VoiceStream Wireless Corporation v. RaveClub Berlin

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

VoiceStream Wireless Corporation v. John Zuccarini d/b/a RaveClub Berlin

Case No: D2002-0146

1. The Parties

The Complainant is VoiceStream Wireless Corporation ("VoiceStream"),

a corporation organized and existing under the laws of the State of Delaware,

having its principle place of business in Bellevue, Washington, United States

of America.

The Respondent is RaveClub Berlin, an entity of form unknown, with an address

in Cherry Hill, New Jersey, United States of America, alleged to be

a business alias of John Zuccarini, an individual with a presently

unknown address who, according to prior WIPO decisions, at one time had

an address in Andalusia, Pennsylvania, United States of America.

The basis for the alias allegation is an allegation to this effect made

in Federal Trade Commission v. John Zuccarini, individually and d/b/a…RaveClub

Berlin, U.S.D.C.E.D. PA No. 01-CIV-4854 (Complaint, Annex 6)

2. The Domain Names and Registrar

The domain names at issue are: <voicesream.com> and <voicetream.com>,

registered with Computer Services Langenbach GmBH, d/b/a Joker.com, Duesseldorf,

Germany ("CSL").

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization

Arbitration and Mediation Center (the "WIPO Center") on February 14, 2002,

in electronic form. The WIPO Center received the hard copy of the Complaint

on February 18, 2002. The WIPO Center acknowledged receipt of

the Complaint on February 21, 2002.

On February 26, 2002, a Request for Registrar Verification was transmitted

to CSL. CSL responded on February 27, 2002, confirming the registration

details and its receipt of a copy of the Complaint from Complainant by certified

mail.

A Formal Requirements Compliance Checklist was initiated by the assigned

WIPO Center, and completed March 4, 2002. The WIPO Center determined

that that the Complainant was in formal compliance with the requirements

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

and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution

Policy, in effect as of December 1, 1999 (the "WIPO Supplemental

Rules"). The Panelist has independently reviewed the Requirements and

finds that the Complainant is in formal compliance with the requirements

of the Policy, the Rules and the Supplemental Rules.

The Complainant paid the required fees for a single-member Panel on time

and in the required amount.

No formal deficiencies having been noted, on March 4, 2002, a

Notification of Complaint and Commencement of Administrative Proceeding

(the "Commencement Notification") was transmitted to the Respondent

(with copies to the Complainant, CSL and ICANN), setting a deadline of March 24, 2002,

by which the Respondent could file a Response to the Complaint. The Commencement

Notification was transmitted to the Respondent by e-mail to the e-mail addresses

indicated in the Complaint and specified in Whois confirmations received

from CSL and by post/courier to the indicated postal addresses. Having reviewed

the communications records in the case file, the Panelist finds that the

WIPO Center has discharged its responsibility under Paragraph 2(a), Rules,

"to employ reasonably available means calculated to achieve actual

notice to Respondent."

On March 26, 2002, having received no formal Response from the designated

Respondent, the WIPO Center transmitted to the parties a Notification of

Respondent Default using the same contact details and methods as were used

for the Commencement Notification.

On April 25, 2002, the WIPO Center invited Richard Allan Horning to serve as

the Sole Panelist in Case No. D2002-0146 and transmitted

to him a Statement of Acceptance and Request for Declaration of Impartiality

and Independence. Richard Allan Horning’s Statement of Acceptance

and Declaration of Impartiality and Independence was received on April 30, 2002.

On May 2, 2002, the WIPO Center transmitted to the parties a Notification

of Appointment of Administrative Panel and projected decision date, in which

Richard Allan Horning was formally appointed as the Sole Panelist. The projected

decision date was May 16, 2002.

The Panelist finds that the Administrative Panel was properly constituted

and appointed in accordance with the Policy, Rules and WIPO Supplemental

Rules.

4. Factual Background

VoiceStream is a provider of wireless voice and data communication in the

United States. VoiceStream is allegedly America's fifth largest wireless

phone company, with approximately 15,000 employees serving 5.2 million subscribers.

VoiceStream's services include wireless messaging, Internet access, and

data transmission.

VoiceStream has requested and used the VOICESTREAM trademark to identify

its goods and services, and as the name of the company. The VOICESTREAM

trademark is the subject of eight (8) trademark registrations issued by

the United States Patent and Trademark Office and two (2) registrations

in Mexico. An additional fourteen (14) applications pending in the United

States and one (1) application pending in Europe. (Complaint, Annexes 8-15)

VoiceStream's spokesperson, the internationally-known actress Jamie Lee

Curtis has appeared in Complainant's print, television and radio advertisements

since 1998. In consequence of this advertising, and from other activities,

the VOICESTREAM name and mark are widely known in the United States.

VoiceStream has international roaming agreements with more than 164 of

the major operators worldwide providing service in over 71 countries including:

Australia, China, Chile, France, Germany, Greece, Hong Kong SAR of China,

India, Italy, the Netherlands, Russian Federation, Saudi Arabia, Spain,

Switzerland, and the United Kingdom.

The Respondent registered the domain names <voicesream.com> and <voicetream.com>

on June 24, 2001 (Complaint, Annex 4, 5).

At the time the Complaint was filed, and at the time of the submission

of the dispute to the Panelist, the domain names <voicesream.com>

and <voicetream.com> resolved to the website for <amateurvideos.nl>,

a commercial pornographic website registered to Atlantiz Web Development

V.O.F., a Dutch domain name registrar that is not affiliated with VoiceStream

(Complaint, Annexes 16, 17).

