complainant is PRIMEDIA

Magazine Finance Inc., a publisher of special-interest magazines targeted to

one or more particular audiences. Complainant alleges that it and its predecessors

have published a monthly magazine known as SEVENTEEN, since September, 1994.

Complainant has provided

evidence that the SEVENTEEN magazine features articles about fashion, beauty,

health, careers, relationships and entertainment, and that it is primarily oriented

towards the interests of young women.

Complainant alleges that

it has hosted an Internet site, "seventeen.com", since 1996. Complainant

further has provided evidence that the website promotes the SEVENTEEN magazine

generally, and that the website features articles and interactive resources

about fashion, beauty, health, careers, sports and entertainment.

Complainant has provided

a copy of United States Trademark Reg. No. 411,294, for the stylized letters

"seventeen", for a "monthly magazine devoted to the interests

of girls." This registration was issued on January 9, 1945. Complainant

has also provided a copy of United States Trademark Reg. No. 2,281,763, for

"SEVENTEEN", for "computer services, namely providing an on-line

computer magazine devoted to the interests of young women." This registration

was issued on September 28, 1999, and is for International Class 42.

Network Solution’s WHOIS

database query indicates that Respondent John Zuccarini, with a postal address

in Andalusia, Pennsylvania, is the registrant of each of the disputed domain

names. This database indicates that the record of the registration for "seventeenmagizine.com"

was created on October 25, 1999. It further indicates that the records of the

registrations for "seventeen-mag.com" and "seventeen-magazine.com"

were both created on November 15, 1999.

The Panel has verified

that each of the three disputed domain names are presently being used for an

advertising referral practice that has become known commonly as "mousetrapping."

That is, when a user attempts to visit a website associated with any of the

disputed domain names, the user is forced to view multiple "pop-up"

windows, displaying advertisements for credit card companies, telephone services,

games, music, and other websites. Each of these windows must then be individually

closed by the user. Upon closing these windows, the user learns that there is

no website associated with any of the disputed domain names. Complainant alleges

that Respondent receives fees from advertisers each time a user clicks on any

of the "pop-up" advertisements.

The Service Agreement in

effect between Respondent and CSL subjects Respondent to CORE’s dispute settlement

policy, which is the Uniform Domain Name Dispute Resolution Policy, as adopted

by the Internet Corporation for Assigned Names and Numbers ("ICANN")

on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the

"Policy") requires that domain name registrants submit to a mandatory

administrative proceeding conducted by an approved dispute resolution service

provider, of which WIPO is one, regarding allegations of abusive domain name

registration. See Policy, paragraph 4(a). It is not contested that Respondent

is properly before this Administrative Panel.

5. Parties’ Contentions

A. Complainant

Complainant contends it

has strong mark rights in the word "seventeen," and that its mark

is famous. Complainant submits as evidence its federal registrations and its

statements of long use of the mark. Complainant further submits statements concerning

the popularity of its SEVENTEEN magazine and website. Complainant alleges that

its SEVENTEEN magazine has a regular monthly readership of nearly 14 million

people, and that the magazine generated over $100 million in gross revenue in

1999. Complainant further contends that its website is steadily increasing in

popularity, now averaging over 600,000 unique visitors per month. Complainant

alleges that it spent more than U.S. $17.3 million to advertise and promote

its mark in 1999, and that it is projected to spend more than U.S. $20 million

for this purpose in the present year.

Complainant contends that

the "relevant portion" of Respondent’s domain names "seventeen-mag.com",

"seventeen-magazine.com" and "seventeenmagizine.com" is

"identical or confusingly similar to Complainant’s registered trademark

SEVENTEEN in that [the domain names] combine the mark SEVENTEEN with variations

on or misspellings of the term magazine, which is allegedly Complainant’s primary

product sold under the SEVENTEEN mark."

Complainant contends that

Respondent should be considered as having no rights or legitimate business interest

in the disputed domain names. Complainant submits that Respondent does not own

a trademark or service mark registration that is in any way related to either

Complainant’s SEVENTEEN mark or to any of the disputed domain names. Complainant

further submits that its SEVENTEEN mark is not Respondent’s personal name, and

that Respondent is not engaged in any business or commerce under the mark SEVENTEEN.

