Backstreet Productions, Inc. v. John Zuccarini

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Backstreet Productions, Inc. v. John Zuccarini, CupcakeParty, Cupcake Real Video, Cupcake-Show and Cupcakes-First Patrol

Case No. D2001-0654

1. The Parties

The Complainant is Backstreet Productions, Inc., a Delaware corporation with its principal place of business at 15250 Ventura Blvd., Sherman Oaks, California 91403, USA. Complainant is represented by Keats McFarland & Wilson LLP, Beverly Hills, California, USA.

The Respondent is Mr. John Zuccarini, d/b/a CupcakeParty, Cupcake Real Video, Cupcake-Show, and Cupcakes-First Patrol, 957 Bristol Pike, Suite D-6, Analusia, Pennsylvania 19020, USA. Respondent is represented by the Law Office of Christopher A. Grillo, Fort Lauderdale, Florida 33304, USA.

2. The Domain Names and Registrar

The domain names in dispute are <backstreeboys.com>, <backsreetboys.com>, <backstreetboyspics.com>, <backstreetboyspictures.com>, <bakstreetboys.com>, <backstretboys.com>, <bacstreetboys.com>, <backtreetboys.com>, <backstreetsboys.com>, <backsteetboys.com>, and <backstreetboyz.com>.

The registrar of <backstreeboys.com>, <backsreetboys.com>, <backstreetboyspics.com>, <backstreetboyspictures.com>, <bakstreetboys.com>, <backstretboys.com>, <bacstreetboys.com>, and <backtreetboys.com> is Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170.

The registrar of <backstreetsboys.com>, <backsteetboys.com>, and <backstreetboyz.com> is Core Internet Council of Registrars (CORE), WTC II, 29 route de Pre-Bois, CH-1215, Geneva, Switzerland 1215, CH.

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Policy for Domain

Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet

Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and

the World Intellectual Property Organization Arbitration and Mediation Center’s

Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the

Supplemental Rules).

The Center received the Backstreet Boys’ complaint in hardcopy on April 23,

2001, and electronically on May 16, 2001. The Complainant requested a three-member

panel. The Respondent, who received a service copy of the Complaint from the

Complainant, filed a Response before the formal commencement of the proceeding.

The Center received the hardcopy of the response on May 10, 2001.

Meanwhile, on May 16, 2001, the Center sent domain name Registrar Verification

requests to Core Internet Council of Registrars (CORE) and Network Solutions,

Inc. (NSI). CORE confirmed that it is the registrar of the specified domain

names on May 21, 2001 and NSI confirmed itself as the registrar of the

remaining domain names on June 1, 2001.

On June 6, 2001, the Center notified the parties of the receipt of Registrar

Verifications via email and facsimile. In light of the receipt by the Center

of the Response, the Center asked the Respondent whether it wished to dispense

with the 20-day response time in order to proceed immediately to the appointment

of the three-member panel. The Center noted that the Complainant, as a result

of requesting a three-member panel, must bear all costs for the panel. The Center

returned the $2,000 check it had received from the Respondent.

The Respondent did not respond to the Center’s proposal. Accordingly, on June 13, 2001,

the Center formally commenced the proceedings and set July 2 as the deadline

for a final Response. The Center also requested that the Respondent submit the

Response via email pursuant to Rule 5(b).

On July 3, 2001, having received no further response or communication from

the Respondent, the Center transmitted an Acknowledgement of Receipt of Response

and again requested the required electronic version of the Response. The Respondent

never complied with this request.

On August 6, 2001, the Center advised the parties of the appointment of Gordon

David Harris and Dennis Arthur Foster as panelists, and David H. Bernstein as

presiding panelist. The Center also advised the parties that the due date for

this decision is August 20, 2001.

