Coldwater Creek Inc. v. John Zuccarini

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Coldwater Creek Inc. v. John Zuccarini

Case No. D2003-0708

1. The Parties

The Complainant is Coldwater Creek Inc., Sandpoint, Idaho, United States of America,

represented by Foster Pepper & Shefelman, PLLC, United States of America.

The Respondent is John Zuccarini, Chiriqui, Panama.

2. The Domain Name and Registrar

The disputed domain name <coldwatercrek.com> is registered with CSL Computer

Service Langenbach GmbH dba Joker.com.

3. Procedural History

The Complaint was filed electronically with the WIPO Arbitration and Mediation

Center (the "Center") on September 8, 2003, hardcopies

of which were received at the Center on September 10, 2003. On September 9

and 17, 2003, the Center transmitted by email to CSL Computer Service

Langenbach GmbH dba Joker.com a request for registrar verification in connection

with the domain name at issue. On September 10 and 23, 2003,

CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the

Center its verification response confirming that the Respondent is listed as

the registrant and providing the contact details for the administrative, billing,

and technical contact. The Center verified that the Complaint satisfied the

formal requirements of the 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").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally

notified the Respondent of the Complaint, and the proceedings commenced on September 26, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

October 16, 2003. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on October 21, 2003.

The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on

October 31, 2003. The Panel finds that it was properly constituted.

The Panel has submitted the Statement of Acceptance and Declaration of Impartiality

and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

4. Factual Background

Complainant is the owner of the following trademark registrations:

TRADEMARK

REG. No.

Class

(Int’l)

DATE OF REGISTRATION

COUNTRY

"COLDWATER

CREEK"

1,531,418

42

March

21, 1989

USA

"COLDWATER

CREEK"

1,861,320

42

November

1, 1994

USA

"COLDWATER

CREEK"

1,876,534

14,

16,

25

January

31, 1995

USA

"COLDWATER

CREEK"

2,217,173

35

January

12, 1999

USA

"COLDWATER

CREEK"

2,544,861

35

March

5, 2002

USA

"COLDWATER

CREEK"

2,555,721

25

April

2, 2002

USA

"COLDWATER

CREEK"

2,602,690

04

July

30, 2002

USA

"COLDWATER

CREEK"

2,634,836

30

October

15, 2002

USA

"COLDWATER

CREEK"

2,714,390

03

May

6, 2003

USA

"COLDWATER

CREEK" (AND DESIGN)

2,740,447

25

July

22, 2003

USA

"COLDWATER

CREEK"

TMA

448,547

-

January

10, 2001

CANADA

"COLDWATER

CREEK"

002378594

29

November

22, 2002

Community

Trademark

"COLDWATER

CREEK"

000815787

04,

14,

16, 18,

21, 24,

25, 35,

39

April

10, 2002

Community

Trademark

"COLDWATER

CREEK"

4283173

20,

24,

25

June

11, 1999

Japan

"COLDWATER

CREEK"

4556805

29

April

5, 2002

Japan

"COLDWATER

CREEK"

4110594

16

February

6, 1998

Japan

"COLDWATER

CREEK"

4332739

35

November

5, 1999

Japan

"COLDWATER

CREEK"

3339541

14

August

15, 1997

Japan

The contested domain name <coldwatercrek.com> was registered on October 24, 2000.

5. Parties’ Contentions

A. Complainant

A.1. Identity or Confusing Similarity

Complainant submitted the following arguments:

- That since 1984, Complainant has been and continues to be extensively engaged

in the manufacture, distribution, advertising, promotion and sale of women’s

clothing throughout the United States and internationally.

- That the trademark COLDWATER CREEK has been in use continuously since 1984,

in connection with numerous products and services.

- That due to significant marketing and promotional efforts, consumers currently

spend in excess of $300 million per year on COLDWATER CREEK brand items through

catalog, online and retail sales; that Complainant has developed considerable

and valuable goodwill and reputation with respect to the COLDWATER CREEK mark,

through marketing and advertising activities; and that COLDWATER CREEK has reached

well-known or famous trademark status.