Complainant states that Respondent is not a licensee of Complainant, nor has

Respondent ever been authorized by Complainant to use its trademark.

Furthermore, Complainant

contends that Respondent does not use the disputed domain names in connection

with any bona fide offering of goods or services. Rather, Complainant

contends, Respondent uses the "mousetrapping" technique to "misleadingly

divert" consumers.

Complainant contends that

the disputed domain names should be considered as having been registered in

bad faith. In support, Complainant alleges that Respondent registered the disputed

domain names with knowledge of Complainant’s allegedly well-known mark. According

to Complainant, Respondent registered the domain names because of their alleged

identity or similarity to Complainant’s mark. Complainant further alleges that

Respondent registered the domain names for the purpose of diverting Internet

users to his website or other on-line locations for commercial gain at the expense

of Complainant’s trademark.

In further support of its

allegation of Respondent’s bad faith, Complainant alleges that Respondent has

engaged in a larger course of conduct, registering thousands of domain names

that are misspellings of famous marks or celebrity names. Complainant cites

to a recent legal proceeding in United States District Court, in which Respondent

was preliminarily enjoined from using five domain names under the Anticybersquatting

Consumer Protection Act. See Shields v. Zuccarini, 89

F.Supp. 2d 634, 400 (E.D. Pa. March 22, 2000) (finding that Respondent

had registered thousands of domain names with a bad faith intent to profit and

that Respondent "conducts no bona fide business and offers no goods or

services that have anything to do with [plaintiff’s mark] or with any of the

other sites he has registered").

Similarly, Complainant

cites to other arbitration awards under the ICANN Policy in which Respondent

was found to have registered and used numerous domain names in bad faith. See

Encyclopedia Britannica, Inc. v. Zuccarini, WIPO Arbitration and

Mediation Ctr., Case No. D2000-0330 (June 7, 2000) ("Taking advantage of

consumer’s known disposition to misspell domain names, Zuccarini has diverted

Internet traffic to his websites, thereby earning substantial revenue from advertisers.");

Bama Rags, Inc. v. Zuccarini, National Arbitration Forum, File

Nos. FA 003000094380 and 00300009481 (May 8, 2000) ("Respondent is

intentionally attempting to attract, for commercial gain, Internet users to

Respondent’s, or other, online locations. . . . A user is led to believe that

the Dav[e] Matthews Band sponsors, or is affiliated with Respondent’s domain

name, and is one and the same (until after a user has suffered going through

ten or more ‘pop up boxes’)."); Hewlett-Packard Co. v. Zuccarini,

National Arbitration Forum, File No. FA 0004000094454 (May 30, 2000).

Complainant states that

it twice sent letters to Respondent, providing notice of Complainant’s trademark

rights, asserting that Respondent’s registrations violated those rights, and

requesting that Respondent stop using and transfer to Complainant each of the

disputed domain names. Complainant states that Respondent has not replied to

either of these letters, and that Complainant has had no communications with

Respondent or counsel for Respondent.

B. Respondent

Respondent has not submitted

any response to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy

institutes three elements that must be established by a complainant to merit

a finding that a respondent has engaged in abusive domain name registration.

These elements are as follows:

(i) respondent’s "domain

name is identical or confusingly similar to a trademark or service mark in which

the complainant has rights."

(ii) respondent has

"no rights or legitimate interests in respect of the domain name;"

and

(iii) respondent’s

"domain name has been registered and is being used in bad faith."

Each of these three elements

must be proved by a complainant to obtain relief. Paragraph 4(b) of the Policy

provides nonexclusive criteria for evincing bad faith registration and use of

a domain name. Paragraph 4(c) of the Policy provides nonexclusive criteria for

demonstrating a registrant’s rights or legitimate interests in a domain name.

A. Identity or Confusing

Similarity of Respondent’s Domain Name and Complainant’s Trademark

Complainant has established

through its federal registrations and through its periods of use that it has

trademark rights in the mark SEVENTEEN, for use in both a monthly (traditional

paper) magazine and for an on-line computer magazine.