4. Jurisdictional Issues

Before turning to the merits, the Panel must first address two jurisdictional

issues. First, ICANN Rule 3(b)(xiii) requires the Complainant

to submit to the jurisdiction of the courts in at least one specified "Mutual

Jurisdiction." The Rules define Mutual Jurisdiction as "a court jurisdiction

at the location of either (a) the principal office of the Registrar (provided

the domain-name holder has submitted in its Registration Agreement to that jurisdiction

for court adjudication of disputes concerning or arising from the use of the

domain name) or (b) the domain-name holder's address as shown for the registration

of the domain name in Registrar's Whois database at the time the complaint

is submitted to the Provider." (emphasis added).

The Respondent claims that his business is no longer located in Pennsylvania.

He lists his current contact information as Music Wave Investments Ltd., Saffrey

Square, Suite 106, P.O. Box N-4140, Nassau N.P., Bahamas. Respondent states

that he wishes to change his address, which would have an effect in the event

of any post-decision litigation, but that ICANN does not permit a change of

address during arbitration proceedings. This policy, Respondent claims, is arbitrary

and capricious because it fails to recognize that the Registrant’s current address

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

to Rule 3(b)(xiii). Although the Panel has considered Respondent’s concerns,

it denies the request that the Panel order a change of address. Nothing in the

Policy or Rules gives a panel the authority to make such a change; moreover,

Respondent was free to change its address at any time prior to the filing of

the Complaint. Accordingly, the address listed at the time the Provider received

the Complaint remains the jurisdictional reference. The Panel concludes that

jurisdiction is proper.

Second, although the Respondent(s) did not object, the Panel notes that Complainant

has named five separate parties as Respondents: John Zuccarini (<backstreetsboys.com>,

<backsteetboys.com>, and <backstreetboyz.com>), CupcakeParty (<backstreetboyspics.com>

and <backstreetboyspictures.com>), Cupcake Real Video (<bakstreetboys.com>),

Cupcake-Show (backsreetboys.com>, <backstretboys.com>, <bacstreetboys.com>,

and <backtreetboys.com>), and Cupcakes-First Patrol (<backstreeboys.com>).

Neither the Policy nor the Rules provide for the naming of multiple respondents.

A panel has jurisdiction only over parties that have agreed to be subject to

its proceedings, such as registrants of gTLDs who have so agreed through their

registration agreements. Plaza Operating Partners, Ltd. v. Pop Data Techs.,

Inc. and Joseph Pillus, WIPO Case No.

D2000-0166 (June 1, 2000).

Although these domain names are, technically, owned by different registrants,

it is clear that all are alter egos of Mr. Zuccarini, who is personally listed

in the Registrar Verifications for each of these domain names. Moreover, the

document submitted by Respondent’s counsel identifies Mr. Zuccarini, personally,

as the Respondent with respect to all of these domain names. Therefore, the

Panel concludes that it is appropriate to consolidate the claims against these

multiple Respondents in this single action. See Rule 10(e) ("A Panel shall

decide a request by a Party to consolidate multiple domain name disputes in

accordance with the Policy and these Rules.").

5. Response Deficiencies

Rule 5(b)(viii) requires that the Response conclude with the following statement,

followed by the signature of the Respondent or its authorized representative:

"Respondent certifies that the information contained in this Response is to

the best of Respondent's knowledge complete and accurate, that this Response

is not being presented for any improper purpose, such as to harass, and that

the assertions in this Response are warranted under these Rules and under applicable

law, as it now exists or as it may be extended by a good-faith and reasonable

argument." The Respondent’s document lacked both the required certification

and any signature by Respondent or his counsel. These deficiencies, which cannot

be waived by the Panel, Talk City, Inc. v. Robertson, WIPO

Case No. D2000-0009 (February 29, 2000) (stating that lack of certification

renders an answer insufficient), preclude the Panel’s acceptance of any factual

assertions set forth in the Response.

In addition, despite the requirement for electronic submission and the Center’s

repeated requests, the Respondent failed to supply an electronic copy of the

Response. See Rule 5(b) ("The response shall be submitted in hard

copy and (except to the extent not available for annexes) in electronic form…").