- That a significant component of Complainant’s business is through online

purchases; that the domain name <coldwatercreek.com> has been in use in

connection with Complainant’s website since 1998; and that consumers

are familiar with the "www.coldwatercreek.com" website promoted in

Complainant’s retail outlets and on mail order catalogs mailed to consumers

periodically throughout the year.

- That the domain name <coldwatercrek.com> is nearly identical to Complainant’s

domain name <coldwatercreek.com>; that the two names differ by only one

letter "e" and the differences between the names could easily be attributed

to a typographical error.

- That the use of the domain name <coldwatercrek.com> blurs the distinctiveness

of the trademark COLDWATER CREEK and dilutes the value of the mark as a source

identifier.

A.2. Respondent’s lack of rights or legitimate interests in respect of the

domain name

Complainant filed the following arguments:

- That Respondent is not licensed to use the trademark COLDWATER CREEK or any

term that would be considered confusingly similar to the allegedly famous trademark

COLDWATER CREEK.

- That Respondent is not known by the domain name <coldwatercrek.com>

nor has it conducted any genuine business using the term "coldwatercrek",

or referring to the domain name <coldwatercrek.com>.

- That Respondent is not making non-commercial or fair use of the contested

domain name <coldwatercrek.com>.

- That Respondent’s domain name was registered as an obvious misspelling of

Complainant’s well known trademark COLDWATER CREEK to redirect Internet users

to its site; that when the disputed domain name is entered in the browser line,

"mouse trapping" occurs; that there is no connection of any kind between

the advertisements displayed or within "adult material" displayed

in connection with the contested domain name and the terms "cold water",

"creek" or "crek."

- That Respondent has been determined in numerous prior administrative proceedings

under the Policy to have engaged in abusive domain name registration in similar

circumstances (and cites FTC v John Zuccarini, (D.C. E.D. Penn)).

- That Respondent was recently arrested in Florida in connection with his domain

name activity.

- That Respondent should be considered as having no rights or legitimate interests

in respect of the domain name <coldwatercrek.com>; that apparently Respondent’s

sole purpose for registering the domain name <coldwatercrek.com> was to

intentionally attempt to misdirect Internet users to its cite when they intended

to reach the site to which the domain name <coldwatercreek.com> resolves,

which is owned and operated by Complainant, the owner of multiple trademark

registrations for COLDWATER CREEK.

- That the activity that is a subject of this Complaint is another example

of illegal domain name activity by Respondent - known offender, Mr. Zuccarini.

A.3. Bad faith registration and use

Complainant submitted the following allegations:

- That apparently Respondent’s sole purpose for registering the disputed domain

name <coldwatercrek.com> was to intentionally attempt to misdirect Internet

users to its cite when they intended to reach the site to which the domain name

<coldwatercreek.com> resolves.

- That multiple attempts by Complainant to reach Respondent by mail, e-mail

or fax have been futile; that letters have been returned; that the contact information

listed on the relevant WHOIS database is incomplete and seems to be a conscious

effort on behalf of Respondent to remain anonymous.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with the Policy, paragraph 4(a), the Complainant must prove that:

"(i) the domain name in question is identical or confusingly similar to

a trademark or service mark in which the Complainant has rights, and

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

domain name, and

(iii) the domain name has been registered and is being used in bad faith."

In the administrative proceeding, the Complainant must prove that each three

of these elements are present.

As the Respondent has failed to submit a response to the Complaint, the Panel

may choose to accept as true all of the allegations of the Complaint. Encyclopaedia

Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO

Case No. D2002-0487 (August 12, 2002); Talk City, Inc. v. Michael

Robertson, WIPO Case No. D2000-0009

(February 29, 2000).

A. Identical or Confusingly Similar

Complainant has submitted sufficient evidence to prove that it holds exclusive

rights to the trademark COLDWATER CREEK.

Complainant has argued and proved that the trademark COLDWATER CREEK has been

extensively publicized and that it is distinctive of the wares and services

that it covers.