Complainant has further

established that the disputed domain names "seventeen-mag.com", "seventeen-magazine.com"

and "seventeenmagizine.com" are confusingly similar to Complainant’s

trademark. The first nine letters of each of the disputed domain names are identical

to those of Complainant’s mark. The remaining letters are merely descriptive

of Complainant’s product. An Internet user wishing to visit Complainant’s website

may well type in "seventeen-mag.com" or "seventeen-magazine.com",

believing that such domain names would enable the user to visit Complainant’s

site. An Internet user, especially a younger one, could easily misspell the

word "magazine" and accidentally type in "seventeenmagizine.com".

Indeed, the disputed domain names gain their very importance and apparent value

by reason of their confusing similarity to Complainant’s mark. 2

Thus, the Panel finds for

Complainant on the first element, that Respondent’s domain names are identical

or confusingly similar to a mark in which Complainant has rights.

B. Respondent’s Rights

or Legitimate Interests in the Domain Names

The Panel considers the

nonexclusive list of circumstances found in paragraph 4(c) of the Policy to

determine whether Respondent has rights to or legitimate interests in any of

the disputed domain names. Since Respondent failed to respond to the Complaint,

the Panel makes its determination based only upon its own inferences and Complainant’s

allegations and evidence.

The Panel finds that Respondent

has no rights or legitimate interests in any of the disputed domain names. The

Panel is unaware of any evidence showing Respondent’s use of the disputed domain

names, or any names corresponding to the domain names, in connection with any

bona fide offering of goods or services. See Policy, paragraph

4(c)(i). There is no evidence that Respondent or Respondent’s business(es) have

ever been commonly known by any of the disputed domain names. See Policy,

paragraph 4(c)(ii). There is no evidence that Respondent is making a legitimate

noncommercial or fair use of the domain name. See Policy, paragraph 4(c)(iii).

Rather, there has been

presented overwhelming evidence that the opposite is true. The Panel accepts

Complainant’s contention that Respondent owns no trademark or service mark registration

that is in any way related to Complainant’s SEVENTEEN mark or to the disputed

domain names. Respondent’s personal name has nothing to do with either the SEVENTEEN

mark or the disputed domain names. Respondent is not a licensee of Complainant’s

mark rights.

The Panel finds that Respondent’s

"mousetrapping" practice, in which Internet users are annoyingly subjected

to unrelated and unwanted pop-up windows, is not a bona fide offering

of goods or services. Rather, the Panel finds that this practice is an obviously

commercial use intended to financially benefit Respondent by misleadingly diverting

Internet consumers.

Thus, Panel finds for Complainant

on the second element, that Respondent has no rights or legitimate interests

in the disputed domain names.

C. Respondent’s Registration

and Use of the Domain Name

The Panel first considers

the nonexclusive list of circumstances found in paragraph 4(b) of the Policy

to determine whether the Respondent registered and used the disputed domain

names in bad faith. The Panel finds the fourth circumstance of the Policy to

be dispositive, and concludes from the evidence submitted that Respondent registered

and used all three of the disputed domain names in bad faith. See Policy,

paragraph 4(b)(iv).

The fourth circumstance,

paragraph 4(b)(iv) of the Policy, provides that evidence of bad faith may be

found when a domain name registrant "intentionally attempt[s] to attract,

for commercial gain, Internet users to [the registrant’s] website 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 registrant’s]

website or location . . . ."

There can be little question

that Respondent is using the disputed domain names to intentionally attract

Internet users to certain advertiser’s on-line locations, for Respondent’s own

commercial gain. Likewise, the Panel concludes that the similarity between Respondent’s

domain names and Complainant’s mark is likely to create confusion as to source,

sponsorship, affiliation or endorsement among Internet users. Each of the disputed

domain names "seventeen-mag.com", "seventeen-magazine.com"

and "seventeenmagazine.com" was clearly chosen to take advantage of

the propensity of Internet users to add product descriptors (such as the word

"magazine") to well-known marks when looking for the mark holder’s

corresponding website. The domain name "seventeenmagizine.com" was

also chosen to take advantage of the propensity of users to misspell domain

names. Respondent does nothing to dispel the confusion he purposefully initiates.

Rather, Respondent compounds confusion by subjecting unfortunate web visitors

to a frustrating array of pop-up window advertisements.

