Classmates Online, Inc. v. John Zuccarini d/b/a RaveClub

WIPO Domain Name Decision: D2002-0635

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin

Case No. D2002-0635

1. The Parties

The Complainant is Classmates Online, Inc., a Washington (USA) corporation with its

principal place of business in Renton, Washington, United States of America,

represented by William A. Drew of the law firm Elliott, Ostrander &

Preston, PC, Portland, Oregon, United States of America.

Complainant

identified John Zuccarini, "individually and [doing business as] RaveClub

Berlin" as the Respondent. The

registrar shows that John Zuccarini is the owner of <classmats.com> (with

Cupcake Patrol being listed as the organization), and RaveClub Berlin is the

owner of <classmat.com>. In the

Response, RaveClub Berlin and Cupcake Patrol claim to be the registrants of the

Disputed Domain Names and have come forward as the Respondents. RaveClub Berlin and Cupcake Patrol appear to

be unincorporated organizations controlled by Mr. Zuccarini. In correspondence with the WIPO Arbitration

and Mediation Center (the “Center”), Mr. Zuccarini asserted that his address is

c/o Wilderness Quest of Nova Scotia Corp., San Jose, Costa Rica. For purposes of this decision, the term Respondents refers collectively to John

Zuccarini, RaveClub Berlin, and Cupcake Patrol. Respondents are represented in this proceeding by Ari Goldberger

of ESQwire.com Law Firm, Cherry Hill, New Jersey, United States of America.

2. Domain Names and Registrar

The domain names at issue (Disputed Domain Names)

are:

<classmat.com> and

<classmats.com>.

According

to the "whois" database, the Disputed Domain Names were registered on

June 5, 2001, and January 27, 2000, respectively.

The registrar is Computer Service Langenbach GmbH,

doing business as joker.com, Düsseldorf, Germany.

3. Procedural History and Jurisdiction

The

Center received the Complaint on July 9, 2002 (electronic copy), and

July 10, 2002 (hard copy).

The Center verified that the Complaint satisfied the formal requirement

of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the

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

WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the

“Supplemental Rules”). Complainant made

the required payment to the Center.

On July

11, 2002, the Center transmitted via email to the Registrar a request for

registrar verification in connection with this case. On July 12, 2002, the Registrar confirmed from the

whois database the ownership stated above and the contact information. There was additional correspondence between

the Center and the Registrar on July 19, 2002, concerning

Respondents' addresses.

Having verified that the Complaint satisfied the formal

requirements of the Policy and the Rules, on July 12, 2002, the

Center transmitted to the Respondent, via post/courier and e-mail, a

Notification of Complaint and Commencement of the Administrative Proceeding. The formal date of the commencement of this

administrative proceeding was originally July 12, 2002.

The Center received a Response

from Respondent on August 2, 2002 (email), and on

August 5, 2002 (hardcopy).

Complainant had requested that

the matter be decided by a single-member panel. Respondents requested a decision by a three-member panel. See

Policy, paragraph 5(b)(iv). The Center

invited Richard G. Lyon (Presiding

Panelist), Cecil O.D. Branson, Q.C., and David E. Sorkin to serve as

panelists. Each of the panelists

properly verified his independence.

On

August 20, 2002, the Center notified the parties of the panel members' names

and set a projected decision date of September 3, 2002. After receiving the parties' requests to

submit additional materials (see second following paragraph), the Panel

notified the Center, which in turn notified the parties, that the Panel

extended its projected decision date to September 10, 2002.

We find

that the Panel was properly established, that the Respondents received timely

notice of the Complaint, and that the Panel has jurisdiction over this

dispute by reason of the Policy.[1]

On August 23, 2002, by

electronic mail sent simultaneously to the Center, the Panel members,

Respondents, and Respondents' counsel, Respondent's counsel submitted two

additional annexes to the Complaint and a "Reply Memorandum" together

with a request under Rule 12 that the Panel consider these materials. Two days later Respondents submitted to the

Center their Petition to Consider Respondents Reply to Complainant's Reply.