Normally, the failure to sign or certify the Response would cause the Panel

to disregard the Response. Here, Respondent may have been lulled into a false

sense of security because the Center did formally acknowledge receipt of the

Response. In these circumstances, one option would be to give the Respondent

an opportunity to cure the deficiencies by refiling its Response with the necessary

signatures, certification, and electronic copy. In this case, because none of

the facts alleged in the Response would affect the result of this dispute, the

Panel, in the interests of expediency, has elected to proceed directly to its

decision.

6. Factual Background

Complainant is a Delaware corporation which provides all of the commercial

activities for the musical group the Backstreet Boys. The Backstreet Boys are

well-known pop singers. Complainant owns United States Trademark Registration

No. 2,241,482 for the Backstreet Boys mark, which evidences the Backstreet Boys’

exclusive use of the Backstreet Boys mark in International Classes 9 (for pre-recorded

compact disks, audio cassettes and video cassettes featuring music); International

Class 14 (jewelry, namely, dog tags); International Class 16 (paper goods/printed

matter, namely, posters, bookcovers, postcards, unmounted photographs); International

Class 18 (leather goods, namely, backpacks and fanny packs); International Class

25 (clothing, namely, hats, T-shirts and jackets); and International Class 41

(entertainment in the nature of live performances by a musical group). Complainant

applied for the trademark registration on May 19, 1997, claiming first use as

early as February 1993 for the Class 9 goods. The mark was registered on April

27, 1999.

The Backstreet Boys have licensed a wide range of products bearing their trademark,

including stationery, calendars, posters, watches, board and card games, backpacks,

musical products, journals, magnets, stickers, framed pictures, live concert

photos, puzzles, t-shirts, Christmas ornaments, trading cards, temporary tattoos,

caps, jackets, jewelry, and key chains. These licensed items are projected to

result in over twenty million dollars in revenue.

The Backstreet Boys operate a website at "http://www.backstreetboys.com", which

features news about the Backstreet Boys, including information regarding future

single and video releases, tour dates, photos, and video clips. The website

also contains various licensed merchandise available for purchase.

Respondent has never been licensed by Complainant to use the Backstreet Boys

trademark. In June and August 1999, Respondent registered the domain names <backstreeboys.com>,

<backsreetboys.com>, <backstreetboyspics.com>, <backstreetboyspictures.com>,

<bakstreetboys.com>, <backstretboys.com>, <bacstreetboys.com>,

and <backtreetboys.com> with NSI. In November and December 1999, Respondent

registered the domain names <backstreetsboys.com>, <backsteetboys.com>,

and <backstreetboyz.com> with CORE.

Respondent does not offer any goods or services through the websites he established

with these domain names. Rather, upon entering Respondent’s sites, Internet

users are diverted to a number of windows displaying advertisements, and must

click on each of the windows before exiting.

7. Parties’ Contentions

A. Complaint

Complainant asserts that the Backstreet Boys have common law and statutory

trademark rights in the Backstreet Boys trademark based on their celebrity status

and success as well as the registered trademark. Complainant avers that Respondent

has no rights or legitimate interests in the Backstreet Boys trademark or the

infringing domain names. Furthermore, the Complainant alleges bad faith on the

part of Respondent based on the fact the Respondent registered and used the

infringing domain names well after the Backstreet Boys’ success in regard to

the trademark.

Complainant cites numerous cases in which ICANN panels and United States federal

courts have found that the Respondent engaged in bad faith cybersquatting. Complainant

notes that the Respondent profits from the registration of numerous variations

of trademarks and celebrity names as domain names and uses them to divert traffic

to Respondent’s commercial advertisements. Turning one’s browser to these sites

causes "pop-up" advertisements for a variety of commercial enterprises

to appear.

Complainant avers that Internet users may mistakenly enter web sites located

at Respondent’s domain names instead of authorized Backstreet Boys websites

and may be misled into believing that Complainant sponsors or endorses these

advertisers. Finally, Complainant claims that Respondent operates a scheme for

profit by means of consumer confusion with the Backstreet Boys in violation

of Complainant’s trademark rights.