Respondent’s deletion of a letter "e" from Complainant’s trademark

COLDWATER CREEK creates a term that is confusingly similar to such mark. See

Reuters Limited v. Global Net 2000, Inc, WIPO

Case No. D2000-0441 (July 13, 2000), in that "The domain

name which differs by only one letter from a trademark has a greater tendency

to be confusingly similar to the trademark where the trademark is highly distinctive."

The elimination of a space between the words "coldwater" and "creek"

(which cannot be reproduced in the domain name anyway), as well as the addition

of the generic top-level domain (gTLD) ".com" to the contested domain

name are without legal significance. See CBS Broadcasting Inc. v. Worldwide

Webs, Inc., WIPO Case No. D2000-0834

(September 4, 2000). See also Ahmanson Land Company v. Vince Curtis,

WIPO Case No. D2000-0859 (December 4, 2000),

(citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO

Case No. D2000-0300 (June 13, 2000); J.P. Morgan & Co.,

Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing,

WIPO Case No. D2000-0035 (March 23, 2000)).

The disputed domain name <coldwatercrek.com> is confusingly similar to

Complainant’s trademark COLDWATER CREEK, visually and phonetically. The deletion

of a letter "e" in the disputed domain name adds no distinctiveness

to such domain name, as compared to said trademark.

Paraphrasing AT&T Corp. v. Global Net 2000, Inc., WIPO

Case No. D2000-1447 (December 23, 2000), this Panel finds

that but for the elimination of one letter "e", the subject domain

name would be identical to Complainant’s trademark COLDWATER CREEK. It clearly

is similar. It is also confusing (see also CBS Broadcasting Inc. v. Worldwide

Webs, Inc., supra).

Following VeriSign, Inc. v. Onlinemalls, WIPO

Case No. D2000-1446 (January 31, 2001), this Panel concludes that

Respondent appears to have employed minor misspellings of Complainant’s mark

to take bad faith advantage of spelling errors made by Internet users while

attempting to enter Complainant’s Internet address from the web browser, i.e.,

that Respondent’s conduct falls within the definition of – "typosquatting",

which consists of taking advantage of common misspellings made by Internet users

who are looking for a particular site of a particular provider of goods or services,

in order to obtain some benefit therefrom.

According to Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc.,

Stonybrook Investments, GlobalNet 2000, Inc. and Yahoo Search, Inc., WIPO

Case No. D2000-0587 (August 10, 2000), typosquatting is "a

practice that has been condemned and been found to be confusingly similar to

the marks which they mimic".

Therefore, the Panel finds that the domain name <coldwatercrek.com> is

confusingly similar to the trademark COLDWATER CREEK in which Complainant has

rights. The first requirement of the Policy has been met.

B. Rights or Legitimate Interests

The following are examples of circumstances where Respondent may have rights

or legitimate interests over a contested domain name:

"(i) before any notice to you of the dispute, your use of, or demonstrable

preparations to use, the domain name or a name corresponding to the domain name

in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue." (Policy, paragraph 4(c))

Complainant has argued that it has not granted Respondent a license to use

the trademark COLDWATER CREEK, or any term that would be considered confusingly

similar to said trademark. In this sense, the Panel follows TPI holdings,

Inc. v. John Zuccarini, WIPO Case No.

D2001-0797 (August 22, 2001), in that: "[o]nce a Complainant

makes a prima facie showing that a Respondent lacks rights in the Domain

Name, the burden of proof shifts to the Respondent to come forward with demonstrable

evidence proving a legitimate interest in the Domain Name"… "This

is consistent with the Policy in paragraph 4(c)(iii), which speaks in terms

of the Respondent demonstrating his rights or legitimate interests to the Domain

Name for legitimate non-commercial or fair use purposes. The Policy strikes

a fair relationship between the overall onus of proof in regard to an issue

in a case as contrasted with the proof of a fact material to that issue".

Accordingly, the Panel finds no evidence in the record showing that Respondent

is entitled to use the trademark COLDWATER CREEK, and that Respondent has not

submitted any piece of evidence proving a legitimate interest in the contested

domain name.

