Sierra Trading Post, Inc. v. John Zuccarini / Cupcake Patrol

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sierra Trading Post, Inc. v. John Zuccarini

Case No. D2002-0263

1. The Parties

The Complainant is Sierra Trading Post, Inc. ("the Complainant") of 5025 Campstool Road, Cheyenne, Wyoming 82007-1898, United States of America.

The Respondent is John Zuccarini, Cupcake Patrol, Saffrey Square, P.O. Box N-4149, Nassau, Bahamas.

2. The Domain Names and Registrar

The Domain Names the subject of the complaint are <seirratradingpost.com> and <sieratradingpost.com> ("the Domain Names").

The Registrar with which the Domain Names are registered is Joker.com, a division of Computer Service Langenbach GmbH ("CSL") of Rathausufer 16, D-40213 Dusseldorf, Germany.

CSL registers domain names via CORE, World Trade Center II, 29 Route de Pre-Bois, CH-1215 Geneva, Switzerland.

3. Procedural History

The World Intellectual Property Organization Arbitration and Mediation Center ("the Center") received an e-mail copy of the Complaint on March 19, 2002, and a hard copy of the Complaint on March 21, 2002. An acknowledgement of Receipt of Complaint was sent by the Center on March 26, 2002.

On March 28, 2002, a Request for Registrar Verification was transmitted to the Registrar requesting it to :-

(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant as required by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), Paragraph 4(b);

(2) confirm that the Domain Names are registered with the Registrar;

(3) confirm that the RESPONDENT is the current registrant of the Domain Names;

(4) provide full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) that are available in the Registrar's WHOIS database for the Domain Names' registrant, technical contact, administrative contact and billing contact, for the domain names;

(5) confirm that the Uniform Domain Name Dispute Resolution Policy ("the Policy") applies to the Domain Names;

(6) indicate the current status of the Domain Names;

(7) indicate the specific language of the registration agreement as used by the registrant for each domain name, and

(8) indicate whether the Domain Names' registrant has submitted in its Registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from the use of the Domain Names (Rules, paragraph 1).

On April 2, 2002, the Registrar confirmed by reply e-mail that it had received a copy of the Complaint from the Complainant. It also confirmed that the Domain Names are registered with it and that the Respondent was the current registrant of the Domain Names.

The Registrar also confirmed that the Respondent was listed as the Administrative, Technical and Billing Contact, providing e-mail and telephone details. Insofar as the domain name <sieratradingpost.com> is concerned, the Respondent's address is recorded as Saffrey Square, P.O. Box N-4149, Nassau, Bahamas. Insofar as the domain name <seirratradingpost.com> is concerned, two addresses are recorded for the Respondent. They are 957 Bristol Pike, Suite D-6, Andalusia, PA, United States of America and Saffrey Square, P.O. Box N-4149, Nassau, Bahamas.

The Registrar also forwarded the requested WHOIS details and confirmed that the Policy applies to the Domain Names at issue. The Registrar also confirmed that the language of the registration agreement is English and German.

On April 5, 2002, the Center completed a Formal Requirements Compliance Checklist, verifying that the Complaint satisfied the formal requirements of the Policy. It is apparent that there was such compliance.

On April 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding ("the Complaint Notification") and the Complaint (without exhibits) was transmitted by e-mail to the Respondent. The Complaint Notification and the enclosed documentation were also forwarded to the Respondent by post at his recorded addresses in both the Bahamas and the United States of America.

As no response was filed within the time specified by paragraph 5 of the Rules, on May 3, 2002, the Center gave the Respondent formal Notification of Respondent Default.

The Complainant elected to have the dispute determined by a single-member Administrative Panel in accordance with paragraph 3(b)(iv) of the Rules.

The Administrative Panel appointed consists of Dr Annabelle Bennett SC ("the Panelist"). On May 13, 2002, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from the Panelist, the Center notified the parties of the appointment of the Panelist.

4. Factual Background

The following facts are asserted by the Complainant in the Complaint and are not disputed. The Panel finds these facts are proved.

The Complainant owns the United States federally registered trade mark and service mark SIERRA TRADING POST: Registration number 2,289,952. This trade mark has been extensively used by the Complainant in the United States of America since at least early 1986 and was registered on November 2, 1999. As a result of its use for approximately 16 years, the trade mark has developed extensive fame and good will.

