Microsoft Corporation v. RaveClub Berlin

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Rave Club Berlin

Case No. D2002-0890

1. The Parties

The Complainant is Microsoft Corporation, a Washington (United States of America)

corporation whose principal place of business in Redmond, Washington, United

States of America. Complainant is represented by Suzanne V. Wilson and Tricia

A. Cross of the law firm Arnold & Porter, Los Angeles, California, United

States of America.

The Respondent is Rave Club Berlin. According to the "whois" database maintained

by the Registrar, Respondent is located in Cherry Hill, New Jersey, United States

of America, or Amstelveen, Netherlands. Respondent has not appeared, directly

or through a representative, in this proceeding.

2. Domain Names and Registrar

The domain names at issue [Contested Domain Names] are:

<encartaencyclopaedia.com>

<encartadictionary.com>

The registrar is Computer Service Langenbach GmbH, doing business as joker.com,

Düsseldorf, Germany.

3. Procedural History

The WIPO Arbitration and Mediation Center [the Center] received the Complaint

on September 25, 2002, (electronic copy) and September 26, 2002, (hard

copy). The Center verified that the Complaint satisfies 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

Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental

Rules]. Complainant made the required payment to the Center.

On September 26, 2002, the Center transmitted via e-mail to the Registrar a

request for registrar verification in connection with this case. On September 26,

2002, the Registrar transmitted its verification response to the Center, confirming

that Respondent is the Contested Domain Names' registrant, administrative contact,

technical contact, and billing contact[1].

The Center verified that the Complaint satisfied the formal requirements of

the Policy and the Rules on September September 26, 2002.

The formal date of the commencement of this administrative proceeding is October

1, 2002.

On October 1, 2002, the Center transmitted Notifications of Complaint and Commencement

of Administrative Proceeding to Respondent by email and post/courier (the latter

to both the United States and Netherlands addresses listed for Respondent in

the whois database). Both copies sent by courier to New Jersey were returned

undelivered. The copy sent to the Netherlands was delivered.

Respondent did not file a Response. The Center sent Respondent a Notification

of Respondent Default on October 23, 2002.

In view of Complainant's designation of a single panelist and Respondent's

default, the Center invited Richard G. Lyon to serve as a panelist.

On November 6, 2002, after receiving Mr. Lyon's Statement of Acceptance and

Declaration of Impartiality and Independence, the Center transmitted to the

parties a Notification of Appointment of Administrative Panel. The projected

decision date is November 20, 2002.

4. Jurisdiction

A preliminary issue in cases such as this one, where no Response has been filed,

is whether the Panel has obtained jurisdiction over the Respondent. Rule 10(b)

requires that "each Party [be] given a fair opportunity to present its case."[2]

Rule 2(a) requires that the Center employ "reasonably available means calculated

to achieve actual notice to Respondent."

As outlined above, the Center employed each of the measures listed in Rule

2(a). Here the Center has proof of e-mail delivery. . Respondent has consented

to the Policy by contract, in its agreement with the Registrar. Even if it did

not receive actual notice of the Complaint, it suffers no unfairness when the

Complainant and the Center complied with the prescribed notice procedure. It

is worth noting that Respondent and its principal, John Zuccarini, have been

party to many proceedings under the Policy and in the courts[3].

If ever there were a respondent familiar with the Center's procedures, and a

registrant's contractual obligations and the consequences of not supplying current

information with the Registrar, it is the Respondent in this proceeding.

I find that Respondent was "treated with equality" and "given a fair opportunity

to present its case" and that there is jurisdiction over Respondent and the

Contested Domain Names.

The Panel shall issue its decision based on the Complaint, the evidence presented,

the Policy, the Rules, and the Supplemental Rules.

5. Factual Background

The following description of the facts and circumstances comes from the Complaint.

Each of Complainant's charging allegations is supported by documentary evidence

annexed to the Complaint.

Microsoft is a well-known, worldwide provider of computer operating systems,

software, and related products and services, including products designed for

use as reference or educational tools. It uses its registered trademark ENCARTA

for this last category. Complainant has obtained trademark registrations in

over forty countries for its ENCARTA marks in several classes of goods and services.

