Disney Enterprises, Inc. v. Cupcake City / Cupcake Patrol; John Zuccarini

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Disney Enterprises,

Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol

Case No.

D2001-0489

1. The Parties

The Complainant is Disney

Enterprises, Inc. of 500 South Buena Vista Street, Burbank, California 91521,

USA, represented by its Corporate Counsel, Christopher S. Ruhland, Esq.

The Respondents are John

Zuccarini, Cupcake City and Cupcake Patrol a/k/a John Zuccarini, formerly of

957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania 19020, USA, and of Atlanta,

Georgia, U.S.A and currently of Music Wave Investments Ltd., Saffrey Square,

Suite 106, P.O.Box N-4140, Nassau, N.P., Bahamas, represented by Christopher

A. Grillo Esq. Law Office of Fort Lauderdale, Florida, U.S.A.

2. The Domain Names

and Registrars

This dispute concerns the

domain names listed below alongside the current registrant and registrar:

Domain

Name

Registrant

Registrar

<disneychanel.com>

John

Zuccarini

CSL

GmbH

<disneywallpaper.com>

Cupcake

City

Network

Solutions, Inc.

<disneywold.com>

John

Zuccarini

CSL

GmbH

<disneywolrd.com>

Cupcake

Patrol

CORE

Internet Council

<disneyword.com>

John

Zuccarini

CSL

GmbH

<disneyworl.com>

John

Zuccarini

CSL

GmbH

<walddisney.com>

Cupcake

Patrol

CORE

Internet Council

3. Procedural History

This is an administrative

proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the

Policy") adopted by the Internet Corporation for Assigned Names and Numbers

("ICANN") on August 26, 1999, in accordance with the Rules for the

Policy, approved by ICANN on October 24, 1999, ("the Rules") and the

Supplemental Rules for the Policy ("the Supplemental Rules") of the

WIPO Arbitration and Mediation Center ("the Center").

The Complaint was filed

with the Center by e-mail on April 3, 2001 and in hard copy on April 6, 2001.

The Center acknowledged receipt on April 9, 2001 and next day sought confirmation

of registration details from the registrars.

CSL GmbH responded on April

10, 2001. It confirmed that the current registrant of the domain name <disneychanel.com>

is Mr Zuccarini of "Atlanta, Georgia, 30350, US", with no street address.

The name was registered with CSL GmbH on April 10, 2000.

Network Solutions responded

on April 12, 2001. It confirmed that the current registrant of the Disputed

Domain Name <disneywallpaper.com> is Cupcake City, with Mr. Zuccarini

being the Administrative and Billing contact (at his Pennsylvania address);

and that the registrar’s #4 Service Agreement [which incorporates the Policy]

is in effect.

CORE Internet Council of

Registrars ("CORE") responded on April 10, 2001. It confirmed that

the current registrant of the Disputed Domain Names <disneywolrd.com>

and <walddisney.com> is Cupcake Patrol and that Mr. Zuccarini is the Administrative,

Technical and Zone contact, at his Nassau address. Mr. Zuccarini is recorded

as the owner of Cupcake Patrol. The record was created on May 13, 2000. The

Policy has applied since December 1, 1999.

The Complaint, as filed,

alleged the domain names <disneywold.com>, <disneyword.com> and

<disneyworl.com> were registered (in the name Cupcake Patrol) with CORE

but, in response to the Center’s enquiry, CORE stated that this was not so.

On April 12, 2001 the Center notified the complainant of this deficiency in

the Complaint and that day the complainant responded, saying that Exhibit 1

to the Complaint showed CORE as the registrar when the Complaint was filed and

it therefore appeared that after the Complaint was filed and a copy was sent

to the Respondent by the Complainant as required by Rule 3(b)(xii), there had

been a change of registrar to CSL GmbH and a change of registrant to Mr. Zuccarini.

The Complainant noted that

CSL GmbH is a member of CORE; it registers domain names through CORE; it is

the registrar of one of the other Disputed Domain Names and had received a copy

of the Complaint (which, of course, specifies all the Disputed Domain Names).

The Complainant submitted the deficiencies should be deemed cured and the Complaint

deemed compliant.

On April 16, 2001, the

Center sought from CSL GmbH confirmation of the registration details in relation

to the domain names <disneywold.com>, <disneyword.com> and <disneyworl.com>.

On April 20, 2001 CSL GmbH confirmed it is the current registrar of those names

and that the current registrant is Mr. Zuccarini at his Nassau address. Following

inquiries by the Center at the behest of the panel, CSL GmbH stated on June 13,

2000 that these domain names were transferred from CORE to CSL GmbH on April

8, 2001.

Through the Complaint,

the Complainant requested a single member Panel.

The Center completed its

formality review of the Complaint on April 23, 2001. This included noting that

the Complaint identified the registrars with whom the domain names were registered

at the time the Complaint was filed and noting that, in accordance with paragraph

3(b)(xiii) of the Rules, the Complainant had agreed, with respect to any challenge

to a decision by the Panel to transfer or cancel the Disputed Domain Names,

to submit to the jurisdiction of the courts where the Respondents are located,

as shown by the address given for the Respondents in the concerned registrars’

Whois database at the time of the submission of the Complaint to the Center.

On April 23, 2001 the Center

notified the Respondents of the filing of the Complaint, including providing

a complete copy of the Complaint, with an explanatory cover sheet, to the Respondents,

by e-mail and in hardcopy by post/courier (the latter including a copy of the

Exhibits supplied by the Complainant). The Complaint and its accompanying documents

and all subsequent communications associated therewith were provided in the

preferred manners and to the addresses as mandated by paragraphs 2(a) and

4(a) of the Rules.

Hence, the notification

to the Respondent having occurred on April 23, 2001, under paragraph 4(c) of

the ICANN Policy, this administrative proceeding is deemed to have commenced

on that date.

Having reviewed the Complaint

and succeeding correspondence between the Center and the three registrars in

detail, the Panel agrees with the determination of the Center that the Complaint

and its handling met the requirements of the Rules and the Supplemental Rules.

The last day specified

in the notice for a Response to be filed with the Center was May 12, 2001.

On April 23, 2001 Mr. Zuccarini

sent an email to the Center stating that he no longer lives in Pennsylvania

or Atlanta and that it would be against U.S. Federal law for him to file a lawsuit

in "the proposed districts of jurisdiction by the Complainant", stating

the appropriate places of jurisdiction would be either his current address in

Nassau, Bahamas, or Geneva, Switzerland (the location of the Registrar CORE).

He considered the entire domain name dispute process invalid and said that,

"should the subject domains be taken away from me I will immediately file

a lawsuit in Geneva Switzerland against ICANN and the WIPO".

The Center responded the

next day, noting that a copy of the Complaint and Notification was also being

sent to the Respondents' Nassau address.

On May 8, 2001 a Response

was filed at the Center in hardcopy. Its receipt was acknowledged that day and

an electronic copy was requested, in accordance with Rule 5(b). The electronic

copy was received by the Center on May 10, 2001.

The Respondents requested

a three-member panel and the applicable fee was paid.

On June 1, 2001 the Center

notified the parties of the appointment of the undersigned panelists, in accordance

with the procedure specified in Rule 6(e) and Supplemental Rule 7, the three

panelists having submitted to the Center Statements of Acceptance and Declarations

of Impartiality and Independence. The notice nominated June 15, 2001

as the projected date on which the decision is to be forwarded to the Center.

The language of this proceeding

is English.

4. Factual Background

In 1923, Walter E. Disney

founded the predecessor to the Complainant, which is the owner of a family of

trademarks incorporating the famous DISNEY mark. Since 1923, the Complainant

or its wholly owned subsidiaries or affiliated companies have engaged in a wide

variety of entertainment businesses under the DISNEY mark or a DISNEY-formative

mark.

The Complainant and the

goods and services sold to the public under these marks have been enormously

successful and popular. For example, The Walt Disney Company (the holding company

for the complainant) reported revenues of over $25,000,000,000.00 for the year

2000. Surveys consistently indicate that the DISNEY brand is one of the most

well-known and valuable brands in the world.

