PRIMEDIA Specialty Group Inc. v. null John Zuccarini

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Primedia Speciality Group Inc. v. John Zuccarini

Case No. D2002-1017

1. The Parties

Complainant Primedia Speciality Group Inc. (Primedia) is a corporation with

an address at New York, NY 10151, United States of America.

Respondent is John Zuccarini (Zuccarini), an individual having an address at

Andalusia, PA 19020, United States of America.

2. Domain Name and Registrar

The domain name in issue is <teenmagizine.com>.

The registrar is CSL Computer Service Langenbach GmbH dba Joker.com (CSL GmbH).

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received

the complaint in this proceeding on October 31, 2002, via email, and on November

5, 2002, in hard copy form, together with the required fee.

On November 5, 2002, the Center received via email CSL GmbH’s confirmation

inter alia that (1) the Uniform Domain Name Dispute Resolution Policy (the "Policy")

is applicable to the domain name, and (2) Zuccarini is the owner, administrative

contact, technical contact and billing contact. CSL GmbH’s records show the

domain name was registered October 19, 1999.

The Center verified that the complaint satisfies the formal requirements 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").

On November 6, 2002, the Center transmitted to the parties Notification of

Complaint and Commencement of Administrative Proceeding, together with copy

of complaint. The Center advised the parties that the formal date of the commencement

of this administrative proceeding is November 6, 2002, and the last day for

sending Zuccarini’s response to Primedia and to the Center is November 26, 2002.

On November 25, 2002, in response to Zuccarini’s November 22, 2002 request

to which Primedia did not object, the Center extended to December 16, 2002,

the due date for Zuccarini’s response.

On December 17, 2002, the Center received Zuccarini’s response, together with

Zuccarini’s election to have the proceeding decided by a three-member panel.

On December 23, 2002, the Center advised the parties that Messrs. Alan L. Limbury

and Richard W. Page had been appointed as Panelists. On January 8, 2003, the

Center advised the parties that, in addition to Messrs. Limbury and Page, Mr.

David Plant had been appointed Presiding Panelist, and absent exceptional circumstances,

the panel is required to forward its decision to the Center by January 22, 2003.

4. Factual Background; Parties’ Contentions

a. The Trademarks

The complaint is based on the trademark TEEN.

TEEN is the subject of three United States registrations (Exhibit A to the

complaint), namely:

‘TEEN - Reg. No. 789, 364 - May 11, 1965 - First use November 1956

Teen - Reg. No. 2,173, 130 - July 14, 1998 - First use July 1997

TEEN - Reg. No. 2,173,134 - July 14, 1998 - First use July 1997.

The 1956 ‘Teen registration is for a periodical magazine. The 1997 registrations

are for periodical magazines of interest to teenagers. Primedia avers it is

the sole and exclusive owner of the registrations.

Primedia avers that it and its predecessors have published TEEN magazine since

1957. TEEN magazine is a "wholesome" magazine targeted to junior high

and high school female readers between the ages of 12 and 17.

Primedia asserts it has spent tens of millions of dollars promoting the magazine.

It has been read by "millions upon millions" of readers. Also, Primedia

avers it has "extensively licensed the TEEN Magazine mark" for use

on jewelry, keychains, hair accessories, fiction books, clothing, etc.

Primedia avers that since 1998, Primedia and its predecessors have published

an online magazine, viz. TEEN mag.com, accessible on the Internet at "www.teenmag.com".

The site is designed for teenage girls between 12 and 17, "with an emphasis

on guidance in areas including social interaction, fashion, beauty, relationships

and celebrity information."

b. The Complaint Re Respondent’s Activities

Primedia contends the domain in issue is identical or confusingly similar to

Primedia’s registered mark TEEN. Primedia cites decisions in which "deliberate

misspellings" of trademarked names have been deemed confusingly similar

under the Policy, including Primedia v. Zuccarini, WIPO Case No. D2000-1186

(November 20, 2000). Primedia points to the panel’s reference in that decision

to Zuccarini’s admission in a United States District Court that he "registered

thousands of Internet domain names only because they were confusingly similar

to others’ famous marks or personal names."[1]

Primedia asserts Zuccarini has no rights or legitimate interests in the domain

name in issue. Primedia avers –

(1) Zuccarini does not own a mark in any way related to the TEEN magazine marks,

(2) TEEN magazine is not Zuccarini’s personal name, and Zuccarini does not

engage in any business under the TEEN magazine name,

(3) Zuccarini does not use the domain name in issue in connection with any

bona fide offering of goods or services; rather Zuccarini uses the domain name

to "misleadingly divert consumers to a sexually oriented adult content

website at "www.hanky-panky-college.com" citing Exhibit D to the complaint,

and

(4) Zuccarini is not a licensee of Primedia and has never been authorized to

use the mark "TEEN Magazine" or to register the domain name.

