The Sportsman's Guide, Inc. v. John Zuccarini

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Sportsman's Guide, Inc. v. John Zuccarini

Case No. D2001-0617

1. The Parties

The Complainant in this administrative proceeding is The Sportsman's Guide,

Inc., a corporation organized under the laws of the State of Minnesota, U.S.A.

The Respondent is John Zuccarini. According to the Whois database, Mr. Zuccarini's

address is 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania, U.S.A. However,

in his Response, Mr. Zuccarini indicates that he may now be contacted c/o Music

Wave Investments Ltd., Saffrey Square, Suite 106, P.O. Box N-4140, Nassau N.P.,

Bahamas.(Footnote 1)

2. The Domain Name and Registrar

The domain name in dispute is as follows: <sportmansguide.com>. The domain

name was registered by Respondent with Core Internet Council of Registrars,

Geneva, Switzerland, on December 7, 1999.

3. Procedural Background

On April 30, 2001, the WIPO Arbitration and Mediation Center received from

Complainant via e-mail a complaint for decision in accordance with the Uniform

Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation

of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"),

the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN

on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain

Name Dispute Resolution Policy (Supplemental Rules).

The Complaint was filed in compliance with the requirements of the Rules and

the Supplemental Rules, payment was properly made, the administrative panel

was properly constituted, and the panelist submitted the required Statement

of Acceptance and Declaration of Impartiality and Independence.

The instant Administrative Proceeding was commenced on May 16, 2001.

Respondent failed to submit a Response within the twenty-day period provided

for in the Rules, i.e., by June 4, 2001, and a "Notification of Respondent Default,"

dated June 11, 2001, was forwarded by WIPO to Respondent.

The decision of the Panel originally was due on or before July 4, 2001.

However, in an e-mail dated May 16, 2001, Respondent notified WIPO that he

had not received a copy of the Complaint with the electronic transmission notifying

him of the filing of such Complaint and the commencement of the administrative

proceeding. In view thereof, the Panel, on June 28, 2001, issued an Administrative

Order granting Respondent fifteen (15) days from the date of the order within

which to submit his Response. The due date of the decision of the Panel was

later re-set to July 19, 2001. A Response was received by WIPO via e-mail on

July 16, 2001, and such Response has been fully considered by the Panel in reaching

its decision in this matter.(Footnote

2)

4. Factual Background

Complainant has operated under the trade name THE SPORTSMAN'S GUIDE for over

twenty (20) years and has used THE SPORTSMAN'S GUIDE as a service mark in connection

with mail order catalog sales since at least as early as 1977, and in connection

with on-line retail sales services since at least as early as 1998. Complainant

currently serves over one million customers throughout the world.

Complainant owns three (3) U.S. trademark registrations and one Canadian registration

covering its mark THE SPORTSMAN'S GUIDE. See Complaint, Annex 4.

According to the Complaint, Complainant also uses the marks SPORTMAN'S GUIDE

and www.sportsmansguide.com in connection with the advertising of its services.

See Complaint, Annex 5.

As noted above, Respondent registered the domain name in dispute on December 7, 1999.

On March 2, 2001, attorneys for Complainant contacted Respondent demanding that

he surrender the domain name to Complainant. See Complaint, Annex 6. In an e-mail

dated March 2, 2001, Respondent declined to surrender the domain name. See Complaint,

Annex 6.

5. Parties' Contentions

Complainant contends that the domain name sportmansguide.com is confusingly

similar to its registered mark THE SPORTSMAN GUIDE and to its unregistered marks

SPORTSMAN'S GUIDE and www.sportsmansguide.com since the domain name consists

of nothing more than a slight misspelling of the primary words of Complainant's

registered mark.

Complainant further argues that Respondent has no rights or legitimate interest

in respect of the disputed domain name. It notes that Complainant has never

assigned, sold or transferred any rights in any of its marks to Respondent,

nor licensed its marks to Respondent, nor granted Respondent permission to use

its marks.

According to Complainant, individuals who type www.sportmansguide.com into

a web browser are trapped and locked into a maze of automatic hyperlinks to

numerous other web pages and such practice has been recognized by other Panels

as showing a lack of right or interest in the domain name.

Complainant further contends that Respondent is not commonly known by the disputed

domain name and is not making a legitimate noncommercial or fair use of the

name.

With respect to the issue of "bad faith" registration and use, Complainant

maintains that evidence of bad faith can be found from Respondent's use of a

domain name confusingly similar to Complainant's marks and from Respondent's

pattern of conduct under which he registers slight misspellings of famous marks

in order to attract Internet users to his web sites for his own commercial gain.