Certain of the Complainant’s

businesses are particularly relevant to the present dispute because of the variations

on the DISNEY mark which the Respondents have registered as domain names.

a. Since 1971, one of

the Complainant’s affiliated companies has operated the WALT DISNEY WORLD Resort

in Orlando, Florida. This resort complex, sometimes referred to simply as DISNEY

WORLD, contains several theme parks, as well as numerous hotels, restaurants,

and retail stores. The WALT DISNEY WORLD Resort is one of the most popular tourist

destinations in the world. In 1998, the WALT DISNEY WORLD Resort welcomed its

600,000,000th guest.

b. Since 1983, one of

the Complainant’s affiliated companies has operated the DISNEY CHANNEL cable

television network. The DISNEY CHANNEL broadcasts a variety of family programming

and has become immensely popular. The DISNEY CHANNEL network now reaches almost

70,000,000 homes in the United States and approximately 13,000,000 subscribers

in other countries. DISNEY CHANNEL programming has won numerous awards from

organizations such as the Academy of Television Arts & Sciences, the Directors

Guild of America, and the Writers Guild of America.

c. Since 1996, one of

the Complainant’s affiliated companies has operated a website at <disney.com>

and has used the <disney.com> mark in connection with that site. <disney.com>

offers entertainment, shopping, downloads (including computer wallpaper themes),

vacation planning, news and information about the Complainant and other features.

<disney.com> is consistently ranked as one of the most popular entertainment

websites in the world (measured in terms of the number of unique visitors).

The Complainant’s substantial

trademark portfolio includes:

- over 50 United

States trademark registrations for marks that include the DISNEY mark, such

as DISNEY (for books and other printed matter), DISNEY CHANNEL (for television

broadcasting and production services), <disney.com> (for various online

services), DISNEY ONLINE (for various online services), WALT DISNEY (for video

cassettes, books, and other printed matter), and WALT DISNEY WORLD (for various

types of entertainment services and various types of merchandise);

- hundreds of

registrations for DISNEY and DISNEY-formative marks outside the United States

for many different goods and services, and particularly for those described

above, including almost 400 foreign trademark registrations for the DISNEY and

WALT DISNEY marks alone, i.e., excluding other DISNEY-formative marks.

The Complainant also owns

scores of domain names that include the DISNEY mark, including <disney.com>,

<disneychannel.com>, <disneyworld.com>, <waltdisney.com>,

and <waltdisneyworld.com>. These domain names were registered and used

long before Respondents registered the Disputed Domain Names.

The DISNEY mark and the

DISNEY family of marks are distinctive and famous. As one court stated more

than 30 years ago, "the association of the name ‘DISNEY’ with the business

enterprises, goods, services and activities of [the Complainant and its affiliated

companies] is so widely accepted in the mind of the general public . . . that

said name has become and is distinctive . . . and has acquired and now has a

secondary meaning and distinctiveness throughout the United States . . . ."

Walt Disney World Co. v. Disney Area Acreage, Inc., 316 F. Supp. 285,

286-87 (S.D. Fla. 1970).

The Disputed Domain Names

were registered by the Respondents as follows:

<disneychanel.com> February

10, 2000

<disneywallpaper.com> July

12, 1999

<disneywold.com> April

11 2000

<disneywolrd.com> June

4, 2000

<disneyword.com> April

11, 2000

<disneyworl.com> April

11, 2000

<walddisney.com> May

13, 2000

All uses by the Complainant

of the DISNEY mark and the DISNEY family of marks commenced prior to the Respondents’

unauthorized registration and use of the Disputed Domain Names.

5. Parties’ Contentions

A. Complainant

Respondent’s Infringing

Conduct

John Zuccarini is in the

business of registering domain names containing famous trademarks (or slight

misspellings of those trademarks), then using these domain names to redirect

unwitting Internet users to advertisements and commercial websites. He has been

quite prolific in this regard. His registration and use of the Disputed Domain

Names constitutes the same conduct that courts and administrative panels repeatedly

have condemned.

Zuccarini’s History of

Infringing Conduct

Either in his own name

or in the name of one of his "Cupcake" entities, Mr. Zuccarini has

registered numerous infringing domain names. Often, the domain names contain

slight misspellings of famous trademarks. Internet users who accidentally enter

one of Mr. Zuccarini’s domain names in their browsers generally are bombarded

with multiple "pop-up" windows for advertisements or commercial websites.

According to one federal court, Mr. Zuccarini admitted that he makes almost

$1,000,000.00 per year in revenue generated from Internet users clicking on

these domain names. See Shields v. Zuccarini, 89 F. Supp. 2d 634, 639

n.7 (E.D. Pa. 2000). Obviously, "the profitability of Mr. Zuccarini’s enterprise

is completely dependent on his ability to create and register domain names that

are confusingly similar to famous names": Electronics Boutique Holdings

Corp. v. Zuccarini, 56 U.S.P.Q.2d 1705, 1710 (E.D. Pa. 2000).

Courts and administrative

panels consistently have held that Mr. Zuccarini’s conduct violates the Policy

and the Anticybersquatting Consumer Protection Act. By last count, Mr. Zuccarini

has lost more than thirty Policy decisions, including the following: NCRAS

Management, LP v. Cupcake City, WIPO Case

No. D2000-1803; Twentieth Century Fox Film Corp. v. Cupcake Confidential,

NAF Case No. FA96118; WebMD Corp. v. Cupcake Patrol, NAF Case No. FA96106;

At Home Corp. v. John Zuccarini, WIPO

Case No. D2000-1524; America Online, Inc. v. John Zuccarini, WIPO

Case No. D2000-1495; United Feature Syndicate v. John Zuccarini,

WIPO Case No. D2000-1449; Nicole Kidman

v. John Zuccarini, WIPO Case No. D2000-1415;

Microsoft Corp v. Cupcake Patrol, WIPO

Case No. D2000-1344; Minolta Co. v. Cupcake City, WIPO

Case No. D2000-1291; FAO Schwartz v. John Zuccarini, NAF Case

No. FA95828; Hewlett-Packard Co. v. Cupcake Patrol, NAF Case No. FA95822;

Victoria’s Secret v. John Zuccarini, NAF Case No. FA95762; Musicmatch,

Inc. v. Cupcake Patrol, NAF Case No. FA95733; American Airlines, Inc.

v. John Zuccarini, NAF Case No. FA95695; Gamesville.com, Inc. v. John

Zuccarini, NAF Case No. FA95294; Abercrombie & Fitch Stores, Inc.

v. John Zuccarini, WIPO Case No. D2000-1004;

Diageo plc v. John Zuccarini, WIPO

Case No. D2000-0996; Microsoft Corp. v. Cupcake City, WIPO

Case No. D2000-0818; Budget Rent a Car Corp. v. Cupcake City, WIPO

Case No. D2000-1020; Blackboard Inc. v. Cupcake Patrol, WIPO Case

No. D2000-0811; Yahoo! Inc. v. Cupcakes, WIPO

Case No. D2000-0777; Yahoo! Inc. v. Cupcake Patrol, WIPO

Case No. D2000-0928; Cabela’s Inc. v. Cupcake Patrol, NAF Case No.

FA95080; Cabela’s Inc. v. John Zuccarini, NAF Case No. FA95233; Dow

Jones & Co. v. John Zuccarini, WIPO

Case No. D2000-0578; Diageo plc v. John Zuccarini, WIPO

Case No. D2000-0541; Encyclopaedia Britannica, Inc. v. John Zuccarini,

WIPO Case No. D2000-0330; L.L. Bean,

Inc. v. Cupcake Patrol, NAF Case No. FA95105; Spiegel Catalog, Inc. v.

John Zuccarini, eResolution Case No. AF-0237a-d; James Squires v. John

Zuccarini, eResolution Case No. AF-0218. In addition, in two federal court

cases (which have generated five reported decisions), trademark owners have

been awarded injunctions and monetary judgments that total over $600,000.00.