Primedia contends the domain name in issue has been registered and used in

bad faith. Primedia avers Zuccarini registered the domain name "with knowledge

of Complainant’s TEEN Magazine, precisely because it is identical or confusingly

similar to Complainant’s trademark, in order to divert Internet users to his

pornographic web site for commercial gain." Primedia notes Zuccarini is

a "notorious cybersquatter who has already been found to have registered

a huge number of domain names in bad faith." Primedia cites Shields

v. Zuccarini, 254 F.3d 476, 483 (3d Cir. 2001) (e.g. "Zuccarini admits

that he registers domain names ... because they are likely misspellings of famous

marks or personal names"), Electronique Boutique HoldingCorp. v. Zuccarini,

2000 U.S.Dist. LEXIS 15719 (ED Pa Oct. 30. 2000 (e.g. Zuccarini "has victimized

a wide variety of people and entities"), and Federal Trade Commission

v. Zuccarini, 2002 U.S.Dist. LEXIS 13324 (ED Pa April 10, 2002). In addition,

Primedia cites more than 20 WIPO decisions involving Zuccarini and misspelled

trademarks.

Primedia avers it will suffer "substantial damage" as a result of

the linkage of the confusingly similar domain name in issue to a pornographic

website. Primedia cites eight WIPO decisions to the effect that association

of a domain name with a pornographic website is evidence of bad faith.

Primedia requests that the domain name be transferred to Primedia.

c. The Response

(i) Introduction

Zuccarini asserts there is "absolutely no basis" to entitle Primedia

to the domain name in issue, and the complaint should be dismissed.

Zuccarini argues Primedia only has trademarks for the word TEEN, and Primedia

alleges no trademark rights for "Teen Magazine". Zuccarini concludes

Primedia’s mark is neither identical nor confusingly similar to the domain name

in issue. Zuccarini claims Primedia uses the term TEEN in "its most generic

and descriptive sense." Zuccarini states there are numerous third party

generic uses of "teen magazine" on the Internet (i.e. more than 1.1

million hits from a Google.com search on "teen magazine", and more

than 46 million for "teen") [2]

– assertedly conclusive evidence that "teen magazine" is a generic

term for a "teen magazine." Thus, Zuccarini asserts Primedia has no

enforceable rights to the term "teen magazine."

Zuccarini agrees decisions have gone against Zuccarini in connection with misspelled

trademarks. Zuccarini distinguishes those cases from this case as "misspelling

of what is principally a common descriptive term, not of an inherently distinctive

trademark." Zuccarini refers to a ruling in his favor re the misspelling

of "the common term ‘herald’," Knight-Ridder, Inc. v. John Zuccarini

a/k/a Cupcake Patrol, No. 96551 (NAF March 6, 2001).

Zuccarini claims he has rights to the domain name in dispute because "teenmagizine.com

is composed of a descriptive term incorporating only the common dictionary word

‘teen’ and a misspelling of the word magazine." Zuccarini asserts it is

well established under the Policy that "anyone is entitled to register

a common word, and that the first to register such word has a legitimate interest

in it." Zuccarini asserts the result should be no different for a misspelling

of a common term.

Zuccarini contends there is no evidence of registration or use in bad faith.

Zuccarini asserts Primedia must prove either (1) the disputed domain name was

registered specifically to sell to Primedia or (2) the value of the disputed

domain name derives exclusively from the fame of Primedia’s mark. Zuccarini

says there is no evidence to support either basis for finding bad faith registration

and use. Zuccarini claims he registered the domain name because it is the misspelling

of a common term ("teen magazine").

(ii) Identity or Confusing Similarity

Zuccarini iterates that Primedia has no trademark rights in the generic term

"Teen Magazine". Zuccarini asserts the complaint must be dismissed

because Primedia cannot demonstrate a "protectible legal interest in the

term" [i.e. Teen Magazine], citing various authorities. Accordingly, Zuccarini

asserts the complaint must be dismissed.

Zuccarini iterates that the mark "Teen" and the domain name in dispute

are neither identical nor confusingly similar, asserting in light of the third

party uses "there is no reason why consumers would be likely to confuse

this descriptive domain name with Complainant’s single word mark Teen."

Zuccarini contends also that, even if Primedia had a trademark in "teen

magazine", it could only challenge an identical domain name, citing Dial-A-Mattress

v. Ultimate Search, WIPO Case No. D2001-0764

(September 26, 2001).

(iii) Rights and Legitimate Interests

Zuccarini sets out the three illustrative circumstances in Policy, Paragraph

4(c), which demonstrate registrant’s rights or legitimate interests. Citing

again the Knight-Ridder decision involving "herald", Zuccarini

asserts he has a legitimate interest in the domain name in issue which he argues

is the misspelling of a generic common word. Zuccarini refers to the many uses

of "teen magazine" and "teen" on the Internet.

