At Home Corporation v. John Zuccarini

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

At Home Corporation v. John Zuccarini

Case No. D2000-1524

1. The Parties

The Complainant is At Home Corporation ("At Home"), a Delaware corporation

which has its principal place of business at 450 Broadway, Redwood City, California,

United States.

The Respondent named in the Complaint is John Zuccarini ("Zuccarini")

of 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania, United States. Zuccarini

is named in his capacity as the Administrative Contact for "Cupcake Movies,"

"Cupcake Patrol," "Cupcake Shows," "Cupcake -Show,"

and "Cupcake City," the names of the Registrants of the disputed domain

names.

2. The Domain Name and Registrar

The disputed domain names and their respective Registrars are as follows:

Domain Name Registrar

"excitechatroom.com" Network Solutions, Inc.

"excitechatrooms.com" Network Solutions, Inc.

"excitegams.com" CORE Internet Council of Registrars

"excitehoroscope.com" Network Solutions, Inc.

"excitepersonals.com" Network Solutions, Inc.

"excitevoicechat.com" Network Solutions, Inc.

"bluemountian.net" Network Solutions, Inc.

"bluemountians.com" Network Solutions, Inc.

"bluemountiancards.com" Network Solutions, Inc.

"bluemountiangreetings.com" CORE Internet Council of Registrars

"bluemountincards.com" CORE Internet Council of Registrars

"bluemountins.com" CORE Internet Council of Registrars

"bluemountaincards.net" Network Solutions, Inc.

"bluemountaingreeting.com" Network Solutions, Inc.

3. Procedural History

At Home’s original Complaint was received by the World Intellectual Property

Organization Arbitration and Mediation Center ("the Center") on November

6, 2000, and an electronic copy on November 17, 2000.

After confirming its receipt of the Complaint, the Center requested and, on

November 20 2000, received from CORE a verification that it is the

Registrar of the disputed domain names "excitegams.com", "bluemountiangreetings.com",

and "bluemountincards.com"; that the current Registrant of these domain

names is Cupcake Patrol, of 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania

19020, that John Zuccarini, reachable at "blastout@cyberdude.com"

is the Administrative, Technical, and Zone Contact for the Registrant, and that

the status of the registration for each of the domain names is "production."

On November 23, 2000, CORE submitted a verification that it is also the Registrar

of "bluemountins.com", that John Zuccarini of 957 Bristol Pike, Suite

D-6, Andalusia, Pennsylvania and reachable at "JohnZ@cupcakeparty.com",

is the Registrant of this domain name as well as the Administrative, Technical,

and Zone Contact, and that the status of this domain name is "production."

On November 21, 2000, NSI submitted its verification that it is the Registrar

of several domain names, all in active status:

• the domain name "excitechatroom.com", registered to Cupcake

Shows of 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania 19020, Administrative

Contact is John Zuccarini of the same address;

• the domain names "excitechatrooms.com", "excitehoroscope.com",

and "excitepersonals.com", all registered to Cupcake Movies, of the

same address and with the same Administrative Contact;

• the domain name "excitevoicechat.com", "bluemountiancards.com",

and "bluemountaingreeting.com" registered to Cupcake City of the same

address and the same Administrative Contact;

• bluemountian.net" and "bluemountians.com", and "bluemountaincards.net"

registered to Cupcake-Show of the same address and the same Administrative Contact;

On November 21, 2000, the Center gave At Home notification of a deficiency

in the Complaint with respect to At Home’s submission to jurisdiction for any

challenges to a decision canceling or transferring the domain name, which deficiency

At Home cured on November 27, 2000. On the same date, the Center notified the

Respondent of, and forwarded to him, At Home’s Complaint and the curative Amendment

to Complaint, by e-mail, fax, and Federal Express.

On December 19, 2000, having received no response from the Respondent, the

Center sent to both parties, by email, a Notification of Respondent Default.

On December 30, 2000, the Center notified both parties, by email, of the appointment

of the undersigned as the single panelist for this case.

4. Factual Background

As alleged in At Home’s Complaint and reflected in its supporting documentation,

At Home operates the Excite@Home Network, a network of web sites and related

services, under a family of marks that includes "EXCITE" and "BLUE

MOUNTAIN ARTS." It is the owner of a number of EXCITE-based marks which

are registered in the United States and various other countries and other variants

of EXCITE-based marks for which it has filed registration applications. At Home

is also the licensee of a number of registered marks based on BLUE MOUNTAIN;

the licensor, an affiliate of At Home, has applied for registration of other

variants of the BLUE MOUNTAIN mark. At Home has registered numerous EXCITE-

and BLUE MOUNTAIN-based domain names in the generic top level domains (".com",

".net" and ".org") and numerous country code top level domains.

Most notably, At Home’s portals offer such well known and popular Internet services

as a comprehensive web search database, news, web site review, games, horoscopes,

classified and personals advertisements, chat rooms, and an electronic greeting

card service.