See Electronics Boutique Holdings Corp. v. Zuccarini, 56 U.S.P.Q.2d 1705

(E.D. Pa. 2000), and further order in 2001 WL 83388 (E.D. Pa. Jan. 25, 1991);

Shields v. Zuccarini, 89 F. Supp. 2d 634 (E.D. Pa. 2000), and further

order in 2000 WL 1056400 (E.D. Pa. June 5, 2000), and further order in 2000

WL 1053884 (E.D. Pa. July 18, 2000).

It is evident that these

adverse decisions have had little or no impact on Mr. Zuccarini’s business model.

As the court noted in Shields, even after the entry of a preliminary

injunction against him, Mr. Zuccarini "registered hundreds of misspellings

of the names of celebrities . . . [and also] registered variations on [third

parties’ trademarks]. Clearly, he has not gotten the crystalline message in

[the court’s] March 22 opinion and June 5 order." Shields, 2000

WL 1053884 at *1. As of the filing of this complaint, Mr. Zuccarini still owns

a large number of domain names that are either identical or very similar to

trademarks or celebrities’ names. These include <usatodaysports.com>,

sportillistrated.com, <nikoncameras.com>, <playboy-mag.com>, <backstretboys.com>,

<jeneferlopez.com>, <elizabethhurly.com>, <michealjordan.com>,

and <brittnayspears.com>.

This state of affairs recently

prompted one WIPO panel to lament:

It is indeed unfortunate,

given the rampant, repetitive and pernicious conduct in which this particular

Respondent has engaged and the remaining cumulative cost to affected trademark

owners to ultimately remediate the remnants of that conduct, that the Panel

is unable to render a single global and economically-efficient decision that

rectifies this situation once and for all. The Panel, though clearly desirous

of doing so, simply does not have the requisite power to do so. Consequently,

remediation must be left to other complainants, as had occurred and will likely

so continue, collectively proceeding on a piecemeal basis against this Respondent

through other legal proceedings, whether in the courts or through administrative

bodies, to seek transfer of the particular domain name(s) of interest to them:

NCRAS Management, LP v. Cupcake City, WIPO

Case No. D2000-1803.

The Complainant’s complaint

in this proceeding is yet another in a long line of individual actions that

trademark holders have had to take against Mr. Zuccarini.

As described below, the

Respondent has registered and used the Disputed Domain Names in the same manner

as the domain names that were the subject of the Policy proceedings and federal

lawsuits discussed above. Accordingly, the result in this proceeding should

be the same, namely, the Respondents should be ordered to transfer the Disputed

Domain Names to Disney.

Respondents’ Unauthorized

Registration and Use of the Disputed Domain Names

Among the hundreds of domain

names registered by the Respondents are the seven Disputed Domain Names. All

of these incorporate the famous DISNEY mark and also contain other references

to Disney and its goods or services or slight misspellings of other marks within

the DISNEY family of marks, as follows:

a. <Disneychanel.com>

– a misspelling of DISNEY CHANNEL.

b. <Disneywallpaper.com>

– a reference to the fact that Internet users can download DISNEY wallpaper

for their computers at DISNEY.COM.

c. <Disneywold.com>

– a misspelling of DISNEY WORLD.

d. <Disneywolrd.com>

– another misspelling of DISNEY WORLD.

e. <Disneyword.com>

– another misspelling of DISNEY WORLD.

f. <Disneyworl.com>

– another misspelling of DISNEY WORLD.

g. <Walddisney.com>

– a misspelling of WALT DISNEY.

When Internet users mistakenly

enter <Disneywold.com>, <Disneywolrd.com>, <Disneyworl.com>,

<Disneyworl.com>, or <Walddisney.com> into their web browsers, at

least nine "pop up" windows appear. These "pop up" windows

contain third-party websites and advertisements for goods and services such

as music, games, credit approval, and casinos. After an Internet user closes

these windows, additional "pop up" windows appear, which contain more

third party advertisements or websites for MP3 downloads and lotteries. This

tactic of continuously opening new browser windows, even as an Internet user

tries to close them, is known as "mousetrapping." Disney is not affiliated

with, and has not given any permission to use its trademarks to, any of the

websites that appear in the "pop up" windows.

<Disneywallpaper.com>

directs Internet users to a black screen. <Disneychanel.com> directs to

an error message.

Disney has never licensed

or authorized the Respondents to register or use any of Disney’s marks.

The Disputed Domain Names

Are Confusingly Similar To the Complainant’s Marks

As described above, all

of the Disputed Domain Names fully incorporate the famous DISNEY mark. Most

of the names also either fully incorporate or contain slight misspellings of

other DISNEY-formative marks, including DISNEYCHANNEL, DISNEY.COM, WALT DISNEY,

and WALT DISNEY WORLD. Thus, there is no question that all of the Disputed Domain

Names are confusingly similar to the DISNEY mark and many of the names are also

confusingly similar to other DISNEY-formative marks. See, e.g., EAuto, L.L.C.

v. Triple S. Auto Parts, WIPO Case No.

D2000-0047 ("When a domain name incorporates, in its entirety, a distinctive

mark, that creates sufficient similarity between the mark and the domain name

to render it confusingly similar."); Yahoo! Inc. v. Cupcake Patrol,

WIPO Case No. D2000-0928 (finding that

Mr. Zuccarini’s domain names, all of which misspelled Yahoo!’s trademarks, were

confusingly similar "because Complainant’s famous trademark forms the nongeneric

part of each and every one of the disputed domain names").

The Respondents Have No

Rights Or Legitimate Interests In The Disputed Domain Names

The Respondents will not

be able to demonstrate that their conduct satisfies any of the conditions in

paragraph 4(c) of the Policy. Specifically, (i) the Respondents are not using

and have not demonstrated an intent to use the Disputed Domain Names or names

corresponding to the Disputed Domain Names in connection with a bona fide offering

of goods or services; (ii) the Respondents are not and have not been commonly

known by the Disputed Domain Names; and (iii) the Respondents are not making

a legitimate noncommercial or fair use of the Disputed Domain Names, without

intent to misleadingly divert consumers or to tarnish the Complainant’s marks

for commercial gain. To the contrary, the Respondents are using the Disputed

Domain Names to profit by deceiving consumers. What one WIPO panel noted in

a proceeding initiated by another famous trademark owner is equally true in

this proceeding: "[I]n the absence of any license or permission from the

Complainant to use any of its trademarks or to apply for or use any domain name

incorporating those trademarks, it is clear that no actual or contemplated bona

fide or legitimate use of the domain name could be claimed by Respondent":

Guerlain S.A. v. Peikang, WIPO Case

No. D2000-0055. Furthermore, Panels have found repeatedly that Mr. Zuccarini

had no rights or legitimate interests in domain names in similar contexts. As

one panel noted, "the sheer volume of arbitral and judicial opinions against"

Mr. Zuccarini is sufficient to establish a prima facie case that he does not

have rights or legitimate interests in confusingly similar domain names: Nicole

Kidman v. John Zuccarini, WIPO Case No.

D2000-1415.

The Respondents Registered

And Are Using The Disputed Domain Names In Bad Faith

As set forth below, the

Respondents’ bad faith is established under paragraphs 4(b)(ii) and 4(b)(iv)

of the Policy, as well as by the other circumstances surrounding the Respondents’

registration and use of the Disputed Domain Names.

