NIHC, Inc.; Nordstrom, Inc. v. John Zuccarini

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

NIHC, Inc. and Nordstrom, Inc. v. John Zuccarini

Case No. D2001-1260

1. The Parties

The Complainants are NIHC, Inc., a corporation organized in the State of Colorado,

United States of America (USA), with place of business in Portland, Oregon,

USA, and Nordstrom, Inc., with place of business in Seattle, Washington, USA.

The Respondent is John Zuccarini, with address in Andalusia, Pennsylvania,

USA.

2. The Domain Name(s) and Registrar(s)

The disputed domain name is <nordstom.com>.

The registrar of the disputed domain name is CSL GmbH, with business address

in Dusseldorf, Germany.

3. Procedural History

The essential procedural history of the Administrative Proceeding is as follows:

(a) Complainants initiated the proceeding by the filing of a Complaint via

e-mail received by the WIPO Arbitration and Mediation Center ("WIPO")

on October 18, 2001, and via courier mail received by WIPO on October

22, 2001. Payment by Complainants of the requisite filing fees accompanied the

courier mailing. On October 23, 2001, WIPO transmitted a Request for Registrar

Verification to the Registrar, CSL GmbH (with the Registrar’s Response received

by WIPO on October 23, 2001).

(b) On October 24, 2001, WIPO transmitted Notification of the Complaint and

Commencement of the Proceeding to Respondent via e-mail, telefax and courier

mail.

(c) On November 27, 2001,WIPO transmitted notification to Respondent of its

default in responding to the Complaint via e-mail.

(d) On December 14, 2001, WIPO invited the undersigned to serve as Panelist

in this Administrative Proceeding, subject to receipt of an executed Statement

of Acceptance and Declaration of Impartiality and Independence ("Statement

and Declaration"). On December 18, 2001, the undersigned transmitted by

fax the executed Statement and Declaration to WIPO.

(e) On December 26, 2001, Complainants and Respondent were notified by WIPO

of the appointment of the undersigned Sole Panelist as the Administrative Panel

(the "Panel") in this matter. WIPO notified the Panel that, absent

exceptional circumstances, it would be required to forward its decision to WIPO

by January 9, 2002. The Panel received a hard copy of the file in

this matter by courier from WIPO.

The Panel has not received any requests from Complainants or Respondent regarding

further submissions, waivers or extensions of deadlines, and the Panel has not

found it necessary to request any further information from the parties. The

proceedings have been conducted in English.

4. Factual Background

Complainant Nordstrom, Inc., is licensee of Complainant, NIHC, Inc., (hereinafter

referred to jointly as "Complainants") for the word trademark and

service mark "NORDSTROM". The "NORDSTROM" mark is registered

at the United States Patent and Trademark Office ("USPTO"): reg. no.

1,281,000, dated June 5, 1984, service mark in international class (IC) 42 (covering

retail clothing store services); reg. no. 1,280,785, dated June 5, 1984, trademark

in IC 25 (covering men’s, women’s and children’s clothing, as further specified),

and; reg. no. 2,378,940, dated August 22, 2000, service mark in IC

36 (covering credit card services). Complainants’ "NORDTROM" mark

is registered in a number of countries (and regions) outside the United States.

Complaint, para. 18 & Annexes 5-6.

In addition to the word mark "NORDSTROM", Complainants have registered

at the USPTO a number of other marks incorporating the term "NORDSTROM",

including (but not limited to) "NORDSTROM 2ND NATURE" and NORSTROM

BEST (id., para 18).

Complainants have registered the domain name <nordstrom.com> and operate

an active commercial website at Internet address <www.nordstrom.com> (id.,

para. 17).

Complainants operate over 140 retail stores in the United States and other

countries. Complainants advertise the "NORDSTROM" mark extensively.

The mark is well known in the United States in connection with the retail sale

of clothing. (Id.)

According to the Registrar’s Verification Response to WIPO, dated October 23,

2001, "John Zuccarini" is the listed Registrant of the domain name

<nordstom.com>. The Administrative Contact, at the same address, is "John

Zuccarini". The disputed domain name was registered on December 15, 1999,

and the record of registration was last modified on August 15, 2001.