The SIERRA TRADING POST trade mark and service mark is used by the Complainant in connection with the following goods and services: men and women's clothing, namely pants, shirts, shorts, jackets, coats, parkas, sweaters, rainwear, raincoats, rain suits, jogging suits, sweat shirts, sweat pants: men's clothing namely vests; women's clothing namely sports coats, leggings, tights, dresses, jumpers, blouses: mail order catalog services and retail store services featuring clothing, footwear, hair ornaments, costume jewelry, belts, headwear, purses, leather clothing, leather handbags, leather luggage, back packs, hand bags, gym bags, shoulder bags, bean bags, garment bags for storage, paper bags, laundry bags, all purpose sports bags, bed linen, bed blankets, bed sheets, bed spreads, mattresses, mattress covers, home furnishings, eyeglasses, sunglasses, sports goggles for use in swimming, skiing and scuba diving, watches, radio telephones, radio pagers, radio transmitters, cellular telephones, portable outdoor electronics, camping equipment, ski equipment, snowboarding equipment, sledding equipment, sporting goods, mountaineering equipment, fishing equipment, hiking equipment, hunting equipment, bicycles, bicycling equipment and water sports equipment for use in scuba diving, water skiing, surfing and swimming.

In addition to the SIERRA TRADING POST trade mark, the Complainant owns further

trade and service marks that are either registered or pending registration in

the United States of America, that are within its family or related trade marks

and service marks. They are as follows:

Trade Mark/Service Mark

Reg. No./Appl. No.

Date Reg.

A SIERRA TRADING POST OUTLET

STORE

2,518,372

December 11, 2001

SIERRA TRADING POST YOUR IN-HOME

OUTLET MALL

2,518,373

December 11, 2001

SIERRA OUTFITTERS

75/673,369

SIERRA OUTDOORS

2,416,478

December 26, 2000

SIERRA SHOES, ETC.

2,503,069

October 30, 2001

SIERRA TRAVEL

2,499,144

October 16, 2001

SIERRA ADVENTURE EDGE

2,501,065

October 23, 2001

SIERRA WOMAN

2,460,526

June 12, 2001

The Complainant also owns the domain name <sierratradingpost.com>

("Complainant's Website")

The Domain Names were registered by the Respondent in December 15, 1999,

and July 11, 2000, subsequent to the registration of the Complainant's

SIERRA TRADING POST trade mark.

The Complainant attempted to contact the Respondent regarding the Domain

Names on at least three occasions from May to August 2000, at 957 Bristol

Pike, Suite D-6, Andalusia, PA, United States of America, being the address

then listed with the Registrar as the contact address for the Respondent.

All correspondence from the Complainant to this address was returned as

undeliverable or unclaimed. The complainant then made inquiries through

the Registrar as to the Respondent's correct address and on April 4, 2001,

the Respondent replied to the Registrar's inquiry listing his current address

as Cupcake Patrol, Saffrey Square, P.O. Box N-4149, Nassau, Bahamas. The

Complainant has sent copies of the Complaint to both these addresses.

The Domain Names are misspellings of the Complainant's registered trade

mark. Prior to September 25, 2001, when an internet user tried

to access the Complainant's website, if they inadvertently mis-typed or

mis-spelt the domain name he or she was "mouse trapped" by as many as 15

"pop-up" advertising windows which automatically appeared. These advertising

windows lead to a variety of products and the internet user may have been

confused into believing that these products were being offered or endorsed

by the Complainant. The user could not exit the advertising windows without

clicking on the succession of advertisements that appeared. A United States

Federal Court has found in other proceedings against the Respondent, that

the Respondent is paid between 10 and 25 cents per annum by the advertisers

for each click, so that the Respondent makes almost $1 million per annum

from all of his domain names: Electronics Boutique Holdings Corp. v Zuccarini,

56 U.S.P.Q.2d 1705, 1712 (E.D. Pa. 2000); Shields v Zuccarini,

89 F. Supp. 2d 634, 639 n.7 (E.D. Pa. 2000).

In 2001, in proceedings commenced by the United States Federal Trade Commission

against the Respondent, a United States District Court issued a temporary

restraining order and then a preliminary injunction prohibiting the Respondent

from engaging in the type of conduct that is the subject of this complaint.

As a result, current internet users who misspell or incorrectly type the

name of the Complainat's website, are no longer mouse trapped by numerous

advertisements, but are given a link to a Netherlands based website that

offers access to sexually-orientated adult content and other fee based adult

sites.

The Respondent has a practice of registering domain names that are mis-spellings

of famous trade marks and then using these domain names to redirect unwitting

internet users to the advertisements and commercial websites.

The Respondent's mouse trapping practices have been considered against

him under the Policy and, in the United States, under the Anticybersquatting

Consumer Protection Act. The Respondent has lost more than 40 Policy decisions;

a list of the decisions was annexed to the Complaint.