Pursuant to paragraph 4(b)(ii)

of the Policy, the Respondents’ bad faith is established by their pattern of

conduct over several months in registering seven domain names containing the

DISNEY mark and DISNEY-formative marks. These registrations prevent the Complainant

from using its own mark in corresponding domain names. Numerous WIPO decisions

have held that the registration of multiple domain names containing a complainant’s

mark or marks is alone sufficient for a finding of bad faith. See, e.g., General

Electric Co. v. Normina Anstalt, WIPO

Case No. D2000-0452 ("The registration of several names corresponding

to Complainant’s trademarks is sufficient to constitute a pattern of such conduct,

and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of

the Policy."); The Price Co. v. Price Club, WIPO

Case No. D2000-0664 ("The selection of three domain names that are

virtually identical to complainant’s famous mark demonstrates that these were

abusive registrations contrary to the Policy."); Yahoo! Inc. v. Syrynx,

Inc., WIPO Case No. D2000-1675 (registration

of only two YAHOO!-formative domain names constituted a "pattern of conduct"

within the meaning of paragraph 4(b)(ii)). Moreover, the Respondents’ pattern

of registering domain names containing other well-known trademarks owned by

third parties, as discussed above, is strong evidence that the Respondents have

acted in bad faith pursuant to paragraph 4(b)(ii). See America Online v.

John Zuccarini, WIPO Case No. D2000-1495;

Diageo p.l.c. v. John Zuccarini, WIPO

Case No. D2000-0541.

The Respondents’ bad faith

also is established under paragraph 4(b)(iv) of the Policy. The Respondents

use misleading domain names to redirect to numerous third-party sites unwitting

Internet users who try to reach one of the Complainant’s websites. Some of these

websites compete with the Complainant in the offering of, for example, games

and music. This intentional effort to attract users to non-Disney websites for

commercial gain depends upon the Respondents’ creation of consumer confusion.

Paragraph 4(b)(iv) expressly recognizes this type of conduct as bad faith. Once

again, Mr. Zuccarini’s use of other trademark owners’ domain names in this very

manner has been described as "directly contravene[ing] paragraph 4(b)(iv)

of the Policy": NCRAS Management, LP v. Cupcake City, WIPO

Case No. D2000-1803.

The Respondents’ use of

the Disputed Domain Names is particularly harmful because it consists largely

of "typosquatting," i.e., registering and using slight misspellings

of the Complainant’s trademarks. After noting that "typosquatting"

is "a practice that has been condemned," one WIPO panel explained

why the registration and use of misspelled trademarks as domain names constitutes

bad faith:

"Respondent is trading

on the value established by Complainant in its marks to attract users who misspell

or mistype Complainant's mark when entering the URL, which includes Complainant's

domain name. Clearly, Respondent is deriving economic benefit from this practice,

either by attracting users to Respondent's website, where goods and services

are offered, or by the receipt of compensation from the owners of other websites

for delivering users to those sites. This constitutes bad faith registration

and use as defined by paragraph 4(b)(iv) of the Policy": Yahoo! Inc.

v. Data Art Corp., WIPO Case No. D2000-0587.

The same is true in this

case. For example, an Internet user who accidentally types <Disneywolrd.com>

into a web browser will not access the Complainant’s <disneyworld.com>

website, as the user had intended. Instead, the user will reach several unauthorized

commercial websites. The Respondents’ pattern of deliberately misleading users

plainly constitutes bad faith under the Policy.

Finally, the Respondents

have committed bad faith under the "catch all" provision of paragraph

4(b). Given the distinctiveness and fame of the DISNEY mark and DISNEY-formative

marks, there is no plausible explanation for the Respondents’ registration of

the Disputed Domain Names other than to trade upon the goodwill the Complainant

has developed in its marks. See Telstra Corp. v. Nuclear Marshmallows,

WIPO Case No. D2000-0003 (finding bad

faith where "[g]iven the Complainants numerous trademark registrations

for, and its wide reputation in, [Complainant’s mark], . . . it is

not possible to conceive of a plausible circumstance in which the Respondent

could legitimately use the domain name [at issue]."

B. Respondent

Preliminary

matter

The Respondent(s) are [sic]

no longer located at 957 Bristol Pike, Suite D-6, Analusia, Pennsylvania 19020.

Respondents have attempted to change its [sic] registration address to reflect

its [sic] current address. However, ICANN’s policy precludes Respondent Zuccarini

to change his registration address and does not permit a change of address while

proceedings have commenced.

Respondent [sic] submits

that this portion of ICANN’s policy is arbitrary and capricious where it fails

to recognize that the denial of the change of address of the Registrant of the

domain materially affects the jurisdiction and venue of any court action required

under WIPO’s Policy and pursuant to Paragraph 3(b)(xiii). In the instant case,

even though the Complainant is aware of the Respondent’s correct address it

still attempts to stipulate to a jurisdiction, which cannot be achieved.

The Administrative Panel

is requested to rule that the Jurisdiction and Venue of any cause challenging

a decision of this WIPO panel be subject to the Courts of Justice located in

Geneva, Switzerland.

STANDARD

OF REVIEW

This panel reviews the

Complaint to determine whether the following factors are proven:

1. the domain name is

identical or confusingly similar to a trademark or service mark in which the

Complainant has rights; and

2. the Respondent has

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

3. the domain name was

registered and is being used in bad faith.

The Respondent

submits that his conduct does not infringe on any of the Complainant’s marks,

since:

The

domain names are not identical or confusingly similar to the trademark, or service

mark(s).

It is well settled that

a domain name is simply an Internet Protocol (IP) address. In essence, a numerical

code that can alternatively be used with a name to reach the same place

on the Internet, See Thomas v Network Solutions, Inc., 176 F.3d 500,

503 (D.C. Cir. 1999). In the instant case, as in all cases of domain name misspellings,

Zuccarini purchased a particular numerical IP address that in no way can be

confused with any of the Complainant’s domain IP addresses.

In fact, recent Federal

Courts have determined that similarity of domain names cannot be construed as

confusing simply because a visitor may inadvertently visit the challenged Internet

site.

In a recent Court decision,

Interstellar Starship Services V. Epix Incorporated, 125 F.Supp.2d 1269,

2001 WL 10885 (D.Or. 2001), the Court found that "The fact

that some of defendant's potential customers go to <epix.com> by mistake

because they hazard a guess that defendant owns the site also does not demonstrate

actual confusion. Today's Internet user knows that search engines, such as "Hotbot,"

"Lycos," and "Google," provide a quick, free and reliable way to locate a business'

website when its exact Internet address in not known. Nevertheless, many

users will still try "[company name].com" before using a search engine because

there is little effort and no cost to anyone in making a guess."

In legislating trademark

infringement, Congress has determined that its legislation will not apply to

all commercial uses of a trademarked phrase in a domain name. Instead

of a simple showing of "visual similarity", a plaintiff must show

three elements, including: (1) a sufficiency of similarity of marks present

to place in the minds of consumers the mental association, (2) that causes,

(3) any actual harm to the senior mark’s economic value in identifying a given

product. This threshold allows for a domain to be partly composed of a trademark

phrase, yet no dilution of a trademarked phrase is caused by its use. For

instance, a trademarked term such as <hardrock.com> will not be diluted

by a domain entitled <therock.com>. No dilution has occurred here because

the law does not per se prohibit the use of a trademark or service owner’s mark.

Rather the law only prohibits uses that actually infringe or dilute a trademark

or service owner’s mark, see H.R. Rep. No. 104-374, at 4, reprinted

in 1995 U.S.C.C.A.N. 1029, 1031. Habro, at 133.

The Courts, in determining

whether there has been any confusion (of domain names), will take into account

whether the defendant’s use of the disputed mark has prevented another from

obtaining the services the plaintiff has to offer, or whether the plaintiff’s

reputation has been damaged in any way: I.P. Lund Trading v Kohler Co.,

163 F.3d 27, 36-27 (1st Cir. 1998). The Lund Court further

held that not just any similarity between two marks will be enough to justify

a finding of trademark infringement. There must be a showing of a substantial

likelihood of confusion: Id. at 43.