In accordance with Paragraph 4(b)(i) of the Policy, the Complainant requests

that the Panel transfer the domain names at issue to the Complainant.

B. Respondent

Respondent claims that the Complainant has failed to demonstrate trademark

rights to all terms and forms of back, street, and boys on the Internet. The

Respondent also claims that Complainant does not have "monopolistic"

rights to all variations of the generic terms "back", "street",

and "boys" over the internet. The Respondent claims that his web address

can "in no way" be confused with any of the Complainant’s domain addresses.

Respondent further argues that the law only prohibits uses that actually dilute

or infringe a trademark, and that courts consider whether the defendant’s use

has damaged the plaintiff’s reputation or prevented another from obtaining plaintiff’s

services.

Respondent argues that he has a legitimate right, protected by free speech,

free enterprise, and property interest, in the domain names. Respondent claims

that he obtained the domain names through legal means for a legitimate business

interest. Respondent argues that his "practice of misspellings 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 claims that he did not register the domain names in bad faith. Respondent

argues that Complainant’s listing of previous cases involving Respondent is

prejudicial and does not qualify as evidence of bad faith. Respondent claims

that he does not sell music, videos, or products pertaining to or remotely similar

to the Backstreet Boys. Respondent claims that he simply operates a business

of registering generic terms for the purpose of providing links to advertisers

with no intent to divert Internet users from Complainant’s website. Respondent

also notes that he made no offer to sell his domain names to anyone.

Respondent requests that the Panel deny the relief sought by Complainant and

grant any and all relief the Panel deems appropriate and just.

8. Discussion and Findings

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i) That the domain name registered by the Respondent is identical or confusingly

similar to a trademark or service mark in which the Complainant has rights;

and

(ii) That the Respondent has no rights or legitimate interests in respect of

the domain name; and

(iii) That the domain name has been registered and used in bad faith.

A. The Domain Names Are Confusingly Similar to the Complainant’s Mark

Ownership of a trademark registration is prima facie evidence of the

validity of the trademark. See Miller v. Zuccarini, WIPO

Case No. D2001-0064 (April 25, 2001) §5b; see also Minolta Co., Ltd.

v. Cupcake City, WIPO Case No. D2000-1291

(Jan. 18, 2001) §6. Even had this Panel considered the Respondent’s

arguments, they fail to rebut the Complainant’s claims. Respondent argues that

the terms "back," "street," and "boys" are common

terms and that, therefore, the domain names at issue do not warrant the trademark

protection sought by Complainant. This argument, though, does nothing to rebut

the prima facie showing made through the trademark registration; moreover,

as Mr. Zuccarini well knows, "[m]any well-known trademarks are composed

of generic terms." Miller v. Zuccarini, Case

No. D2001-0064 §5b ("Zuccarini’s contentions as to generic components

of Miller’s mark fall short of overcoming the statutory presumption").

Having established Complainant’s trademark rights, there is little dispute

but that the domain names <backstreeboys.com>, <backsreetboys.com>,

<bakstreetboys.com>, <backstretboys.com>, bacstreetboys.com>,

<backtreetboys.com>, <backstreetsboys.com>, <backsteetboys.com>,

and <backstreetboyz.com> are "virtually identical and confusingly

similar" to the Backstreet Boys’ mark. As Respondent concedes by characterizing

his conduct as "typo squatting," the only difference between these

domain names and Complainant’s mark is the purposeful misspellings. Encyclopaedia

Britannica, Inc. v. Zuccarini, WIPO Case

No. D2000-0330 (June 7, 2000), § 3 (closely misspelled domain name satisfies

"confusingly similar" factor); see also, e.g., Alta Vista Co. v.

Yomtobian, WIPO Case No. D2000-0937

(Oct. 13, 2000) (domain names <altabista.com> and <altaista.com>

are confusingly similar to trademark ALTA VISTA); Oxygen Media, LLC v. Primary

Source, WIPO Case No. D2000-0362

(June 19, 2000) (domain name <0xygen.com>, spelled with a zero rather

than the letter "o", is confusingly similar to trademark OXYGEN).