Respondent has used the disputed domain name to "mousetrap" Internet

users who entered the name in the browser address line. That is, when the disputed

domain name was entered into a browser as an Internet address, the browser would

automatically open a number of website windows, at least temporarily making

it difficult for the users to leave the websites to which they had been automatically

directed. The websites opened by Respondent’s "mousetrap" displayed

advertising, inter alia, for on-line gambling services and recorded music.

(Complaint, para. 23, and sworn Declaration of Jennifer Martin, agent of Complainants,

dated October 15, 2001, id., Annex 7).

Internet users attempting to reach Complainants’ commercial website have entered

Respondent’s mousetrap and complained to Complainants, apparently concluding

that this device was operated by Complainants (id., para. 21 &

Annex 7).

Complainants sent a number of cease and desist and transfer demands to Respondent

(id., para. 25, Annex 7/1). The only response received from Respondent

was an e-mail to Complainants’ counsel of August 16, 2001, that is replete with

unusual references to bodily functions and practices intended to be offensive

to the recipient.

The Service Agreement in effect between Respondent and CSL Gmbh subjects Respondent

to CSL GmbH’s dispute settlement policy, the Uniform Domain Name Dispute Resolution

Policy, as adopted by ICANN on August 26, 1999, and with implementing documents

approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution

Policy (the "Policy") requires that domain name Registrants submit

to a mandatory Administrative Proceeding conducted by an approved dispute resolution

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

name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainants

Complainants state that they are the long-standing holder of rights in the

trademark and service mark "NORDSTROM", that such mark is registered

at the USPTO and elsewhere, that such mark is actively used in commerce and

is well known (see Factual Background, supra).

Complainants assert that the disputed domain name <nordstom.com> is virtually

identical and confusingly similar to their mark. Complainants allege that Internet

users tend to misspell Internet addresses and are likely to inadvertently enter

the term registered by Respondent when seeking Complainants’ commercial website.

Complainants state that Respondent has no rights or legitimate interests in

the disputed domain name. Respondent’s only use of the name has been its bad

faith effort to take advantage of Complainants’ mark to divert Internet users.

Complainants assert that Respondent registered and has used the disputed domain

name in bad faith. According to Complainants, Respondent has a history of engaging

in registering the domain names of others, and has in fact been enjoined by

federal courts in the United States from engaging in the type of practice alleged

in this case. Respondent failed to respond to Complainants’ contact attempts.

Respondent has used the disputed domain name to divert Internet users to websites

not associated with Complainants by creating confusion with Complainants’ mark

for commercial gain.

Complainants request the Panel to direct the registrar to transfer the disputed

domain names to them.

B. Respondent

Respondent did not reply to Complainants’ contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. The Panel will confine itself to making determinations

necessary to resolve this Administrative Proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a Respondent have notice

of proceedings that may substantially affect its rights. The Policy, and the

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

establish procedures intended to ensure that Respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary

to notify the Respondent of the filing of the Complaint and initiation of these

proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a complainant to merit a finding that a respondent has engaged in abusive

domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) respondent’s domain name has been registered and is being used in bad

faith.

Each of the aforesaid three elements must be proved by a complainant to warrant

relief.

Complainants are the holder of trademark and service mark registrations for

the term "NORDSTROM" in the United States and are using that mark

in commerce (see Factual Background, supra). Complainants’ registration

of the "NORDSTROM" mark on the Principal Register at the USPTO establishes

a presumption of its validity in U.S. law [1].

The Panel determines that Complainants have rights in the trademark and service

mark "NORDTROM" [2]. Complainants’

rights in this mark arose long prior to Respondent’s registration of the disputed

domain name.

Complainants are among the largest retail clothing enterprises in the United

States, and advertise their mark extensively. The Panel determines that Complainants’

mark is well known in the United States in the field of retail clothing sales.

The disputed domain name <nordstom.com> is the same as Complainants’

"NORDSTROM" mark, but for the absence in the domain name of the second

letter "r" found in the mark, and the addition of the generic top

level domain (gTLD) <.com>.

The disputed domain name is very similar to the mark in its visual impression

[3]. An Internet user or consumer viewing

the disputed domain name is likely to confuse it with Complainants’ mark. Complainants’

mark is distinctive and well known [4]. Respondent

appears to have employed a minor misspelling of Complainants’ mark to take advantage

of a typographical error that may be made by Internet users while attempting

to enter Complainants’ mark as its logical Internet address in their web browsers.