Utilizing the D.B.A. or alias names of Cupcake Movies, Cupcake Patrol, Cupcake

Shows, Cupcake-Show, and Cupcake City, the Respondent has registered a number

of domain names which incorporate At Home’s marks EXCITE and BLUE MOUNTAIN,

as well as various misspellings of the latter ( blue mountian, bluemountians,

bluemountin). These domain names add suffixes to these marks that correspond

to the range of services that At Home offers on the Internet (-chat room, -personals,

-gams [sic], -cards, -greetings, etc.). A user who opens a web page through

one of these domain names encounters one or more of the following:

• a display of the Excite@Home pages, with their full branding and trade

dress, in frames over which the Respondent’s own domain names and advertising

are durably displayed;

• the Respondent’s posted pages, and the additional pages they open, confront

the user with numerous advertising and promotional windows which display other

web sites of the Respondent, a window displaying genuine At Home content, as

well as links that are part of a program through which a third party compensates

the Respondent for each of the user’s clicks;

• a succession of web pages that end with one that traps the user (by

effectively disabling the back button) and is filled with advertisements for

a service of the Respondent that is in the same category as one of the services

offered by At Home;

• pages displaying a variety of third party images and marks.

The only exception to the above is the disputed domain name "BlueMountainGreeting.com,",

which is currently inactive.

The respondent is the registrant of numerous other domain names containing

well known trademarks and famous persons’ names, typically in a slightly misspelled

form. His use of such domain names has been found to be in bad faith in a reported

judicial decision, Shields v. Zuccarini, 89 F. Supp. 2d 634 (E.D. Pa.

2000), and in several UDRP cases.

5. Parties’ Contentions

At Home contends that each of the disputed domain names is confusingly similar

to its marks; that the Respondent should be deemed to have no rights or legitimate

interest in respect of any of the disputed domain names because he has not discharged

his burden of producing evidence of such rights or interest and there are no

objective indicia of his having such rights or interest; that the evidence of

what an Internet user encounters upon clicking one of thirteen disputed domain

names demonstrates that the Respondent has registered and is making use of them

for the illegitimate commercial purpose of diverting users seeking to access

At Home’s services, while his non-use of the fourteenth reveals his purpose

to deprive At Home of the use of its domain name. For these reasons, At Home

concludes, all of the disputed domain names should be transferred to it.

Because no response has been submitted by or on behalf of the Respondent, his

contentions are unknown.

6. Discussion and Findings

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy ("

the Policy") places on the Complainant the burden of proving each of the following

three elements: that the disputed domain name is identical or confusingly similar

to a trademark or service mark in which it has rights; that the Respondent has

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

disputed domain name was registered and is being used in bad faith.

The first of these elements presents no difficulty in the present case. At

Home plainly has rights in the marks at issue, directly as the owner of the

marks based on "EXCITE" and as the licensee of the marks based on

"BLUE MOUNTAIN."[1] It may well

be that combining a complainant’s mark with some suffix or prefix may yield

a result so distinct from the mark and the owner’s products or services as not

to be confusingly similar. However, where, as here, the marks are copied or

only slightly misspelled and the added elements themselves echo the complainant’s

product or services, the result is confusing similarity.

Likewise, there are cases where the unavailability of discovery under the Policy

and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules")

and the failure of a respondent to respond to a complaint leave the complainant

unable to marshal any evidence necessary to satisfy the second and third elements

of its burden of proof. This, however, is not such a case. Through its investigation

and a detailed and vivid description of what an Internet user encounters upon

clicking on the thirteen active disputed domain names and the inactivity of

the fourteenth, as well as through its reliance on the reported findings of

a judge and other UDRP panels in cases involving the same respondent and indistinguishable

fact patterns, At Home has built a solid foundation for the inference that the

Respondent has no rights or legitimate interest in any of the disputed domain

names and has registered and is using them for at least one of the purposes

that Paragraph 4(b) of the Policy lists as examples of bad faith, namely use

of a domain name in a deliberate effort 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."

Furthermore, this Panelist agrees with At Home’s position that, even if Paragraph

4(a) of the Policy places the entire burden of persuasion on the complainant,

Paragraph 4(c) of the Policy strongly implies that the respondent does have

the burden of production, at least with respect to evidence that is in

its sole possession and, given the absence of discovery in UDRP proceedings,

unavailable to the complainant. Further support for this position can be found

in Paragraph 5 of the Rules, which requires a respondent to affirmatively respond

to the complainant’s allegations and permits a panel to draw such inferences

from failure to so respond "as it considers appropriate." Although

this provision does not confer the power to enter a default judgment, where,

as here, the complainant has proffered considerable circumstantial evidence

adverse to the respondent with respect to the second and third elements, the

inference that the respondent’s silence is an admission that it has no rebuttal

evidence is quite appropriate.

For these reasons, the Panelist finds that At Home has discharged its burden

of proof under Paragraph 4(a) of the Policy.

7. Decision

Having considered this case in accordance with Paragraph 15 of the Rules, the

Panelist orders that the following domain names be TRANSFERRED to the Complainant,

At Home Corporation:

"excitechatroom.com"; "excitechatrooms.com"; "excitegams.com"

"excitehoroscope.com"; "excitepersonals.com"; "excitevoicechat.com";

"bluemountian.net"; "bluemountians.com"; "bluemountiangreetings.com";

"bluemountincards.com"; "bluemountins.com"; "bluemountaincards.net";

"bluemountaingreeting.com", "bluemountiancards.com".

Natasha C. Lisman

Sole Panelist

Dated: January 30, 2001

1. Its status as the licensee rather than

the owner with respect to the "BLUE MOUNTAIN" marks in no way diminishes

the validity of its interest in those marks. In the analogous context of the

Lanham Act (the law most closely applicable to this dispute between U.S. parties),

a licensee has standing to bring an infringement action.

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