In Hasbro v Clue Computing,

Inc., 66 F.Supp 117 (D. Mass 1999), the Court ruled in favor of the

defendant after a thorough traditional trademark analysis. It found that the

marks of both parties were essentially the same. However, it focused on other

factors to render its judgment. It found that there was virtually no

similarity between the products that the parties offered. It found that those

who visited the website "were sophisticated enough to know the difference

between a game and a computer consulting service…. The court held "There

was no reasonable likelihood of confusion because any visitor who mistakenly

traveled to the site would instantly realize that he or she was in the wrong

site and would then use other methods to find the place he or she wished to

view……"

Here, the Complainant’s

argument that Zuccarini’s domain names are confusing is flawed. It fails to

note that Zuccarini’s domain name sites are bereft of any content reflecting

any similarity or visualization, which would mislead a visitor to the site into

believing it has anything at all to do with an association with Complainant’s

mark(s). For example, there is no title page describing the site’s name, no

content containing Disney, Walt Disney, Disney Enterprises, or any of their

products, advertisements, sponsorships, amusement centers or other products,

services or offerings. Instead, Zuccarini’s visitors are introduced to various

advertisements that have absolutely nothing to do with the Complainant’s business.

The Complainant’s

suggestion that Zuccarini’s domain name(s) dilute its mark(s) is flawed.

In a recent District Court

ACPA case, Hartog & Co. AS v. Swix.Com and Swix.Net, 2001

WL 300382 (E.D.Va.)), the Court found that "Dilution occurs

when a defendant's "junior mark," adopted after a plaintiff's mark became famous,

dilutes the famous mark either by "tarnishment" or by "blurring." Ringling

Bros. Barnum & Bailey Combined Shows. Inc. v. Utah Division of Travel Development,

955 F.Supp. 605, 613 (E.D.Va.1997), aff'd., 170 F.3d 449 (4th

Cir.1999). Dilution through blurring occurs where "consumers mistakenly associate

the famous mark with goods and services of the junior mark ." Ringling

Bros., 955 F.Supp. at 616. In order to establish blurring, a plaintiff

must prove that "(1) a defendant has made use of a junior mark sufficiently

similar to the famous mark to evoke in a relevant universe of consumers a mental

association of the two that (2) has caused (3) actual economic harm to the famous

mark's economic value by lessening its former selling power as an advertising

agent for its goods or services." Ringling Bros.-Barnum & Bailey Combined

Shows, Inc. v. Utah Division of Travel Development, 170 F.3d 449 (4th Cir.1999).

Plaintiff's "evidence" of blurring is limited, however, to an opinion by plaintiff's

employee witness that American outdoor or ski enthusiasts who use the Internet

and seek a site for plaintiff at <swix.com> may be frustrated when

they find SID's site instead, and look no further. This hypothesis is speculative

at best. And, even if it were proven true on occasion, which plaintiff has not

done, that would not establish actionable dilution under the Lanham Act where

two legitimate businesses use similar names in dissimilar ventures. The legislative

history of the ACPA demonstrates that Congress recognized and expected this.

See House Report No. 106-412, supra (comparing the potential customer for Delta

faucets who finds an airline's website at "Delta.com"). Because plaintiff has

failed to prove that the defendant domain names have lessened the capacity of

the SWIX mark to identify and distinguish plaintiff's ski wax, plaintiff

has not established dilution by blurring. Therefore, plaintiff is not entitled

to in rem relief on that basis under Paragraph 2 of the ACPA, even on a showing

of bad faith".

Therefore, it is clear

that in the instant case Zuccarini’s domain name(s) cannot be construed as identical

or confusingly similar to those of the Complainants nor can it be proven that

Zuccarini’s domain names dilute or tarnish the image of the Complainant’s mark.

ZUCCARINI HAS A LEGITIMATE

RIGHT PROTECTED BY FREE SPEECH, FREE ENTERPRISE AND PROPERTY INTEREST IN THE

SUBJECT DOMAIN NAMES.

Zuccarini purchased the

subject domain names through a legitimate registration process on the Internet

and Zuccarini has legitimate business interests in these domain name(s). While

misunderstood by most, Zuccarini’s business operation is in essence a proactive

search-engine portal for various advertising and freeware website sponsors.

Applied to this specific

case, Zuccarini receives no income or economic benefit whatsoever for

any web traffic visiting the subject domains and therefore does not cipher [scil.

siphon] any revenues from the Complainant. Instead, Zuccarini obtains legitimate

business revenues from the various advertisements offered on his domains only

after the visitor has decided to visit one of those websites, e.g. click-through.

No visitor is forced to click into one of the advertiser’s sites, to register

with or to purchase any product or service from these providers.

Zuccarini’s practice of

misspelling and typo squatting services the unique market on the internet where

a large number of "web surfers" specifically type misspelling of words

and phrases in order to search for unusual information, advertising and products.

Here, the Complainant has suggested that since Zuccarini has been the subject

of a number of complaints in the domain name dispute proceedings and in federal

court- he must not have a legitimate interest in the domains. However, the reverse

is true. The potential number of available domain names diminishes daily with

the active registration processes throughout the world. Mr. Zuccarini simply

participates in an active and thriving business on the internet of purchasing

unused and available Internet Protocol Addresses.The Respondents assert there

are many players on the Internet who engage in the same or similar business

as Zuccarini. In that regard, the Respondents assert that Zuccarini has been

targeted in a number of these cases simply because he has chosen to advocate

free expression on the Internet

In a recent circuit court,

Virtual Works, Inc. v. Volkswagen of America, Inc., 2001 WL 50988 (4th

Cir. 2001), the Fourth Circuit Court rejected a finding that typosquatting

was synonymous with Cybersquatting. In fact, in this case of first impression

before a United States Court of Appeals on the question relating to typosquatting,

that Court held, "The ACPA was not enacted to give companies the right

to fence off every possible combination of letters that bears any similarity

to a protected mark. Rather, it was enacted to prevent the expropriation of

protected marks in cyberspace and to abate the consumer confusion resulting

therefrom."

Furthermore, the Courts

have expressed concern of overbroad determinations of infringement since that

kind of interpretation will lead to monopolization of the use of terms, Hasbro

v Clue Computing, Inc., 66 F. Supp 2d 117 (D. Mass 1999).

ZUCCARINI

DOES NOT REGISTER THE DOMAINS IN BAD FAITH OR INTENT.

The Complainant is misled

in its suggestion that Zuccarini registered the domain names in bad faith simply

because he has been subject of a number of WIPO cases.

The mere listing of some

of the cases allegedly brought against Respondent is designed for no purpose

other than to prejudice the panel. No discussion of any of the facts in these

other cases is presented. No discussion of the ultimate disposition of these

other cases is provided. One is reminded of the Salem witch trials where if

someone was accused of being a witch frequently enough, the person was burned.

Accusation is not equivalent to proof. See, also Knight Ridder, Inc. v Zuccarini,

et al, FA0101000096551 (March 2001)("we agree with Respondent that, whatever

he may or may not have done in other cases is irrelevant to this case").

This same principle militates against and, Respondent suggests, successfully

confounds all of Complainant’s other vague, general and conclusory statements.

In Hartog

& Co. AS v. Swix.Com and Swix.Net , supra., the Court rejected

a bad faith intent argument where it found that "Through SID, Burgin runs

an Internet services business that is entirely different from

plaintiff's ski products business. Burgin never had any intent to divert

plaintiff's customers from plaintiff's own website, and plaintiff does not contend

that he did. Because Burgin's business is so different from plaintiff's,

the court has found no likelihood of confusion as to the source, sponsorship,

affiliation, or endorsement of either plaintiff's site or those operated by

SID."

The fact is that Respondent

Zuccarini’s domain name sites do not even depict a title page or html

page containing the domain’s name relating to Disney. Instead, a visitor

to any of the subject domains will be directed to Respondent Cupcake Party’s

site containing the advertising programs.

Additionally, the Respondent

does not sell music, product records, videos or any entertainment products pertaining

to or remotely similar to Disney. In fact, as cited in the Complaint, the Respondent

operates a business of registering generic terms on the Internet

for the purpose of providing click thru traffic to his customers. The Respondent

does not infer or mislead his visitors into believing that they have visited

the Disney site(s) or that he is in any way affiliated with Complainant.