Bad faith in selecting a domain name may contribute to a finding of confusing

similarity [5]. Complainants have provided

evidence of actual confusion among Internet users seeking their commercial website;

that is, Internet users who have inadvertently been directed to Respondent’s

"mousetrap". Actual confusion supports a finding of confusing similarity

[6].

The use of the gTLD <.com> is without legal significance from the standpoint

of comparing the disputed domain name to Complainants’ mark since use of a gTLD

is required of domain name registrants and, in the context of this proceeding,

<.com>does not serve to identify a specific enterprise as a source of

goods or services [7].

The Panel determines that the disputed domain name <nordstom.com> is

confusingly similar to "NORDSTROM" in the sense of paragraph 4(a)(i)

of the Policy.

Respondent’s only demonstrated use of the disputed domain name has been in

connection with directing Internet users to websites unrelated to Complainants.

Such use is hereinafter determined to be in bad faith. Bad faith use of a domain

name does not establish rights or legitimate interests in the name in the sense

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

Respondent has failed to establish rights or legitimate interests in the disputed

domain name. Thus, Complainants have established the second element necessary

to prevail on their claim that Respondent has engaged in abusive domain name

registration.

The Policy indicates that certain circumstances may, "in particular but

without limitation," be evidence of bad faith (Policy, paragraph 4(b)).

Among these circumstances are that a respondent "by using the domain name,

… [has] intentionally attempted to attract, for commercial gain, Internet users

to [its] website or other on-line location, by creating a likelihood of confusion

with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement

of [respondent’s] website or location of a product or service on [its] website

or location" (id., paragraph 4(b)(iv)).

Respondent has registered a domain name that Internet users are likely to employ

inadvertently as they misspell Complainants’ mark when attempting to locate

Complainants’ website using its logical address identifier (that is, its mark

"NORDSTROM" combined with the gTLD <.com>). Upon entering the

disputed domain name, Internet users have in fact been "mousetrapped"

to websites that advertise services that are not sponsored or endorsed by, or

affiliated with, Complainants. Respondent’s provision of advertisement is presumably

undertaken for commercial purposes. The Panel determines that Respondent has

used Complainants’ mark in the disputed domain name for commercial gain by creating

a likelihood of confusion regarding Complainants’ sponsorship, affiliation or

endorsement of his website(s). This constitutes bad faith within the meaning

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

Complainants have established the third and final element necessary for a finding

that the Respondent has engaged in abusive domain name registration and use.

The Panel will, therefore, request the registrar to transfer the domain name

<nordstom.com> to the Complainants.

7. Decision

Based on its finding that the Respondent, John Zuccarini, has engaged in abusive

registration and use of the domain name <nordstom.com> within the meaning

of paragraph 4(a) of the Policy, the Panel orders that the domain name

<nordstom.com> be transferred to the Complainants, NIHC, Inc. and Nordstrom,

Inc.

Frederick M. Abbott

Sole Panelist

Dated: January 15, 2002

Footnotes:

1. 15 USCS § 1057(b). See, e.g., Avery

Dennison v. Sumpton, 189 F.3d 868 (9th Cir. 1999).

2. For purposes of deciding this proceeding,

the Panel need not consider the legal significance of Complainants’ "NORDSTROM"-formative

marks.

3. This sole panelist has rendered a number

of prior determinations involving minor misspellings of marks. See, e.g.,

Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO

Case No. D2000-0548, decided July 21, 2000; InfoSpace, Inc.

v. Double Down Magazine, WIPO Case No.

D2000-1474, decided January 18, 2001, and; involving Respondent

in this case, America Online, Inc. v. John Zuccarini, also known as Cupcake

Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City,

and The Cupcake Incident, WIPO Case No.

D2000-1495, decided January 22, 2001.

4. See Brookfield, id., 174 F.3d 1036,

1053-61 (9th Cir. 1999), citing AMF Inc. v. Sleekcraft Boats,

599 F.2d 341 (9th Cir. 1979).

5. Brookfield, id. at 1059 (9th

Cir. 1999).

6. See, e.g., AMF Inc. v. Sleekcraft

Boats, 599 F.2d 341 (9th Cir. 1979).

7. See Sporty's Farm v. Sportsman's Market,

202 F.3d 489, 498 (2d Cir. 2000), citing Brookfield Communications v. West

Coast Entertainment, 174 F.3d 1036 (9th Cir. 1999).

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