In the United States these include (i) online information services, including

providing reference and encyclopedic data in electronic form; (ii) computer

program and general reference data in the form of a multi-media encyclopedia

on a variety of subjects, stored on a compact disc; (iii) publications

such as books, magazines, newsletters, brochures, pamphlets, atlases, maps,

user guides for atlases and maps, dictionaries, thesauruses, instruction manuals,

user guides and reference guides for a multi-media encyclopedia on a variety

of subjects; and (iv) instruction manuals, user guides and reference guides

for a multi-media encyclopedia. Complainant has expended substantial amounts

to establish and promote the ENCARTA marks in these fields.

The United States Patent and Trademark Office has granted Microsoft the following

trademark registrations that consist of or include the word ENCARTA:

Mark

International Class

Registration No.

Registration Date

ENCARTA

16

1,864,262

November 22, 1994

ENCARTA

9

1,874,547

January 17, 1995

ENCARTA

41

1,995,180

August 20, 1996

ENCARTA

16

2,304,532

December 28, 1999

Respondent registered the Contested Domain Names with the Registrar on or about

March 24 (<encartadictionary.com>) and April 6 (<encartaencyclopedia.com>),

2001.

At the time the Complaint was filed each of the Contested Domain Names resolved

to pornographic website located at <hanky-panky-college.com>." Connecting

to the Internet website <www.hanky-panky-college.com> also brought up

another website, located at <www.yes-yes-yes.com> which appears to be

a directory web site. The website <www.yes-yes-yes.com> is registered

to John Zuccarini, the principal of Respondent. Once at the "<www.hanky-panky-college.com>"

website the user is "mousetrapped."[4]

Respondent has recently changed the content of the website maintained at the

Contested Domain Names. Now they resolve to a directory webpage located at <"www.yourdailyfreebees.com.">[5]

These directory pages contains several categories of hyperlinks, such as "Shopping,"

"Video Games," and "Domain Names," to other commercial websites. When an Internet

user clicks on one of these hyperlinks, he or she is connected to an apparently

independent website located at "www.roar.com."

There is no evidence in the record of any association, legitimate or otherwise,

between Respondent and the word ENCARTA.

6. Parties' Contentions

Complainant contends as follows:

The Contested Domain Names are identical to Complainant's ENCARTA marks except

for the addition of words that describe services provided by Complaint under

those marks.

Respondent has no rights or legitimate interests with respect to the Contested

Domain Names because (1) Complainant is the owner of record of the ENCARTA marks,

(2) Respondent was on notice of such ownership at the time it registered the

Contested Domain Names, (3) Complainant has not licensed Respondent to use its

ENCARTA marks, and (4) Respondent has never been known by the name ENCARTA.

Respondent registered the Contested Domain Names in bad faith because (1) Respondent

registered the domain names for the purpose of gaining a business advantage

as a result of Internet users' confusing Respondent's site with Complainant's

site and thereby capitalizing on Complainant's good name and goodwill, (2) Respondent

provided incomplete data in the Registrar's "whois" database, and (3) Respondent

registered the Contested Domain Names for commercial purposes.

Use in bad faith is established by the foregoing and by Respondent's diversion

from the websites at the Contested Domain Names to pornographic sites, and,

later, other commercial sites unrelated to the ENCARTA name.

Respondent's history of cybersquatting is evidence of both registration and

use in bad faith.

Respondent has not responded to the Complaint.

I shall therefore proceed to a decision based solely on the Complaint. Complainant[6]

retains its burden of proving the requisite elements of Paragraph 4(a) of the

Policy[7].

7. Discussion and Findings

In order to prevail in this administrative proceeding, Complainant must prove

the following elements, which are set out in Paragraph 4(a) of the Policy:

(i) Respondent's domain names are identical or confusingly similar to a trademark

or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests with respect to the domain

names; and

(iii) Respondent's domain names have been registered and are being used in

bad faith.