On September 6, 2002, the Panel

issued its Procedural Order No. 1, annexed as a Schedule to this decision.[2] In that Order:

(a) We denied both requests to submit additional information. Submissions beyond the Complaint and

Response are discretionary with the Panel under Rule 12. Panels ordinarily deny leave to submit

materials beyond the complaint and response, as inconsistent with the intent of

the Policy that a case be decided promptly.

We found nothing in Complainant's proposed supplemental materials that

could not have been submitted with the Complaint or that address arguments that

Complainant could not reasonably have anticipated. Each side's proposed additional argument consisted entirely of

repeating arguments that it made in its initial pleading. In deciding this case we take no account of

such proposed supplemental materials. We here note our strong condemnation of

Complainant's sending its request to submit additional material directly to the

Panel members, an inexcusable violation of Rule 8. That alone is reason to deny Complainant's request to submit,

even if otherwise there were a reason under the Rules or the circumstances to

allow it.

(b) We

requested that Complainant provide additional evidence of the number of

subscribers to its website, and such other matters as Complainant may deem

relevant to the name recognition associated with the word classmates and worldwide knowledge of that website, in each case as

of January 27, 2000, the date Respondents registered the first of the

Disputed Domain Names.

(c) We

authorized Respondent to submit evidence it deemed relevant in reply to any

additional evidence that Complainant submitted following the Procedural Order.

Complainant submitted an

affidavit with exhibits (discussed in Sections 4, 5, and 7 below). Respondents submitted nothing further.

Complainant's supplemental

submission provided considerable detail supporting Complainant's initial

affidavit evidence, quoted in Section 4, of its website's popularity among

Internet users at the time Respondents registered the Disputed Domain

Names. Some of this material should

have been included initially in support of the assertions in that

affidavit. In order that our Procedural

Order not be misunderstood as precedent for future panels' increased use of

their authority under Rule 12, we caution future complainants to take care to

provide competent and sufficient evidence with their complaints.

4. Factual

Background

Complainant

owns the well-known website “www.classmates.com”,

which it has operated since 1995 (Complaint, Annex 4). Complainant uses this website for a

business, operated entirely electronically, that permits high school and

college classmates to register with the site and by this means locate and

communicate with their classmates.

According the Complaint, supported by the sworn statement of

Complainant's Intellectual Property Manager,

Classmates[.com] is one of the 10

largest advertisers on the Internet.

Its advertising reaches 60% of the U.S. Internet population each

week. For the past 20 months [from July

2002], it has achieved approximately seven billion ad impressions per month on

43 different websites. For the past

nine months, Classmates has consistently achieved a 50% unaided brand awareness

rating, established by outside research companies. (Complaint, ¶12 and Annexes 9 and 10)

Complainant's

supplemental evidence demonstrated, inter

alia, that in December 1999 and January 2000, when it registered the first

of its service marks and prior to Respondents' registration of the first of the

Disputed Domain Names, Classmates.com had 3.5 million registered users,

attracted over 2 million hits per day, and gained an average of 13,744 new

registrants and 352 paid subscribers per day[3] (McGuane affidavit, paragraphs 6-9 and Exhibits 3-6). NetRatings "ad relevance" charts

indicate that Complainant was one of the heaviest advertisers on the Internet

during that time, and Nielsen/NetRatings ranked its website 111 (January 2000)

and 115 (December 1999) among all websites in number of hits, at times

during those months more frequently visited than “google.com” or “nytimes.com”

(id. paragraphs11-13, 15-16 and

Exhibit 8). .

Respondents

have not disputed this evidence, although as noted in the following section

they do dispute its relevance.

Respondents similarly do not deny having knowledge of Complainant's site

prior to registering the Disputed Domain Names. Given the renown of the “classmates.com” site, they could not

credibly do so.