It is equally clear that the domain names <backstreetboyspics.com> and

<backstreetboyspictures.com> are "identical or confusingly similar"

to the Backstreet Boys’ mark. Although Respondent misspelled no words in these

names, he wholly incorporated the Complainant’s trademark, along with the generic

terms "pics" and "pictures," in the domain names. As prior

panels have held, "a domain name is ‘identical or confusingly similar’

to a trademark . . . when the domain name includes the trademark, or a confusingly

similar approximation, regardless of the other terms in the domain name."

Wal-Mart Stores, Inc. v. MacLeod, WIPO

Case No. D2000-0662 (September 19, 2000), § 6. See also Kidman v.

Zuccarini, WIPO Case No. D2000-1415

(January 23, 2001), §5A. Accordingly, Complainant has met its burden under

the first factor.

B. Respondent Does Not Have a Legitimate Interest in the Domain Name

Some uses of typographic-error domain names may be legitimate, such as when

trademark owners register misspellings to prevent customer loss. e-Duction,

Inc. v. Zuccarini, WIPO Case No. D2000-1369

(February 2, 2001) §6B. Respondent’s use falls outside of this category. The

Complainant never granted Respondent permission to register these domain names,

nor does Respondent’s use have any connection whatsoever to the domain names.

Respondent is not making a legitimate noncommercial or fair use of these names,

is not using them in connection with a bona fide offering of goods or services,

and has not been known by the domain names. Policy ¶ 4(c). In fact, Respondent

has no reason to use these domain names except to divert Internet surfers who

erroneously type in the wrong domain name, or type in the pictures-based domain

names perhaps to seek pictures of the Backstreet Boys. The Complainant has thus

made a prima facie showing that the Respondent does not have rights or

legitimate interests in respect of the domain names. See Document Techs,

Inc. v. International Elec. Communications Inc., WIPO

Case No. D2000-0270 (June 6, 2000) ("[O]nce a Complainant

makes out a prima facie showing, the burden of production on this factor

shifts to the Respondent to rebut the showing by providing concrete evidence

that it has rights to or legitimate interests in the Domain Name.").

Respondent’s only attempted defense rests on an argument that fails legally

and factually. Respondent urges the Panel to acknowledge his advertising mousetraps

as a legitimate business attracting consumers who purposefully mistype terms

in order to find links to unusual information and advertisements. First, Respondent

makes no showing whatsoever to support his assertion that a not insubstantial

number of Internet users purposefully mistype famous names and marks to obtain

interesting advertisements and information. Moreover, as Mr. Zuccarini

well knows, "a use that merely operates to redirect mistaken typists to

other sites is not enough to create a legitimate use without a greater connection

between the domain name and the redirected site." e-Duction,

Inc. v. Zuccarini, WIPO Case No. D2000-1369

(February 2, 2001) §6B. Here, there is no connection between the

sites to which a consumer is directed and the Backstreet Boys trademark. Rather,

Respondent uses these celebrity name misspellings to display ads for unrelated

goods and services.

Therefore, the Panel concludes that Respondent’s use of the domain names at

issue does not give him a legitimate interest in the domain names.

C. Respondent Registered and Used the Domain Names in Bad Faith

Respondent’s use of these domain names to divert users to unrelated advertisements

is classic bad faith. As one recent court has stated, "[t]aking advantage

of consumers’ known disposition to misspell domain names, Zuccarini has diverted

Internet traffic to his web sites, thereby earning substantial revenue from

advertisers." Encyclopaedia Britannica, Inc. v. Zuccarini, WIPO

Case No. 2000-0330 (June 7, 2000) (finding bad faith under the U.S. Anticybersquatting

Consumer Protection Act, Section 43(d) of the Lanham Act).