According to Complainant, Respondent's web sites do not even make a pretext

of showing any legitimate reason for use of the disputed domain name. The name

does not appear on any of the web pages which are automatically opened when

the site is accessed, nor does there appear to be a viewable web page at that

address. Complainant alleges that Respondent has registered in excess of 1300

domain names that fit this pattern.

Complainant refers the Panel to the federal district court decision in Shields

v. Zuccarini, 54 USPQ2d 1166 (E.D. Pa. 2000), in which it is noted that

Mr. Zuccarini admitted that he registered domain names consisting of likely

misspellings of famous marks in an effort to divert Internet traffic to his

sites. According to Complainant, other Panels have routinely condemned such

action. See, e.g., Abercrombie & Fitch Stores, Inc. v. John Zuccarini,

Case No. D2000-1004 (WIPO, Nov. 1, 2000)

(stating that misdirection of web traffic to Respondent's other web sites is

evidence of bad faith); Dow Jones & Co. v. John Zuccarini, Case

No. D2000-0578 (WIPO, Aug. 28, 2000) (finding that the Respondent had acted

in bad faith by taking advantage of tendency of Internet users to misspell,

and attracting such users to his web site for personal profit); Victoria's

Secret v. John Zuccarini, Claim No. FA 0010000095762 (Nat. Arb. Forum, Nov.

18, 2000) (finding that Respondent had acted in bad faith by linking an infringing

domain name to series of advertising pages from which Respondent profited).

In his Response, Respondent argues that the disputed domain name is not confusingly

similar to Complainant's marks since "at no time have any of the contents on

the <sportmansguide.com> website referred to, provided links to, or highlighted

anything that relates to sports." Respondent further contends that the domain

name in issue does not dilute Complainant's marks.

Mr. Zuccarini further urges that he has a legitimate right protected by free

speech, free enterprise and a property interest in the disputed domain name.

According to the Response, Respondent receives no income or economic benefit

whatsoever for any web traffic visiting the disputed domain name and, therefore,

does not cipher any revenue from Complainant. Respondent also contends that

his "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." Respondent refers to the recent decision of the U.S. Court of

Appeals for the Fourth Circuit in Virtual Works, Inc. v. Volkswagen of America,

238 F.3d 264 (4th Cir. 2001), wherein the court states that the Anticybersquatting

Consumer Protection Act "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."

Mr. Zuccarini also maintains that he did not register the domain name in bad

faith. In support of this proposition, he argues that: (1) he does not infer

or mislead visitors into believing that they have visited the sportsmansguide.com

site or that he is in any way affiliated with Complainant; (2) he does not offer

or sell his domain names; and (3) the disputed domain name is comprised of generic

and/or descriptive terms and, in any event, is not exclusively associated with

Complainant's business.

6. Discussion and Findings

The Panel has carefully reviewed the evidence presented and determines that

Complainant clearly has met all the requirements set forth in ¶4.a. of the Policy.

First, there is no question that the domain name in dispute is confusingly

similar to Complainant's THE SPORTSMAN'S GUIDE mark. As Complainant points out,

the domain name differs from THE SPORTSMAN'S GUIDE mark only in that the word

THE has been omitted, the central letter "S" in the word SPORTSMAN'S has been

dropped, and the apostrophe in the word SPORTSMAN'S and space between SPORTSMAN'S

and GUIDE have been eliminated. None of these changes, from the standpoint of

a confusing similarity analysis, is significant.(Footnote

3) In its recent decision affirming the district court's decision in Shields,

the U.S. Court of Appeals for the Third Circuit determined that "a reasonable

interpretation of conduct covered under the phrase 'confusingly similar' [,

as used in the Anticybersquatting Consumer Protection Act,] is the intentional

registration of domain names that are misspellings of distinctive or famous

names, causing an Internet user who makes a slight misspelling or typing error

to reach an unintended site." Sheilds v. Zuccarini, 2001 U.S. App. LEXIS

13288, June 15, 2001.

The Fourth Circuit's decision in the Virtual Works case, cited by Respondent

in his Response, does not support a contrary determination on the issue of confusing

similarity. Indeed, in that case, the appeals court upheld a lower court finding

that Virtual Works had to relinquish rights in the domain name vw.net.

Equally unavailing is Respondent's contention that there is no confusing similarity

because his web site has nothing to do with sports. The Panel emphasizes that

a determination of confusingly similarity under the relevant Policy is based

solely on a comparison of the disputed domain name and Complainant's mark(s).

A comparison of the parties' respective goods and/or services is not relevant

to the issue of confusing similarity under the Uniform Dispute Resolution Policy

(UDRP). An administrative proceeding under the UDRP is not decided on the same

basis as a trademark infringement suit.(Footnote

4)

It is also clear that Complainant, through its extensive use of THE SPORTSMAN'S

GUIDE and SPORTSMAN'S GUIDE marks and registrations covering THE SPORTSMAN'S

GUIDE mark, has rights in the marks.