Complainant

holds a service mark for "Classmates.com" that is registered with the

United States Patent and Trademark Office (USPTO). Complainant also has pending before the USPTO the five additional

service mark applications, each of which incorporates the word classmates. Complainant alleges (Complaint, paragraph 12(1)) that it has used

the service mark classmates

since as early as 1993.

Each

Disputed Domain Name diverts a user to a pornography website entitled

<Hanky- Panky-College.com> that is registered to a company in Amsterdam,

Netherlands. Once diverted, the user is

"mousetrapped" -- unable to exit without clicking on a succession of

advertisements.

5. Parties' Contentions

The Complainant's contentions may be summarized as follows:

a) Complainant

has rights to "Classmates.com" as a registered service mark, and

common law rights to other variants of the word classmates by virtue of its use of these marks on its website and

pending trademark registrations. The

success of Complainant's business has made Complainant's marks famous. The Disputed Domain Names are confusingly

similar to Complainant's "family" of service marks.

b) Respondents

have no right or legitimate interest in the Disputed Domain Names. Respondents have never been known by the

word classmates, and that word bears

no relation to the pornography sites operated by Respondents.

c) Respondents

are using the Disputed Domain Names in bad faith by typosquatting on

Complainant's well-known marks and site.

By so doing, Respondents are intentionally attempting to attract

Internet users to their websites for commercial gain by creating confusion

based on common misspellings of Complainant's mark.

d) Respondents

have been the subject of numerous complaints under the Policy, lawsuits for

violation of the Anticybersquatting Consumer Protective Act of 1999, and an

action by the United States Federal Trade Commission, as a result of their

repeated registering of domain names that are confusingly similar to famous or

well known domain names or trademarks.

The Respondents' contentions may

be summarized as follows:

a) Complainant has no enforceable service

marks, in either its registered mark or the unregistered marks now the subject

of pending USPTO applications, because (a) all are variants of a common English

word and thus not entitled to service mark protection, and (b) the pending

applications have been "suspended" or subject to further office

action by the USPTO. Complainant has no

enforceable rights in its registered mark, because it is generic

("describes the essential feature of Complainant's service") and is

merely its address and thus not entitled to service mark protection under USPTO

Guidelines.[4] Respondents

identify eighteen pending United States trademark applications by parties

unaffiliated with Complainant, and a Google® search yielding 671,000 web pages,

in response to a search for the word classmates,

in support of their assertion that classmates

is generic and consequent argument that the Panel should accord Complainant no

rights in the word.

b) Respondents have a right and legitimate

interest in the Disputed Domain Names, because it is legitimate to register a

domain name based on the misspelling of a generic common word.

c) Respondents did not act in bad faith –

they simply registered misspellings of a common word. Respondents did not register the Disputed Domain Names with the

intent to sell them to the Complainant, to disrupt its business, to prevent it

from registering its mark, or to confuse customers. Complainant has not shown that Respondents registered the

Disputed Domain Names expressly to disrupt Complainant's business, and such a

showing is required by the Policy.

d) Respondents' conduct in other matters and

the nature of their business are irrelevant to this proceeding. Complainant is required to establish its

case under the Policy based on the facts of this case, and has failed to do so.

6. Relevant

Standards

The

Complainant must prove the elements set out in paragraph 4(a) of the

Policy. These elements are as follows:

(i) Respondents'

Disputed Domain Names are identical or confusingly similar to a trademark or

service mark in which Complainant has rights; and

(ii) Respondents

have no rights or legitimate interests in respect to the Disputed Domain Names;

and

(iii) Respondents'

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

Complainant bears the burden of proof on each of these

elements.

7. Discussion and

Findings

Paragraph 4(a)(i)

- Confusing Similarity with a Mark in which Complainant Has Rights

Respondent has admitted that the Disputed Domain Names are

similar (indeed, intentionally similar) to Complainant's marks. The issue we must decide, on the evidence

before the Panel, is whether Complainant has "rights" in its marks

that are sufficient to invoke the Policy.