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent has registered domain names which

are nearly identical to and confusingly similar to the service marks and

trademarks registered and used by Complainant, that Respondent has no rights

or legitimate interests in respect of the domain names at issue, and that

Respondent has registered and is using the domain names at issue in bad

faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist as to the principles

the Panelist is to use in determining the dispute: "A Panel shall decide

a complaint on the basis of the statements and documents submitted in accordance

with the Policy, these Rules and any rules and principles of law that it

deems applicable." Since both the Complainant and Respondent are domiciled

in the United States, and since United States’ courts have experience with

similar disputes, to the extent that it would assist the Panelist in determining

whether the Complainant have met their burden as established by Paragraph

4(a) of the Policy, the Panelist shall look to rules and principles of law

set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each

of the following:

1) 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,

2) that the Respondent has no legitimate interests in respect of the domain

name; and,

3) that the domain name has been registered and used in bad faith.

The Panelist finds that domain names at issue are either identical (Hewlett-Packard

Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online,

Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Case FA0002000093679) or

confusingly similar (Marriott International, Inc. v. John Marriot, NAF

Case No. FA0002000094737; Identigene, Inc. v. Genetest Laboratories,

WIPO Case No. D2000-1100; Seiko

Epson Corporation v. Distribution Purchasing & Logistics Corp., NAF

Case No. FA0003000094219; AT&T Corp. v. CME Inc., WIPO

Case No. D2001-1060; Microsoft Corporation v. Global Net 2000, Inc.,

WIPO Case No. D-2000-0554 and America Online, Inc. v. East Coast Exotics,

WIPO Case No. D2001-0661.

Complainant has alleged and Respondent has failed to deny that it has no legitimate

interests in respect of the domain names at issue. Alcoholics Anonymous World

Services, Inc. v. Raymond, WIPO Case No.

D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO

Case No. D2000-0011. Respondent is not commonly known by the domain names

at issue, and has not acquired trademark or service mark rights in the domain

names. The Panelist finds that Respondent has no rights or legitimate interest

in the domain names.

The question thus arises whether the domain names at issue have been registered

and are being used in bad faith. Paragraph 4.b of the Policy sets forth

"in particular but without limitation" circumstances which "shall

be evidence of registration and use of a domain name in bad faith."

Those circumstances are:

(i) circumstances indicating that you have registered or you have acquired

the domain name primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the Complainant who is the owner

of the trademark or service mark or to a competitor of that Complainant, for

valuable consideration in excess of your documented out-of-pocket costs directly

related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the

trademark or service mark from reflecting the mark in a corresponding domain

name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting

the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract,

for commercial gain, Internet users to your 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 your website or location

or of a product or service on your website or location.

VOICESREAM and VOICESTEAM are common misspellings or misidentifications of

Complainant’s registered trademark VOICESTREAM and its <voicestream.com>

website. Misspellings such as this, without an explanation from Respondent,

have been previously held to be "typosquatting" and in bad faith.

General Electric Company v. Fisher Zuieli, A/K/A Zuieli Fisher,

WIPO Case No. D2000-0377; Pig Improvement

Company, Inc. v. Platinum Net, Inc., WIPO

Case No. D2000-1594; Microsoft Corp. v. Global Net 2000, Inc., WIPO

Case No. D2000-0554; Reuters Limited v. Global Net 2000, Inc.,

WIPO Case No. D2000-0441; News Group

Newspapers Limited and News Network Limited v. Momm Amed la, WIPO

Case No. D2000-1623.

There is no question that Respondent endeavored to derive commercial gain

from those who arrive at <voicesream.com> and <voicetream.com>,

as the sites offer subscription services to various pornographic materials

as well as "pop-up" links to other sites which may or may not result in

the sharing of revenue.

The fact that the site operated by Respondent is pornographic in nature has

been found in prior decisions to be evidence of bad faith. CCA Industries,

Inc. v. Bobby R. Dailey, WIPO Case No.

D2000-0148; Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO

Case No. D2000-0102; America Online, Inc. v. Viper, WIPO

Case No. D2000-1198.

The use of domain names virtually identical to Complainant's domain name

and VOICESTREAM mark, where the Registrant's domain names offer pornographic

products and services, "tarnishes" Complainant’s existing marks.

This is also evidence of bad faith. Lucent Technologies, Inc. v. Johnson,

2000 U.S. Dist. LEXIS 16002; 56 U.S.P.Q.2D (BNA) 1637 (C.D.Cal.

2000); ); Mattel, Inc. v. Internet Dimensions, Inc., 2000 U.S. Dist.

LEXIS 9747, 2000 WL 973745, *5 (S.D.N.Y. July 13, 2000); Hasbro

Inc. v. Internet Entertainment Group, Ltd., 1996 U.S. Dist. LEXIS 11626,

40 U.S.P.Q.2D (BNA) 1479, 1480 (W.D. Wash. 1996); Travel Services,

Inc. v Tour COOP of Puerto Rico, NAF Case No. 0001000092524.

7. Decision

For all of the foregoing reasons, the Panelist decides that the domain

names registered by Respondent are identical or confusingly similar to the

trademarks and service marks in which the Complainant has rights, that Respondent

has no rights or legitimate interests in respect of the domain names, and

that the Respondent’s domain names have been registered and are being used

in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires

that the registration of the following domain names be transferred to the

Complainant:

<voicesream.com>

<voicetream.com>

Richard Allan Horning

Sole Panelist

Dated: May 16, 2002

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