A United States District Court has found that the Respondent is a "notorious

cybersquatter": Electronic Boutique Holdings Corp. v Zuccarini, 56 U.S.P.Q.2d

1705 (E.D. Pa 2000).

5. Parties' Assertions

A. The Complainant

The Complainant asserts that the Domain Names should be transferred to

it as it is able to satisfy all three conditions provided in paragraph 4(a)

of the Policy.

Paragraph 4a(i):

The Complainant asserts that the Domain Names are virtually identical to

and confusingly similar to a trade mark and service mark in which it has

rights. The registration number of the Complainant's trade mark and service

mark and the goods or services in respect of which it is registered, are

detailed in paragraph 4 above. Similarly, the Complainant's family of trade

marks and service marks are detailed above.

The Complainant asserts that the Domain Names only differ from the Complainant's

"SIERRA TRADING POST" trade mark by purposeful mis-spelling, by either inverting

the "i" and the "e" in one case, or by omitting an "r" in the other case. It

refers to the decision in Nicole Kidman v. John Zuccarini, d/b/a Cupcake

Party, WIPO Case No. D2000-1415

(January 23, 2001), in which it is established that such misspellings are actionable

under the Policy.

Paragraph 4a(ii):

The Complainant asserts that the Respondent has no rights or legitimate

interests in respect of the Domain Name and relies upon the following assertions:-

(1) The Respondent has not used, nor shown any demonstrable preparations

to use, the Domain Names or a name corresponding to the Domain Names in

connection with a bona fide offering of goods or services.

(2) A number of United States courts and WIPO Panels have found that the Respondent's

business is the charging of fees to advertisers for each advertisement that

mouse trapped users must click through to extricate themselves: for example,

Nicole Kidman v John Zuccarini, d/b/a Cupcake Party, WIPO

Case No. D2000-1415 (January 23, 2001).

(3) During a deposition and before the United States District Court

for the Eastern District of Pennsylvania, the Respondent admitted that

he registered thousands of domain names because they are confusingly similar

to other famous marks or personal names, in an effort to divert internet

traffic to his sites: Shields v Zuccarini, 89 F. Supp. 2d 634 (E.D.

Pa. 2000) and Electronics Boutique Holdings Corp. v Zuccarini, 56

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

(4) The Respondent is not commonly known by the Domain Names and,

to the best of the Complainant's knowledge, does not operate a website

at either of the Domain Names. Instead the Respondent merely initially

linked the Domain Names to third party sites through the mouse trapping

technique and, currently links the Domain Names to a Netherlands based

website offering access to sexually orientated adult content and other

fee based adult sites.

(5) The mouse trap sites have no bona fide reason to function as links

from the Domain Names.

(6) The Respondent is not making a legitimate non-commercial or fair

use of the Domain Names, without intent of commercial gain to misleadingly

divert consumers or to tarnish the Complainant's "SIERRA TRADING POST"

trade mark and service mark (Policy, paragraph 4(c)(iii)). To the contrary,

the Respondent is using the Domain Names to make a profit by deceiving

internet users.

Paragraph 4a(iii)

The Complainant asserts that the Respondent registered and is using the

Domain Name in bad faith and relies upon the following assertions:-

(1) By using the Domain Names which are misspellings of the Complainant's

"SIERRA TRADING POST" trade mark and service mark, the Respondent

is intentionally attempting to divert internet users who are seeking the

Complainant's Website, in order to gain fees and a profit. This, by itself

can show bad faith: Nicole Kidman (see above).

(2) Another WIPO Panel has stated that the Respondent's use of common mis-spellings

of other trade mark owners' domain names "directly contravenes paragraph

4(b)(iv) of the Policy": NCRAS Management, LP v. Cupcake City and John Zuccarini,

WIPO Case No. D2000-1803.

(3) The Respondent's continuing bad faith is evident from the fact

that the Domain Names are linked to a website with pornographic images

and offering access to sexually orientated adult content. Such material

has nothing to do with the Complainant's business and tarnishes the Complainant's

valuable trademarks.

(4) The Complainant referred to the case of State Farm Mutual Automobile

Insurance Company v Commercial Real States, NAF Case No. FA0094728

(June 6, 2000) in which the Panel found that typo-squatters "with

a demonstrable pattern of conduct involving the registration of domain

names that are substantially similar to famous marks and the names of

other companies" is "a plain violation of paragraph 4(b)(ii) of

the Policy." And asserted that it is clear that the Respondent

has engaged in such a pattern of conduct.