In order for Respondent to succeed on this point the Panel

must set aside, or disallow rights under, a mark that the USPTO has

allowed. A few arbitration panels that

have taken this step have provided language that gives Respondents' argument

surface credence. The best case for

Respondents is American Airlines Inc. v.

WebWide Internet Communication GmbH, Case No. FA 0204000112518 (NAF,

June 13, 2002) (STOP proceeding), in which the panel stated that

"the jurisdiction provided by Rule 15 is adequate to permit an evaluation

of such a simple mark as the mark 'American'" and held that the

complainant had "no legitimate interest" in the mark despite its

USPTO registration in the same class as respondent's proposed use. Other panels have stated or implied that a

UDRP panel is empowered to find that a respondent had overcome the presumption of validity that obtains from a valid

registration.[5]

Nearly all of these cases from which Respondents cite language favorable to

their cause are however distinguishable on their facts,

[6] or because the panel found that the complainant had failed to

prove the elements of paragraphs 4(a)(ii) or 4(a)(iii) of the Policy.

[7] There is authority that a panel absolutely lacks authority to

ignore a valid USPTO registration. Christie v. Porcaro, WIPO

Case No.D2001-0653; Hola S. A. v. Idealab, WIPO

Case No.D2002-0089 ("It is not for the Panel to decide whether registration

of the marks should or should not have been granted. The holding of a registered

mark is sufficient for the purposes of the Policy. Any claim that the registration

should not have been granted or should be revoked falls to be decided by the

Courts of the relevant country.").

[8] Even when finding no enforceable rights in a mark, panels in

several of the cases cited by Respondents have been careful to point out that

they are not invalidating USPTO action. See, e.g., Interactive Television

Corp. v. Noname.com, WIPO Case No. D2000-0358;

Dial-a-Mattress Operating Corp. v. Ultimate Search, WIPO

Case No. D2001-0764.

While a descriptive term limits considerably a mark owner's

ability to prevent others from comparable use of the term in a domain name, and

the scope of its mark generally, it does not ipso facto render the mark unenforceable or unavailable for use

under the Policy. Given our narrowly

circumscribed jurisdiction and the limited record available to us, we believe

we may deny Complainant all

enforceable rights, expressly including the ability to invoke the Policy, in a

duly registered mark, if ever, only for the most compelling legal reasons or

upon a factual showing far more convincing than the one offered by Respondents

in this case. Here Complainant has

demonstrated, on uncontested evidence, widespread recognition (and

identification with Complainant) by United States Internet users of its

registered mark, similar marks for which USPTO applications are pending,[9]

and a heavily trafficked website. Such recognition and identification were

substantial at the time Respondents registered the Disputed Domain Names.

The Panel finds that Complainant has rights in its

registered classmates mark, and has

satisfied paragraph 4(a)(i) of the Policy.

Paragraph

4(a)(ii) -- Legitimate Interest

Respondent's sole claim of legitimate interest in the Disputed Domain Names,

that it is legitimate to register a domain name based on the misspelling of

a generic common word, falls with their failure on their argument that Complainant

has no rights in its marks. Respondents do not deny awareness, at the time

of registration, of Complainant's marks or the popularity of its website; they

base their claim of legitimate registration and use on the asserted lack of

efficacy of the marks. Respondents meet none of the safe harbors in paragraph

4(a)(ii) of the Policy. They neither were known by nor operated any business

using the Disputed Domain Names prior to Complainant's establishment of rights

in the marks. Respondents' use of the Disputed Domain Names is commercial,

and typosquatting and mousetrapping are compelling evidence of illegitimate

use. E.g., Dell Computer Corp. v. Clinical Evaluations, WIPO

Case No. D2002-0423 (June 30, 2002).

Respondents offer no proof of any of the circumstances

that have prevented other owners of marks with generic terms from proving a

respondent's lack of legitimate interest, such as fair use prior to issuance of

the mark,[10] noncommercial use,[11] or commercial use in

legitimate fields unrelated to the mark owner's business but described by the

common word.[12]

Complainant

has satisfied its burden on this issue.