More importantly and what

is consistent in the Respondent’s business activities is that he does not

offer or sell his domain names to anyone. A claim of Cybersquatting in

this case must, therefore, be rejected as a matter of law. See, Intermatic,

Inc. v. Toeppen, 947 F. Supp. 1227, 1233-34 (N.D. Ill. 1996). "

A cybersquatter is an individual

who attempts "to profit from the Internet by reserving and later reselling or

licensing domain names back to the companies that spent millions of dollars

developing the goodwill of the trademark."

Respondent(s) requests

that the panel reject this form of Reverse Domain Name Hijacking by the Complainant

and adopt Respondent’s contention that the Internet was formed and developed

as a free market enterprise with unlimited usage of generic terms and

urls in order to facilitate a free and open business marketplace. See, Rollerblade,

Inc. v. CBNO and Ray Redican Jr., WIPO

Case No. D2000-0427 (August 24, 2000) (finding that "genericness, if established,

will defeat a claim of trademark rights, even in a mark which is the subject

of an incontestable registration"); see also SOCCERPLEX, INC. v. NBA Inc.,

FA 94361 (Nat. Arb. Forum May 25, 2000) (finding that the Complainant failed

to show that it should be granted exclusive use of the domain name <soccerzone.com>,

as it contains two generic terms and is not exclusively associated with its

business). Here, the Respondent has persuasively shown that the domain name

is comprised of generic and/or descriptive terms, and, in any event, is not

exclusively associated with Complainant’s business.

AT LEAST

TWO OF THE DOMAIN NAMES ARE NOT "IN USE" AND THEREFORE DO NOT CONDUCT

ANY TRADE OR BUSINESS. IT IS WELL-SETTLED THAT AS A MATTER OF LAW THERE CAN

BE NO FINDING OF INFRINGEMENT, DILUTION, OR BAD FAITH WHERE THE DOMAINS ARE

NOT "IN USE".

The Complainant admits

that Respondent Zuccarini does not have any content on the domain names <Disneywallpaper.com>

and <Disneychanel.com>. A visit to those two domains reveal that visitors

are not directed anywhere and the domain sites are bereft of any content or

use.

A recent Court, OBH,

Inc. v. Spotlight Magazine, Inc., 86 F.Supp.2d 176, 185, 186 (D. WDNY 2000),

has held that " The Lanham Act defines the term "use in commerce" as, inter

alia, use of a trademark "on services when it is used or displayed in the sale

or advertising of services and the services are rendered in commerce, or the

services are rendered in more than one State or in the United States and a foreign

country and the person rendering the services is engaged in commerce in connection

with the services." 15 U.S.C. § 1127." There, the Court found the defendant’s

mark was "in use" since "First, defendants' use of plaintiffs'

trademark as the domain name for the Tortora website constitutes "use in commerce"

because that website contains a hyperlink that connects users to defendants'

other website, the online version of Apartment Spotlight Magazine, which they

operate for commercial purposes, i.e., advertising apartments for rent."

See also Northland Ins. Companies v. Blaylock, 115 F.Supp.2d 1108, *1123

(D. Minn. 2000)((On the basis of the present record, defendant's use is for

noncommercial commentary purposes. Defendant correctly contends that his use

is exempt because it constitutes noncommercial speech. Therefore, the court

finds that plaintiff is unlikely to prevail on the merits of the FTDA claim.

Since the Federal and State anti-dilution statutes are construed on similar

grounds, the court concludes for the same reasons that plaintiff's claim under

Minnesota state anti-dilution statute are also unlikely to succeed on the merits

at this preliminary stage. See Minn.Stat. § 333.285(c)(2)(1998) (providing that

noncommercial use is not actionable).)

Here, where there is absolutely

no content, hyperlinks at the IP address of the disneychanel or Disneywallpaper,

these subject sites are not in use and therefore cannot be found to violate

or cause trademark infringement or confusion.

THEREFORE, based on the

foregoing, Respondent respectfully requests that this Panel deny the Complaint

and grant any and all relief it deems appropriate and just.

6. Discussion and Findings

Preliminary matter

The Panel is not empowered

to make any ruling as to the jurisdiction in which its decision may properly

be challenged.

"Cyberflying"

Under of the Policy, which

forms part of the registration agreement, a registrant may not transfer a domain

name registration to another holder [par. 8(a)] or another registrar [paragraph

8(b)] during a pending proceeding under the Policy or for 15 business

days after its conclusion.

A complaint is initiated

by the trademark owner sending a properly constituted complaint to any Provider

approved by ICANN - Rule 3(a). A copy must already have been sent to the respondent

by the complainant– Rule 3(xii). The date of commencement of the proceeding

is the date on which the Provider completes its responsibilities in connection

with forwarding a copy of the complaint to the respondent (after checking all

the formalities, which can take several days) – Rule 4(c).

Thus a quick-witted respondent

might seek to escape the jurisdiction of the panel by transferring the domain

name to a new holder or to a new registrar after receipt of the copy of the

complaint but before the formal commencement of the proceeding. Both situations

arose in British Broadcasting Corporation v. Data Art Corporation / Stoneybrook

(WIPO Case D2000-0683) [<bbcnews.com>],

in which the panel said:

"To interpret section

8(a) of the Policy in such a way as to permit transfers of registration after

notice of the complaint to the respondent but before official commencement of

the proceedings by way of notification from the provider would not do justice

to complainants who have initiated complaints in accordance with the Policy

and the Rules. Moreover such an interpretation would appear to permit, if not

encourage the phenomenon cyberflying, where a registrant of a domain name, when

named as the respondent in a domain name dispute case, systematically transfers

the domain name to a different registrant to disrupt the proceeding".

In that case, the transferee

of the domain name was an associate of the respondent who had knowledge of the

complaint before the transfer took place. The panel held that neither the change

of registrant nor of registrar affected the proceedings. In the event, the new

registrar was directed to transfer the domain name <bbcnews.com> to the

BBC.

In this case, after receiving

the complaint, Mr. Zuccarini transferred three of the Disputed Domain Names

to a different registrar and into his own name. The panel finds these circumstances

identical to those in the BBC case and that neither the change of registrant

nor of registrar affects these proceedings.

Identity/confusing similarity

The Respondents do not

contest that the Complainant has rights in the trademark DISNEY and that it

is a famous mark worldwide.

The Respondents argue that

a domain name is an Internet Protocol ("IP") address. It is not. An

IP address is a series of four one-to-three digit numbers separated by periods

(footnote 1), e.g., 203.123.3.5. A domain name, by

contrast, is a textual (or conceivably graphical) construct, such as <zuccarini.com>,

which is translated by the domain name system (DNS) into a numerical IP address

(footnote 2). The Respondents did not purchase or obtain

IP addresses, they registered domain names. As textual constructs, domain names

that incorporate well-known trademarks can be readily confused with those marks.

Each of the Disputed Domain

Names incorporates the whole of the famous mark DISNEY. Six of the seven have

DISNEY at the beginning of the name. The other precedes the mark DISNEY with

the word WALD, a slight mis-spelling of the well-known abbreviation of the Complainant’s

founder’s first name WALT, as in the Complainant’s registered trademark WALT

DISNEY.

Of the six beginning with

the trademark DISNEY, four include slight mis-spellings of the word WORLD, a

generic word famously associated with the Complainant’s mark in the expression

WALT DISNEY WORLD, sometimes referred to simply as DISNEY WORLD. The fifth follows

the word DISNEY with the word CHANEL, a slight misspelling of the word CHANNEL,

as in the Complainant’s registered trademark DISNEY CHANNEL. The sixth follows

the trademark DISNEY with the generic word WALLPAPER. All seven, of course,

end in <.com>.

It has been decided in

many cases under the Policy that "essential" or "virtual"

identity is sufficient for the purposes of the Policy: see The Stanley Works

and Stanley Logistics, Inc v. Camp Creek. Co., Inc, (WIPO

case No. D2000-0113) and Nokia Corporation v. Nokiagirls.com (WIPO

case No. D2000-0102), holding disputed domain names confusingly similar

to the trademark of the complainant, despite the addition of generic words.

In Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S

Enterprises Ltd. (WIPO case No. D2000-0802)

the suffix ".com" was found not to detract from the overall impression

of the dominant part of the well known trademark TOYOTA, instantly recognizable

around the world.

For US cases see Sporty’s

Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 497-98 (2d Cir. 2000)

(the differences between the trademark "sporty’s" and the domain name

"sportys.com" – specifically, an apostrophe in the trademark and the

addition of <.com> in the domain name – are "inconsequential",

such that the domain name is "indistinguishable" from and "certainly

‘confusingly similar’ to the protected mark"); Brookfield Communications,

Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1055 (9th

Cir. 1999) (differences between the domain name <moviebuff.com> and the

mark "MovieBuff" are "inconsequential"). See also

Public Serv. Co. v. Nexus Energy Software, Inc., 36 F.Supp.2d 436

(D. Mass. 1999) (<energyplace.com> and "Energy Place" are

virtually identical); Minnesota Mining & Mfg. Co. v. Taylor, 21 F.Supp.2d

1003, 1005 (D.Minn. 1998) (<post-it.com> and "Post-It" are the

same); Interstellar Starship Services Ltd. v. EPIX, Inc., 983 F.Supp.

1331, 1335 (D.Or. 1997)(<epix.com> "is the same mark" as EPIX);

Planned Parenthood Federation of America, Inc. v. Bucci, No. 97-0629,

1997 WL 133313, at *8 (S.D.N.Y. Mar. 24, 1997) (<planned-parenthood.com>

and "Planned Parenthood" are essentially identical), aff’d, 152

F.3d 920 (2d Cir. 1998), cert. denied, 525 U.S. 834, 119 S.Ct. 90, 142

L.Ed.2d 71 (1998).

The test of confusing similarity

under the Policy, unlike trademark infringement or unfair competition cases,

is confined to a consideration of the Disputed Domain Name and the trademark:

AltaVista Company v. S.M.A., Inc., (WIPO

Case No. D2000-0927); Gateway, Inc. v. Pixelera.com, Inc. (formerly Gateway

Media Productions, Inc.) (WIPO Case No.

D2000-0109). See also General Mills, Inc. v. John Zuccarini (NAF

Case FA0104000097050 , May 30, 2001). In Microsoft Corporation v. Microsof.com

a.k.a. Tarek Ahmed (WIPO case No.

D2000-0548) contributing factors to the likelihood of confusion were held

to be the visual similarity between the domain name and the complainant’s mark

and the mark being strong and immediately recognizable.

Here the mark DISNEY is

indisputably strong and immediately recognizable around the world and the Panel

has no hesitation in finding that each of the Disputed Domain Names is confusingly

similar to the Complainant’s famous mark DISNEY. In addition, the domain name

<walddisney.com> is confusingly similar to the Complainant’s registered

trademark WALT DISNEY and the domain name <disneychanel.com> is confusingly

similar to the Complainant’s registered trademark DISNEY CHANNEL.

In seeking to respond to

the Complainant’s contention that the Disputed Domain Names are confusing, the

Respondents argue that Mr. Zuccarini’s domain name sites are bereft of

any content which would mislead visitors into believing the site has

anything to do with the Complainant’s marks [emphasis added]. In fact, some

of the sites (e.g. the music lyrics site, see web page copy in Ex. 8 to the

Complaint) are competitive with the Complainant's business. Be that as it may,

the Respondents’ argument is directed to the sites, rather than to the names.

It is the confusing similarity between the domain names and the trademarks which

enables the Respondents to exploit the inadvertent mistakes of Internet users.

Thus do the sites at the Disputed Domain Names attract visitors who falsely

believe they will find a site associated with the Complainant. Once there, it

may or may not be apparent that they are mistaken. But by then the mousetrap

has sprung and the Respondent’s purpose is achieved. It is therefore disingenuous

to assert in the Response that "Zuccarini’s visitors are introduced to

various advertisements that have absolutely nothing to do with the Complainant’s

business".

The Respondents concede

that Mr. Zuccarini has a "practice of misspelling and typo squatting"

directed at the large number of "web surfers" who "specifically

type misspelling of words and phrases". It is thus apparent that the Disputed

Domain Names were selected by Mr. Zuccarini because their value to him lies

in their confusing similarity to the Complainant’s famous mark.

Mr. Zuccarini has admitted,

under oath, both in deposition and trial testimony, as reported by the Court

in Joseph C. Shields, individually and t/a The Joe Cartoon Co., v. John Zuccarini,

individually and t/a Cupcake City, 89 F. Supp.2d 634, 639 (US

Dist. Ct. E.D. Pennsylvania 2000) that he registered variations of thousands

of domain names because they are confusingly similar to others' famous marks

or personal names -- and thus are likely misspellings of these names --

in an effort to divert Internet traffic to his sites. [emphasis added].

Although the domain name

<disneywallpaper.com> has no misspelling, it includes a generic word likely

to be typed by Internet users expecting, by so doing, to download the Complainant’s

"wallpaper" for their computers, as they can from the Complainant’s

website at <disney.com>.

The Complainant has established

this element.

Illegitimacy

Having argued in relation

to the issue of identity/confusing similarity that Mr. Zuccarini purchased "a

particular numerical IP address", the Respondents argue in relation to

the issue of legitimacy that Mr. Zuccarini purchased "the subject domain

names" through a legitimate registration process. That registration process

required the Respondents to agree, as a condition of registration, to be bound

by the Policy for the resolution of disputes such as the present. Accordingly,

the fact of registration is no evidence of legitimacy.

The Complainant has never

authorized the Respondents to utilize any of its marks, nor does the Complainant

have any relationship or association with the Respondents. Any use to which

the Respondents might put of any of the DISNEY marks, including in connection

with the services listed in the corresponding registrations, would violate the

Complainant’s trademark rights. The Respondents are not now and have never been

known by the mark DISNEY nor by any of the Disputed Domain Names.

The Respondents’ mousetrap,

automatically springs upon Internet users who gain access to five of the seven

Disputed Domain Names (footnote 3),

and from which there is virtually no escape without generating "click through"

revenue for the Respondents (footnote

4), depends for its success upon misleadingly attracting Internet users

to the Respondents’ sites for the Respondents’ commercial gain. This use of

these five Disputed Domain Names cannot constitute legitimate noncommercial

or fair use within paragraph 4(c)(iii) of the Policy.

With respect to the two

domain names <disneywallpaper.com> and <disneychanel.com>, which

the Response says are not being used, cases under the Policy have found absence

of rights or legitimate interests in domain names which have not been used.

In State Farm Mutual Automobile Insurance Company v. Rocky E. Faw (NAF

case FA94971) the respondent was found to have no legitimate interests in respect

of the domain name where he had not used nor developed the domain name for a

legitimate non-commercial or fair purpose and was not using the domain name

in connection with a bona fide offering of goods or services. See also Leland

Stanford Junior University v. Zedlar Transcription & Translation (NAF

case FA94970). The same considerations apply in this case and lead the Panel

to the same conclusion.

The Panel finds that the

Respondents have no rights or legitimate interests in any of the Disputed Domain

Names within paragraph 4(a)(ii) of the Policy.

Bad Faith

The Complainant contends

that the Respondents’ bad faith is established under paragraphs 4(b)(ii) and

4(b)(iv) of the Policy, citing in relation to 4(b)(ii) (inter alia) cases brought

against Mr. Zuccarini in which such a finding was made but in which he did not

file a response. The learned Panelists in those cases were, in the absence of

a response, entitled to accept the uncontradicted contentions of the Complainants:

Reuters Limited v. Global Net 2000, Inc. (WIPO

Case No. D2000-0441). See also Hewlett-Packard Company v. Full System

(Case FA 0094637); David G. Cook v. This Domain is For Sale (Case

FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge

(Case FA0094925).