B. The Respondent

No Response was received from the Respondent.

6. Discussion and Findings

Language

As the language used by the Complainant is English and as the language

of the registration agreement between the Respondent and the Registrar is

both English and German, the Panel's decision will be delivered in English.

Identical or Confusingly Similar Domain Names (paragraph 4(a)(i))

The Domain Names at issue are <seirratradingpost.Com> and <sieratradingpost.com>.

The relevant parts of the respective Domain Names are <seirratradingpost>

and <sieratradingpost>. The Domain Names are a misspelling of the

trade mark "SIERRA TRADING POST". The Administrative Panel is satisfied

that the relevant parts of the Domain Names are identical to or confusingly

similar to the trade mark "SIERRA TRADING POST" registered in the name

of the Complainant.

RESPONDENT'S Rights or Legitimate Interests in the Domain Names (paragraph

4(a)(ii))

The trade mark "SIERRA TRADING POST" has been used by the Complainant for

in excess of 16 years and, through extensive use, has built up extensive

fame and good will. It is used to identify and in connection with a wide

range of goods and services provided by the Complainant, as detailed in

paragraph 4 above.

Further, the words "SIERRA TRADING POST" or "SIERRA" are part of the Complaint's

family of trade marks and service marks, being marks that are either registered

in the United States of America or pending registration therein.

The Complainant submitted substantial evidence in support of its assertion

that the Respondent can have no rights or legitimate interests in respect

of the Domain Names, pursuant to paragraph 4(a)(ii) of the Policy and, in

particular, relies upon 6 grounds which are detailed in paragraph

5A above.

The Panel accepts the Complainant's submission that the Respondent has

not shown any demonstrable preparations to use the Domain Names in connection

with a bona fide offering of goods and services. The Panel also accepts

the Complainant's submission that the Respondent is using the Domain Names

to make a profit by deceiving internet users.

Accordingly the Panel finds that the Respondent has no rights or legitimate

interests in the Domain Names.

Domain Names Registered and Used in Bad Faith (paragraph 4(a)(iii))

For the Complainant to satisfy this requirement it must prove bad faith in

registration as well as bad faith in the use of the Domain Names. Bad faith

registration alone is an insufficient ground for obtaining a remedy under the

Policy: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003.

The Complainant relies upon four grounds in support of its assertion that

the RESPONDENT has both registered and used the Domain Names in bad faith.

These four grounds are detailed in paragraph 5A above and the established

facts supporting these grounds are detailed in paragraph 4 above.

The Panel notes the Respondent's extensive history of registering domain

names that are mis-spelt names of famous people and well known trade marks,

and then using these domain names to lead internet users to commercial sites

and pop-up advertisements, so as to make a profit for the Respondent. In

the present case it is worth noting that, at issue, are two domain names,

each of which is a mis-spelling of the Complainant's trade mark.

The Panel also notes repeated findings of bad faith against the Respondent

in a number of United States courts and in excess of forty WIPO Panel decisions

against the Respondent in respect of typo squatting and mis-spelt names.

In addition to the above, in light of the Respondent's continual and apparently

intentional pattern of activities, the conclusion is inescapable that the

Respondent acted in bad faith when registering the Domain Names and continues

to act in bad faith in his use of the Domain Names.

In NCRAS Management, LP v Cupcake City and John Zuccarini, WIPO

Case No. D2000-1803, the Panel found that "…the Respondent's repetitive

conduct in each instance clearly constituted bad faith under the Policy." And

"It is indeed unfortunate, given the rampant, repetitive and pernicious conduct

in which this particular respondent has engaged and the remaining cumulative

cost to the 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."

This Panel is of the same view. The Respondent appears content to act in

defiance of findings made against him by United States Courts and by numerous

WIPO Panels. It is disturbing that this should be able to repeatedly occur,

putting owners of affected trade marks to considerable expense, time and

again, to remedy the situation.

The Panel takes all these matters into account and, in the absence of any

response from the Respondent, the Panel finds that the Complainant has established

that the Domain Names have been registered and are being used in bad faith.

7. Decision

The Panel decides that

(i) the Domain Names are identical or confusingly similar to a trade

mark in which the Complainant has rights; and

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

of the Domain Names, and

(iii) the Domain Names have been registered and are being used in

bad faith by the Respondent.

Accordingly, the Panel decides that the Complainant has proven each of

the elements in paragraph 4(a) of the Policy. The Panel requires the Domain

Names to be transferred to the Complainant.

Dr. Annabelle Bennett

Sole Panelist

Dated : May 24, 2002