Paragraph 4(a)(iii) -- Bad Faith

An objective

determination of good faith registration and use may also limit a mark owner's

right to prevent incorporation of a descriptive or generic word in another's

domain name.[13] As with disproving a respondent's legitimate

interest, the use of a descriptive word in the complainant's mark perforce

makes it more difficult for the mark owner to carry its burden of persuasion to

demonstrate bad faith.

Complainant

has met that burden in this case.

Typosquatting is presumptive -- well nigh conclusive -- evidence of

registration and use in bad faith.[14] Respondents have offered no evidence in

rebuttal; once again their denial of bad faith rests on either their own

presumption that Complainant lacks rights in its marks or their argument that

notwithstanding Complainant's marks Respondents may use a misspelling of a

common word for a website whose business is unrelated to that word. Respondents' use of the Disputed Domain

Names is for commercial purposes, and by any objective standard Respondents'

selection of the Disputed Domain Names was intended to attract Complainant's

many users to those sites. As a rote

recital of the legal conclusions he seeks, Respondent Zuccarini's affidavit of

the reasons for selecting these names, set out in the margin,[15] adds nothing of

evidentiary value.

8. Decision

For the

foregoing reasons, we find in favor of the Complainant regarding the Disputed

Domain Names. The Panel orders that the

Disputed Domain Names be transferred to the Complainant.

Richard G. Lyon

Presiding Panelist

Cecil O.D. Branson, Q.C.

Panelist

David E. Sorkin

Panelist

Dated: September 24, 2002

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin

Case No. D2002-0635

PROCEDURAL ORDER NO. 1

1.

The Panel denies Complainant's request, dated August 23, 2002, for

leave to submit additional information.

2.

The Panel denies Respondents' request, dated August 25, 2002, for

leave to file additional information.

3.

Pursuant to Rule 12, the Panel requests that Complainant submit evidence of (a)

the number of subscribers to its <www.classmates.com> website, and (b)

such other matters as Complainant may deem relevant to the name recognition

associated with the word classmates

and worldwide knowledge of that website, in each case as of

January 27, 2000, the date Respondents registered the first of the

domain names at issue in this proceeding.

The Panel wishes such evidence to be in a fuller form than asserted in

paragraph 3 of Annex 9 to the Complaint and to include copies of any reports

and other material documentation.

4.

Complainant shall make its submission to the Center, with a copy to

Respondents' counsel, in electronic form no later than September 11, 2002.

Respondents shall submit to the Center, with a copy to Complainant's

counsel, in electronic form any evidence they consider relevant in response no

later than September 16, 2002.

5.

The Panel expressly requests that the parties submit only evidentiary matter,

without additional argument of counsel.

6.

Any material other than that expressly requested by the Panel will be

disregarded. Inclusion in a submission

of material other than that expressly requested by the Panel will be grounds

for the Panel to disallow the entire submission.

7.

The projected decision date is extended to September 25, 2002.

FOR THE PANEL:

Richard G. Lyon

Presiding Panelist

September 6, 2002

[1] Although in his correspondence with the Center Respondent Zuccarini

threatens the Center and the World Intellectual Property Organization with a

lawsuit, in part "[for] denying me a fair and proper hearing," neither

he in his correspondence nor his counsel in the Response contests the Panel's

jurisdiction under the Policy.

[2] In response to Complainant's request, the Center extended the

deadlines for submissions to September 13, 2002, for Complainant and September

18, 2002, for Respondent, with a projected decision date of September 27, 2002.

[3] A "registered user," as distinguished from a "visitor,"

actually submits information into Complainant's online database. A "paid

member" pays a fee to use the database to contact his or her classmates.