Domain Names Identical or Confusingly Similar to Trademark

The Contested Domain Names incorporate Complainant's registered mark and words

that describe some of the services Complainant offers under that mark. Identity

and confusion are therefore established. See, e.g., CBS Broadcasting

Inc. v. Hassad, WIPO Case No. D2000-1064.

Absence of Legitimate Interest in the Domain Names

A complainant has the burden of proving that the respondent does not have a

legitimate interest in the disputed domain name[8].

Since there is not a strict logical means of proving a negative fact, several

Panels have recognized that a complainant can meet this burden with a prima

facie showing[9]. Once a complainant

has made this prima facie showing, the burden shifts to the respondent

to show that the respondent has a legitimate interest in the domain name.

Although decisions under the Policy are not entirely consistent about what

constitutes a prima facie showing, under any standard Complainant in

this case has met its burden of proof with competent evidence, as described

above.

No legitimate interest in the Contested Domain Names appears on the record.

Respondent offers nothing. The uncontested evidence demonstrates that Respondent

is using the Contested Domain Names to take advantage of the reputation of Complainant's

marks. There is no evidence that Respondent has ever "been commonly known by

the domain name[s]." Rather than making a "legitimate noncommercial or fair

use of the domain name[s]," Respondent is using the site "for commercial gain"

and "to misleadingly divert consumers."[10]

Bad Faith

Complainant has established bad faith in registration and use of the Contested

Domain Names, even without relying on Respondent's past conduct in respect to

other domain names. Use of another's mark in a pornography site is clear evidence

of bad faith[11], and the circumstances

that prove illegitimacy set out above similarly establish bad faith in both

use and registration. While bad faith in registration may be inferred from subsequent

bad faith use, here there is also independent evidence of registration in bad

faith: Respondent's failure to provide complete information to the Registrar.

8. Decision

For the foregoing reasons, the Panel orders that the Contested Domain Names

be transferred to the Complainant.

Richard G. Lyon

Sole Panelist

Dated: November 12, 2002

1. Because the case file initially did

not include a copy of the verification for , at my request

the Center re-confirmed Respondent's ownership on November 12, 2002.

2. See, e.g.; AT&T Corp. v. Damian Macafee,

WIPO Case No. D2001-1159.

3. Some of these are listed in Federal Trade

Commission v. Zuccarini, Civil Action No. 01-CV-4854 (E.D. Pa. April 9, 2002);

Sony Corp. v. Zuccarini d/b/a Rave Club Berlin, NAF Claim No. FA0204000109040

(May 23, 2002); AT&T v. Zuccarini d/b/a RaveClub Berlin, WIPO

Case No. D2001-1503 (April 3, 2002); see also Shields v. Zuccarini, 254

F.3d 476 (3d Cir. 2001). Complainant's description of Respondent as an "incorrigible,"

"infamous," and "notorious" cybersquatter has been established in many UDRP

and court cases.

4. Complainant includes copies of the first

page of the "www.hanky-panky-college.com" site with its Complaint. I independently

verified the content of this website, including the mousetrapping, in connection

with another case. See Classmates Online, Inc. v. John Zuccarini, individually

and dba RaveClub Berlin, WIPO Case No. D2002-0635.

M

5. Complainant has submitted a copy of the

"www.yourdailyfreebees.com" webpage. I independently verified the accuracy of

Complainant's allegations on November 8, 2002.

6. Rule 14.

7. Dell Computer Corp. v. Clinical Evaluations,

WIPO Case No. D2002-0423.

8. Policy, 4(a); Dell Computer Corp. v. Clinical

Evaluations, supra.

9. Compare Credit Suisse Group v. Milanes-Espinach,

WIPO Case No. D2000-1376 and Anti Flirt

S.A. v. WCVC, WIPO Case No. D2000-1553,

with Intocast AG v. Lee Daeyoon, WIPO Case

No. D2000-1467.

10. Policy, 4(c), parts (ii) and (iii).

11. E.g., Fairchild Publications, Inc.

v. Yomtobian, WIPO Case No. D2000-1003.

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