The Panel further determines that Respondent has no rights or legitimate interests

with respect to the domain name. The Panel finds no evidence that Respondent

is using the disputed domain name in connection with a bona fide offering of

goods or services, is commonly known by the disputed domain name, or is making

a legitimate noncommercial or fair use of the domain name. The Panel refers

to the decisions of other Panels which have determined that Respondent's practice

of registering domain names confusingly similar to the marks of others for the

purpose of redirecting Internet users to sites unrelated to those maintained

by the marks' owners for purpose of commercial gain (Footnote

5) does not establish rights or legitimate interests in the domain name.

See, e.g., America On-Line, Inc. v. John Zuccarini, Case

No. D2000-1495 (WIPO Jan. 22, 2001) (deciding that use of confusingly

similar domain name to redirect users to sites unrelated to Complainant did

not establish any rights or legitimate interests in domain name); Gamesville.com,

Inc. v. John Zuccarini, Claim No. FA 0007000095294 (Nat. Arb. Forum, Aug.

30, 2000) (stating that use of domain names "to trap Internet users in advertising

pop-up windows is not bona fide offering of goods or services nor legitimate

noncommercial use of domain names); Cabela's Incorporated v. John Zuccarini,

Claim No. FA 0007000095233 (Nat. Arb. Forum, Aug. 28, 2000) (concluding that

use of domain name to expose Internet users to advertising on number of pop-up

windows is not use of domain name in connection with bona fide offering of goods

or services).

Finally, there is ample evidence of "bad faith" registration and use. The evidence

supports a determination that Respondent has engaged in a pattern of registering

domain names that correspond to the marks of others and that such conduct occurred

in this case, within the meaning of ¶4.b. (ii) of the Policy. It is also clear

that Respondent has intentionally attempted to attract, for commercial gain,

Internet users to its web site or other on-line locations, by creating a likelihood

of confusion with Complainant's mark as to the source, sponsorship, affiliation,

or endorsement of his web site, within the meaning of ¶4.b. (iv) of the Policy.

Consistent with the panel decisions cited above, this Panel further concludes

that Respondent's registration of a domain name consisting of a slight misspelling

of Complainant's mark in an effort to redirect traffic to other sites, for purposes

of commercial gain, itself, constitutes evidence of "bad faith." As noted by

the district court in Shields, "[Zuccarini] has registered obvious misspellings

of celebrities' names, such as <gwenythpaltrow.com>, <rikymartin.com>,

and <britineyspears.com>. He also has registered variations on popular

product and website names, like <sportillustrated.com>, <mountianbikes.com,

and <msnchatrooms.com>. This conduct is compelling evidence of bad faith."

Shields, at 1171.

7. Decision

In view of the above, the Panel grants Complainant's request for transfer to

it of the domain name <sportmansguide.com>.

Jeffrey M. Samuels

Sole Panelist

Dated: July 19, 2001

Footnotes:

1. In his Response, Respondent requests the Panel to rule that the jurisdiction

and venue of any cause of action challenging a decision of this Panel be subject

to the Courts of Justice located in Geneva, Switzerland, presumably because

the principal office of the Registrar in this case is in Geneva. The Panel declines

such request. The relevant rules require the Complainant to submit, with respect

to any challenge to the proceeding, to the jurisdiction of the courts in at

least one specified "Mutual Jurisdiction." The term "Mutual Jurisdiction" is

defined in the rules as a court jurisdiction at the location of either the principal

office of the Registrar or the domain-name holder's address as shown

for the registration of the domain name in the Whois database at the time the

complaint is submitted to the dispute-resolution service provider. The "Mutual

Jurisdiction" statement set forth in the Complaint is consistent with the relevant

rules. In such statement, Complainant agrees to submit to the jurisdiction of

the U.S. District Court for the Eastern District of Pennsylvania, where, according

to the Whois database, Respondent was located at the time of submission of the

Complaint.(back to text)

2. In his Response, Mr. Zuccarini requests the Panel to grant the late filing

of his Response in order to provide adequate due process. In view of the circumstances

outlined above, the Panel grants this request. (back to text)

3. The Panel further concludes that the disputed domain name is also confusingly

similar to Complainant's unregistered mark SPORTSMAN'S GUIDE. (back

to text)

4. The same holds true with respect to a claim for dilution. Thus, Respondent's

arguments directed at this issue are also irrelevant. (back to

text)

5. The Panel notes that the federal district court in the Shields case

indicated that Respondent's click-based revenue now approaches $1 million per

year. (back to text)

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