In addition, Zuccarini cites decisions for the proposition that "mere

ownership of a common term domain should, in and of itself, establish the owner’s

rights and legitimate interest." Zuccarini asserts the "rule is no

different when it applies to the misspelling of a common word."

(iv) Registration and Use in Bad Faith

Zuccarini contends Primedia has not demonstrated the domain name in issue was

registered and is being used in bad faith. Zuccarini sets out the four illustrative

examples of Policy, Paragraph 4(b) that may evidence bad faith, and argues that

there is no evidence that Zuccarini fits any of the four.

Zuccarini asserts "direct proof" is required to show a "descriptive

term domain name was registered or acquired solely for the purpose of profiting

from Complainant’s trademark rights," citing Ultrafem, Inc. v. Warren

R. Royal, No. 97682 (NAF August 2, 2001).

Zuccarini contends that Primedia has provided no evidence that Zuccarini intended

to "attract its users," and asserts Primedia must offer evidence

that demonstrates Zuccarini "has specifically intended to confuse consumers

seeking out complainant." Zuccarini cites three decisions in support of

this proposition.

Zuccarini argues other cases involving Zuccarini cannot compensate for Primedia’s

"utter failure to demonstrate any bad faith ... in connection with the

domain name at issue here," citing EPLAN Software v. Chad Folkening

et al, WIPO Case No. D2000-0806 (September

28, 2000).

Zuccarini requests the panel dismiss the complaint.

5. Discussion and Findings

a. The Policy and the Rules

Paragraph 4(a) of the Policy directs that Primedia must prove, with respect

to the domain name in issue, each of the following:

(1) The domain name is identical or confusingly similar to a mark in which

Primedia has rights, and

(2) Zuccarini has no rights or legitimate interests in respect of the domain

name, and

(3) The domain name has been registered and is being used in bad faith.

b. The Mark

Primedia has enforceable rights in the mark TEEN. "‘Teen" has been

the subject of a United States registration since 1965. Other variants have

been registered since July 1998. All registrations precede the October

19, 1999, registration of the domain name. It is undisputed that millions of

readers have been familiar with TEEN Magazine. It is also undisputed that TEEN

Magazine is a "wholesome" magazine directed to a female audience in

the 12 -17 age range.

The domain name <teenmagizine.com> is not identical to the mark TEEN.

However, the domain name is confusingly similar to the mark TEEN. Zuccarini

is estopped to contend otherwise, in light of the references to his admissions

in opinions of United States Courts, supra. It is inconceivable that Zuccarini

did not have TEEN Magazine in mind when he registered the domain name in issue.

As found in Primedia v. Zuccarini, WIPO

Case No. D2000-1186 (November 20, 2000), on facts strikingly similar to

those here (e.g. the mark was SEVENTEEN, and one of the domain names was <seventeenmagizine.com>,

registered October 25, 1999), "the disputed domain names gain their very

importance and apparent value by reason of their confusing similarity to Complainant’s

mark [there, "Seventeen"]." In a footnote to this finding, the

panel noted:

"Respondent [Zuccarini] would likely be estopped from denying the confusingly

similar nature of the disputed domain names. During Respondent’s deposition

and at the preliminary injunction hearing in the course of Respondent’s Shields

litigation, Respondent admitted that he had registered thousands of Internet

domain names only because they were confusingly similar to others’ famous marks

or personal names."

In light of the record here and elsewhere, it is inconceivable that Zuccarini

merely registered a combination of two common, generic terms, with one term

misspelled. The only fair inference is that, consistent with his well-known

practice, Zuccarini registered this domain name solely to cause confusion

with respect to consumers who would search for a TEEN Magazine site on the Web.

Even without this Zuccarini history, abundant decisions have found confusing

similarity when another term, misspelled or not, has been added to a mark to

form a domain name. On this score, the reasoning in the earlier Primedia

decision, WIPO Case No. D2000-1186,

is especially apposite. See also, for example, Yahoo! Inc. v. David Ashby,

WIPO Case No. D2000-0241 (June 14, 2000),

Yahoo! Inc. v. Eitan Zviely, et al, WIPO

Case No. D2000-0273 (June 14, 2000), PACCAR, Inc. v. Enyart Associates

et al, WIPO Case No. D2000-0289 (May

26, 2000), Ermenegildo Zegna Corporation v.Estco Enterprises Ltd.,

WIPO Case No. D2000-0395 (July 27, 2000),

Chanel, Inc.v. Estco Technology Group, WIPO

Case No. D2000-0413 (September 18, 2000), United States Olympic Committee

(USOC) v. Tri B-U-N Eco. Project, WIPO

Case No. D2000-0435 (July 13, 2000), Kabushiki Kaisha Toshiba d/b/a Toshiba

Corporation v. Distribution Purchasing & Logistics Corp., WIPO

Case No. D2000-0464 (July 27, 2000), National Collegiate Athletic Association

v. Rodd Garner and IntheZone.ws, WIPO

Case No. D2000-0940 (November 7, 2000), and Christie’s Inc. v. Tiffany’s

Jewelry Auction Inc., WIPO Case No. D2001-0075

(March 6, 2001).