The Response filed in this

case states that the Respondent [sic] operates "a business of registering

'generic' terms on the Internet for the purpose of providing click thru traffic

to his customers." Leaving aside for a moment the reference to generic

names, the Panel accepts that the Respondents’ purpose in registering domain

names which incorporate the well-known trademarks of others, including five

of the Disputed Domain Names, is to generate click-thru traffic revenue.

As to paragraph 4(b)(iv)

of the Policy, the Response states: "a visitor to any of the subject domains

will be directed to Respondent Cupcake Party’s site containing advertising programs".

The Panel is satisfied that the Respondents chose and have been using the Disputed

Domain Names (other than <disneychanel.com> and <walddisney.com>)

in an attempt intentionally to attract Internet users, for commercial gain,

to the Respondents’ Cupcake Party site, where they are introduced to various

advertisements, some of which have nothing to do with the Complainant’s business

and some of which promote music lyrics, very much a part of the Complainant’s

business.

To the extent to which

the Respondents’ site promotes music lyrics and other activities associated

with the Complainant, it would be likely to confuse Internet visitors as to

the source, sponsorship, affiliation or endorsement of the Respondent's website

and thus constitute evidence of bad faith registration and use within the scope

of paragraph 4(b)(iv) of the Policy.

To the extent to which

the Respondents’site does not promote activities, goods or services associated

with the Complainant, some Internet visitors may not be confused in this way,

since the Respondents’ business depends on trapping for commercial gain unsuspecting

and inadvertent visitors, the more astute of whom may realize immediately upon

their arrival at the Respondents’ site that they are not at their intended destination.

Less astute visitors however,

believing that they are about to visit a site associated with the Complainant,

may continue for some time in that belief even though the products and services

advertised to them are wholly different from those of the Complainant. In relation

to these visitors the Respondents’ conduct constitutes evidence of bad faith

registration and use within paragraph 4(b)(iv) of the Policy.

In any event, "the

fallacy in respondent’s contention is that while under traditional trademark

law the similarity or nonsimilarity of the products may be considered, this

is not a factor under the Policy": General Mills, Inc. v. John Zuccarini

(supra).

The Panel notes that the

circumstances specified in paragraph 4(b) of the Policy are not exhaustive.

It is open to a complainant to establish and for a Panel to find bad faith registration

and use within paragraph 4(a)(iii) in other circumstances. The Complainant has

contended that such findings should be made in this case.

As to registration, in

SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF case FA94956)

a finding of bad faith was made where the respondent "knew or should have

known" of the registration and use of the trademark prior to registering

the domain name. Likewise Marriott International, Inc. v. John Marriot

(NAF case FA94737); Canada Inc. v. Sandro Ursino (eResolution case AF-0211)

and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF case FA95037).

Here the Respondents undoubtedly

knew of the famous DISNEY mark before registering the Disputed Domain Names,

all of which wholly incorporate that mark. For this reason the Panel unhesitatingly

finds all the Disputed Domain Names were registered in bad faith, within the

meaning of paragraph 4(a)(iii) of the Policy.

As to use, the Complainant’s

DISNEY mark is not generic, as the Respondents appear to assert. It is highly

distinctive and unquestionably famous. It is the goodwill of the DISNEY mark

("the attractive force that brings in custom"

(footnote 5) which Mr. Zuccarini misappropriates when he attracts into his

mousetrap Internet users who, in relation to five of the seven Disputed Domain

Names, spell the mark correctly but inadvertently misspell words commonly associated

with it. The success of the Respondent's mousetrap is borne out by the Shields

case, in which the Court noted "[Mr. Zuccarini’s] click-based revenue now approaches

$ 1 million per year." Id at 639.

The Panel finds the Respondents

are using these five domain names in bad faith.

As to the remaining domain

names, <disneywallpaper.com> and <disneychanel.com>, the Respondents

say these are not in use. They submit that, for this reason, no finding of bad

faith can be made, citing OBH, Inc., v. Spotlight Magazine, INC.

86 F.Supp.2d 176, 185, 186 (D.WDNY 2000), which involved the expression "use

in commerce", defined in the Lanham Act as, inter alia, use of a trademark

"on services when it is used or displayed in the sale or advertising of

services and the services are rendered in commerce…". No such requirement

in relation to the concept of ‘use" is contained in the Policy.

In many cases under the

Policy, inaction (passive holding) has been found to be within the concept of

‘use’: Telstra Corporation Limited v. Nuclear Marshmallows, (WIPO

case No. D2000-0003); Barney’s, Inc. v. BNY Bulletin Board (WIPO

case No. D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (WIPO

case No. D2000-0400); Video Networks Limited v. Larry Joe King (WIPO

case No. D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company

(WIPO case No. D2000-0194); Revlon

Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (WIPO

case No. D2000-0468) and William Hill Organization Limited v.

Fulfillment Management Services Limited (WIPO

case No. D2000-0826).

Here the Panel takes into

account the nature of the Respondents’ business as described in the Response

and as found by the Panel; the absence of any explanation from the Respondents

as to why these domain names have not been used and the significant periods

of time during which they have remained inactive. The Panel finds both are being

used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

Thus the Panel finds that

all the Disputed Domain Names were registered and are being used in bad faith.

Reverse Domain Name Hijacking

Rule 1 defines reverse

domain name hijacking as "using the Policy in bad faith to attempt to deprive

a registered domain-name holder of a domain name." See also Rule

15(e). To prevail on such a claim, a Respondent must show that the Complainant

knew of the Respondent’s unassailable right or legitimate interest in the Disputed

Domain Name or the clear lack of bad faith registration and use, and nevertheless

brought the Complaint in bad faith. See, e.g., Sydney Opera House Trust v.

Trilynx Pty. Ltd., (WIPO Case No. D2000-1224)

and Goldline International, Inc. v. Gold Line (WIPO

Case No. D2000-1151).

The Complainant having

succeeded in establishing all the elements necessary to entitle it to relief

under the Policy, the Respondents’ assertion of Reverse Domain Name Hijacking

is rejected.

7. Decision

Pursuant to paragraphs

4(i) of the Policy and 15 of the Rules, the Panel directs that the following

domain names be transferred to the Complainant:

<disneychanel.com>

<disneywallpaper.com>

<disneywold.com>

<disneywolrd.com>

<disneyword.com>

<disneyworl.com>

<walddisney.com>

Alan L.

Limbury, Esq.,

Presiding Panelist

Peter L.

Michaelson, Esq.

Panelist

Gordon

Harris, Esq.

Panelist

Dated June

19, 2001

Footnotes:

1. Each separately addressable

device, whether it is a PC, server, printer, etc., attached to the Internet

is assigned a unique IP address. (back to text)

2.

Upon entering a URL into a browser, the browser locates a DNS server (through

a "DNS request" or similar message) and then queries the located DNS server

with a domain name. In response, the DNS server that has that domain name listed

in its translation tables returns the IP address associated with that domain

to the browser. The browser, in turn, issues a page download request to a device

assigned that IP address. (back to text)

3. (i.e. those other than

<disneywallpaper.com> and <disneychanel.com>) (back

to text)

4. Users thus

trapped could escape by the inconvenience of switching off the power to their

computers and rebooting. This is likely to be more inconvenient than clicking

through unwanted advertisements. (back to text)

5. per Lord

Macnaghten in Commissioners of Inland Revenue v Muller & Companies Margarine

Limited 1901 A.C. 217. (back to text)

More cases by this complainant

• Disney Enterprises, Inc. v. O.J.S. — DES2025-0013 · disneyland.es, disneyland.com · Transfer
• Disney Enterprises, INC. v. D.J. — DES2023-0033 · disneyworld.es · Transfer
• Disney Enterprises, Inc. v. Herry Johnson — DIO2022-0002 · versedisney.io · Transfer · 28 Mar 2022
• Disney Enterprises, Inc. v. D. Alfredo Juan Lopez-Sidro Gil — DES2015-0003 · tiendadisney.es · Transfer · 20 Apr 2015
• Disney Enterprises, Inc. — D2001-0250 · Terminated