[4] "If the proposed mark is used in a way that would be perceived

as nothing more than an address at which the applicant can be contacted, registration

must be refused. Examples of a domain name used only as an Internet address

include a domain name used in close proximity to language referring to the domain

name as an address, or a domain name displayed merely as part of the information

on how to contact the applicant." United States Patent & Trademark

Office, Examination Guide No. 2-99: Marks Composed, in Whole or in Part, of

Domain Names (1999).

[5] Interactive Television Corp. v. Noname.com (WIPO

Case No. D2000-0358); Dial-a-Mattress Operating Corp. v. Ultimate Search,

WIPO Case No. D2001-0764; Successful

Money Management Seminars Inc. v. Direct Mail Express, Case No FA0101000096457

(NAF 2001); Knight-Ridder, Inc. v. John Zuccarini Cupcake Patrol, Case

No. FA101000096551 (NAF 2001).

[6] The complainant held no registered mark in EMONEY Group, Inc.

v. Eom, Sang Sik, Case No. FA0012000096337 (NAF 2001);Canned Foods, Inc.

v. Ult.Search Inc., Case No. FA0012000096320 (NAF 2001); Dial-a-Mattress

Operating Corp. v. Ultimate Search, WIPO

Case No. D2001-0764; Business Architecture Group, Inc. v. Reflex Publishing,

Case No. FA0104000007051 (NAF 2001); Perricone v. Hirst, Case No. FA0007000095104

(NAF 2000) (intent to use application only); McCune v. BuyDomains.com,

Case No. AF-0854 (eResolution 2001); Knight-Ridder, Inc. v. John Zuccarini

Cupcake Patrol, supra (as to "herald" mark).

[7] Perricone v. Hirst, supra (no bad faith); General Machine

Products Co., Inc. v. Prime Domains, Case No. FA0001000092531 (NAF) (no

proof of lack of legitimate interest); Ultrafem, Inc. v. Royal, Case

No. FA0106000097682 (NAF 2001) (bona fide use by respondent); Energy Source

Inc. v. Your Energy Source, Case No. FA0101000096364 (NAF 2001) (no bad

faith; legitimate use); SOCCERPLEX, Inc. v. NBA Inc., Case No. FA0003000094361

(NAF 2000) (no bad faith); Car Toys, Inc. v. Informa Unlimited, Inc.,

Case No. FA0002000093682 (NAF 2002) (no showing of lack of legitimate use or

bad faith); CRS Technology Corp. v. Condenet, Inc., Case No FA0002000093547

(NAF 2000) (no confusion; no bad faith); Successful Money Management Seminars

Inc. v. Direct Mail Express, supra (legitimate use; no bad faith).

[8] Respondents are well aware of this line of cases. See, e.g.,

Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini,

WIPO Case No. D2001-0700.

[9] Since the registered mark suffices for purposes of paragraph 4(a)(i),

there is no need to decide – and we expressly refrain from deciding -- whether

Complainant's other marks, for which service mark applications are pending in

the PTO, generate rights sufficient to invoke the Policy or satisfy paragraph

4(a)(i).

[10] E.g., EMONEY Group, Inc. v. Eom, Sang Sik, supra note

7.

[11] E.g., Primedia Special Interest Publications, Inc. v. Treadway,

WIPO Case No. D2000-0752.

[12] E.g., PRL USA Holdings, Inc. v. Collazo, WIPO

Case No. D2002-0108.

[13] See, e.g., cases cited at note 7, supra.

[14] E.g., Dell Computer Corp. v. Clinical Evaluations,

WIPO Case No. D2002-0423 (June 30, 2002); Go

Daddy Software, Inc. v. Hadani, WIPO Case No.

D2002-0568

[15] The affidavit reads in its entirety:

1. I registered the [Disputed Domain

Names] because they are both misspellings of the common dictionary word

CLASSMATE.

2. I did not register the [Disputed

Domain Names] for the purpose of selling them to Complainant or any party, to

disrupt Complainant's business, to prevent it from incorporating its trademark,

or to confuse consumers seeking to find Complainant's web site."

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