Primedia has carried its burden on this element.

c. Rights and Legitimate Interests

For magazines, TEEN is not a common, generic term. It is a registered trademark

known to millions. <teenmagizine.com> does not merely incorporate the

innocent misspelling of a common dictionary word in combination with an allegedly

generic term. Rather, Zuccarini’s registration of this domain name, with the

Primedia trademark TEEN and its misspelling of "magazine", is an integral

part of his massive cybersquatting (in this case, typosquatting) campaign.

The Knight-Ridder decision does not avail Zuccarini here. It appears

that Knight-Ridder owned United States trademark registrations in the mark "The

Miami Herald". In the portion of the decision on which Zuccarini appears

to rely, the panel found that Knight-Ridder owned trademark rights in "The

Herald", but at the same time stated:

"Complainant does not allege that HERALD is a common law trademark. ...

Complainant does not claim any registered status for HERALD, nor does it claim

that such mark has achieved secondary meaning ... the mark HERALD is descriptive,

not distinctive (even among newspapers ...), and, as Respondent correctly argues,

generic and cannot trump a domain name which is not even spelled the same way."

The domain name in issue with regard to the so-called HERALD mark was <hearld.com>.

In a split decision, the majority of the panel ruled that domain name was not

identical or confusingly similar to HERALD, Zuccarini had rights and legitimate

interests with respect to that domain name, and it was not necessary to rule

on the issue of bad faith with respect to that domain name. The minority panel

member found (1) the identity/confusing similarity test was met for <hearld.com>,

(2) the illegitimacy test was satisfied for that domain name, and (3) Zuccarini

had registered and was using <hearld.com> in bad faith.

Here, of course, Primedia has registered trademark rights in TEEN, going back

more than 35 years. The addition of "magizine" to that mark to form

a domain name, in light of the authorities we cite in subsection b. above, does

not undercut a finding of confusing similarity. Here, as a consequence, Primedia’s

rights are paramount to Zuccarini’s much later registration of the domain name

in dispute. And here, we have found bad faith registration and use, infra, whereas

the majority in Knight-Ridder passed on that issue with regard to HERALD.

Primedia has carried its burden on this element.

d. Bad Faith Registration and Use

Here, it is plain that Zuccarini intended to capitalize on the good will associated

with TEEN Magazine, and the mark TEEN, when he registered <teenmagizine.com>.

While "magazine" alone may be generic, Zuccarini did not register

only that term, or a misspelling of it. Rather, Zuccarini registered the full

title of Primedia’s magazine "TEEN Magazine" – enhancing the prospects

of confusion with Primedia’s mark. Misspelling "magazine" (i.e. magizine)

in association with the mark TEEN in a domain name is not warranted. Indeed,

given Zuccarini’s admitted intent in United States Court proceedings, and given

the overwhelming evidence of Zuccarini’s cybersquatting, it is only fair to

infer that Zuccarini registered the domain name in dispute here in bad faith.

Also, Zuccarini’s use of the domain name to misdirect consumers to his pornographic

website is in bad faith. The content of Zuccarini’s website is the antithesis

of the content and reputation of TEEN Magazine.

Zuccarini’s conduct in this case is no different in quality from that in over

50 ICANN cases in which he has been found to have violated the Policy.

Primedia has carried its burden on this element.

6. Decision

In light of the foregoing reasons and findings by the panel, the panel directs

that the domain name <teenmagizine.com> be transferred to Primedia.

David Plant

Presiding Panelist

Alan L. Limbury

Panelist

Richard W. Page

Panelist

Dated: January 21, 2003

Footnotes:

1. Shields v. Zuccarini, 2000 WL 1056400,

at *3 (ED Pa June 5, 2000).

2. Zuccarini reproduces some pages from Google.com

queries at Exhibit 1.

More cases by this complainant

• Primedia Specialty Group Inc. v. Vernon Pursley — D2007-0791 · jpmag.com · Complaint denied · 29 Jul 2007
• Primedia Specialty Group Inc. v. Alan Lam — D2007-0789 · hondatuning.com · Transfer · 27 Jul 2007
• Primedia Specialty Group Inc. v. SuperStreet.com — D2007-0729 · superstreet.com · Transfer · 23 Aug 2007
• Primedia Specialty Group Inc. — D2007-0720 · Terminated