The Panel’s conclusion

of Respondent’s bad faith in this matter is only reinforced by the overwhelming

evidence presented that Respondent has engaged in a pattern of abusive domain

name registrations and uses. In addition to the ICANN arbitration matters cited

by Complainant, the Panel is aware that Respondent has more recently been found

in other arbitrations to have registered domain names in bad faith. E.g., Yahoo,

Inc. v. Zuccarini, WIPO Arbitration and Mediation Ctr., Case No. D2000-0777 (October

20, 2000); Cabela’s Inc. v. Zuccarini, National Arbitration Forum, File

No. FA 0007000095233 (September 28, 2000); Dow Jones & Co., WIPO

Arbitration and Mediation Ctr., Case No. D2000-0578 (August 28, 2000).

Furthermore, the Panel

is aware that Respondent’s conduct has recently been described by the United

States District Court in the Shields litigation as "utterly parasitic

and in complete bad faith." Shields v. Zuccarini, No. Civ.A.

00-94, 2000 WL 105884 (E.D. Pa. July 18, 2000) (entering judgment under

the Anticybersquatting Consumer Protection Act and ordering Respondent to pay

the mark holder’s statutory damages and attorneys’ fees).

The Panel is also aware

that Respondent was recently ordered to pay a judgment of U.S. $500,000, plus

attorneys’ fees, in another legal proceeding in which Respondent engaged in

similar Internet domain name registration and "mousetrapping" practices.

Electronics Boutique Holdings Corp. v. Zuccarini, No.Civ.A 00-4055,

2000 WL 1622760, at *2, *8-9 (E.D. Pa. October 30, 2000) ("Mr. Zuccarini

boldly thumbs his nose at the rulings of this court and the laws of [the United

States].")

The Panel finds that Respondent

registered and used of all three of the disputed domain names in bad faith.

Thus, Panel finds for Complainant on the third element.

7. Decision

For the foregoing reasons,

the Panel decides:

1. That the "seventeen-mag.com",

"seventeen-magazine.com" and seventeenmagizine.com" domain names

registered by Respondent are identical or confusingly similar to a trademark

in which Complainant has rights;

2. That Respondent

has no rights or legitimate interests with respect to the "seventeen-mag.com",

"seventeen-magazine.com" and "seventeenmagizine.com" domain

names; and

3. That Respondent’s

"seventeen-mag.com", "seventeen-magazine.com" and "seventeenmagizine.com"

domain names have been registered and used in bad faith.

Accordingly, pursuant to

paragraph 4 of the ICANN Policy, the Panel requires that the registrations for

the domain names "seventeen-mag.com", "seventeen-magazine.com"

and "seventeenmagizine.com" be transferred to Complainant.

Tom Arnold

Sole Panelist

Dated: November

20,2000

1.

The Complaint lists as registrar Computer Service Langenbach GmbH, d/b/a

"joker.com" ("CLS"). CORE is a non-profit membership association

of domain name registrars, and CLS is a member of CORE that offers domain name

registration services via CORE. See CORE website, at "http://corenic.org/about_core/about.htm".

2.

The Panel notes that Respondent would likely be estopped from denying

the confusingly similar nature of the disputed domain names. During Respondent’s

deposition and at the preliminary injunction hearing in the course of Respondent’s

Shields litigation, Respondent admitted that he had registered thousands

of Internet domain names only because they were confusingly similar to others’

famous marks or personal names. See Shields v. Zuccarini, No. Civ.A.

00-94, 2000 WL 1056400, at *3 (E.D. Pa. June 5, 2000).

More cases by this complainant

• PRIMEDIA Magazine Finance Inc. v. Richard Manzo — D2001-1258 · powerandmotoryacht.com, powerandmotoryachts.com · Transfer · 13 Dec 2001
• Primedia Magazine Finance Inc. v. Yelena M. Wright — D2001-1007 · teenbeatmagazine.com, tigerbeatmagazine.com · Transfer · 08 Nov 2001
• Primedia Magazine Finance Inc. — D2001-0863 · Terminated
• Primedia Magazine Finance Inc. v. Next Level Productions — D2001-0616 · tigerbeat.com · Transfer · 18 Jun 2001
• Primedia Magazine Finance Inc. — D2000-1572 · Terminated