Furthermore, the many arbitral and judicial decisions rendered against Respondent

show that his behavior is part of an overall pattern of misuse of famous marks

for illegitimate purposes. Respondent’s registration and use of these domain

names is thus consistent with, and part of, his practice of profiting from the

good name of others, all in bad faith. See Electronics Boutique Holdings

Corp. v. Zuccarini, 2000 WL 1622760, at *4 n.11 (E.D. Pa. October 30, 2000)

(noting that, "[b]y his own admission, Mr. Zuccarini has registered thousands

of domain names through various host companies" and that "[t]he majority

of those domain names are misspellings of famous names"); Minolta Co.,

Ltd. v. Cupcake City, WIPO Case No. D2000-1291

(January 18, 2001) (domain name <minoltacameras.com>); Abercrombie

& Fitch Stores, Inc. and A & F Trademark, Inc. v. John Zuccarini d/b/a/

Cupcake Patrol, WIPO Case No. D2000-1004

(November 1, 2000) (domain names <abecrombie.com>, <abercrombe.com>,

<abercromie.com>, <abacrombie.com>, <abercrombiefinch.com>,

<ambercrombiefitch.com>, <abercrombi.com>, <abercombie.com>

and <abercrombieandfitch.com>); Yahoo!, Inc. v. Cupcake Patrol,

WIPO Case No. D2000-0928 (September

29, 2000) (23 domain names similar to the trademark " Yahoo!"); Dow

Jones & Co., Inc. and Dow Jones LP v. Zuccarini, WIPO

Case No. D2000-0578 (August 28, 2000) (domain names <wallstreetjounal.com>

and <wallstreetjournel.com>); Diageo p.l.c. v. Zuccarini, WIPO

Case No. D2000-0541 (August 22, 2000) (domain name <guinnes.com>);

Speigel Catalog, Inc. v. Zuccarini, eResolution Case Nos. AF-0237a-d

(July 28, 2000) (domain names <speigals.com>, <speigels.com>, <spiegals.com>,

and <spiegles.com>); Encyclopaedia Britannica, Inc., WIPO

Case No. D2000-0330 (domain names <encyclopediabrittanica.com>, <brtanica.com>

and <britannca.com>); Hewlett-Packard Co. v. Zuccarini, NAF File

No. FA00040000994454 (May 30, 2000) (domain name <hewlitpackard.com>);

Bama Rags, Inc. v. Zuccarini, NAF File No. FA 0003000094381 (May 8, 2000)

(domain name <davemattews-band.com>); Hewlett-Packard Co.v. Cupcake

City, NAF File No. FA000200093562 (NAF March 31, 2000)(domain name <hewlittpackard.com>);

and Shields v. Zuccarini, 89 F. Supp. 2d 634, 635 (E.D. Pa. 2000)(domain

names <joescartoon.com>, <joecarton.com>, <joescartons.com>,

<joescartoons.com> and <cartoonjoe.com>).

We therefore find that Respondent has registered and used the domain names

at issue in bad faith.

9. Decision.

For the foregoing reasons, the Panel decides:

(a) that the domain names <backstreeboys.com>, <backsreetboys.com>,

<backstreetboyspics.com>, <backstreetboyspictures.com>, <bakstreetboys.com>,

<backstretboys.com>, bacstreetboys.com>, <backtreetboys.com>,

<backstreetsboys.com>, <backsteetboys.com>, and <backstreetboyz.com>

are identical or confusingly similar to a mark in which the Complainant has

rights;

(b) that Respondent has no rights or legitimate interests in those domain names;

and

(c) that Respondent has registered and used the domain names in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel concludes

that the registration of the domain names at issue should be transferred to

the Complainant.

David H. Bernstein

Presiding Panelist

Gordon David Harris

Panelist

Dennis Arthur Foster

Panelist

Dated: August 24, 2001

Other cases for this domain

• Backstreet Boys Productions, Inc. v. Cupcakeparty / Cupcake Real Video / Cupcake-show / Cupcakes-first Patrol; John Zuccarini — D2000-1619 · backsreetboys.com, backsteetboys.com, backstreeboys.com · Complaint denied · 27 Mar 2001