Respondent has not shown that he has made any demonstrable preparations to

use the disputed domain name in connection with a bona fide offering

of goods or services. In fact, Complainant has argued that Respondent was doing

exactly the opposite, i.e., using the disputed domain name to attract Internet

users to Respondent’s cite, where such users were mouse-trapped. Previous Panels

have found that Respondent has been continuously engaged in mouse-trapping behavior

(see, for example NCRAS Management, LP v. Cupcake City and John Zuccarini,

WIPO Case No. D2000-1803 (February 26, 2001),

citing in turn WebMD Corporation v. Cupcake Patrol, NAF Case No. FA96106

(January 2, 2001), United Feature Syndicate, Inc. v. Mr. John Zuccarini,

WIPO Case No. D2000-1449 (December 29, 2000),

Microsoft Corporation v. Cupcake Patrol, WIPO

Case No. D2000-1344 (December 10, 2000). Deviating Internet users

and preempting them from reaching their intended destination, in order to trap

them into a site that they did not choose to visit, cannot constitute a bona

fide offering of goods or services.

According to the evidence filed by Complainant, Respondent is not known by

the domain name <coldwatercrek.com>. Moreover, Respondent is well known

in the world of the Domain Name System (DNS), not as <coldwatercrek.com>,

but as John Zuccarini, a consuetudinary cybersquatter.

Respondent’s behavior cannot be catalogued as "legitimate, noncommercial

or fair use" of the domain name. Respondent has engaged in a typosquatting

practice to divert consumers looking for Complainant’s products or services

on the Internet. Such users are mislead and confused by Respondent’s domain

name, and diverted to Respondent’s website against their will, where they are

trapped thereafter. Complainant has argued that Respondent displays advertisements

and adult material in his site. Respondent has not contested this argument.

Such content cannot give rise to a legitimate, noncommercial or fair use of

the domain name.

The Panel thus finds that Respondent has no rights or legitimate interests

in the disputed domain name. The second requirement set forth in the Policy

has therefore been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall

be evidence of registration and use in bad faith:

"(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."

Complainant has proved that Respondent is conducting a typosquatting practice,

i.e., taking advantage of common misspellings made by Internet users who are

looking for a particular site of a particular provider of goods or services,

in order to obtain some benefit therefrom. Respondent has submitted no justification

for registering a domain name that is almost identical to Complainant’s trademark

COLDWATER CREEK, but for the elimination of a letter "e", and the

deletion of a space (which cannot be reproduced in the domain name anyway –see

point 6A supra).

Typosquatting has been held under the Policy to be evidence of bad faith registration

of a domain name (see News Group Newspapers Limited and News Network Limited

v. Momm Amed Fa, WIPO Case No. D2000-1623

(January 18, 2001); America Online, Inc. v. Intellectual-Assets.com,

Inc., WIPO Case No. D2000-1043

(December 14, 2000); Link Clicks Inc. d/b/a Ad Here and TOTALLYFREESTUFF.COM

v. John Zuccarini d/b/a Cupcake Patrol, WIPO

Case No. D2000-1547 (January 12, 2001).

Even if the user who arrives at Respondent’s website may promptly conclude

that it is not what he or she was originally looking for, Respondent has already

succeeded in its purpose of using the [trade and] service mark to attract the

user with a view to commercial gain (Yahoo! Inc. and GeoCities v. Data Art

Corp. et al., WIPO Case No. D2000-0587,

citing in turn National Football League Properties, Inc. and Chargers Football

Company v. One Sex Entertainment Co., a/k/a chargergirls.net, WIPO

Case No. D2000-0118 (April 17, 2000)).

According to TPI holdings, Inc. v. John Zuccarini, WIPO

Case No. D2001-0797 (August 22, 2001), the practice of registering

Domain Names which are the same as trademarks or service marks in which the

Complainant has rights, but changing one letter in these names, is a breach

of the Policy. Examples of such cases in which the Respondent has been the losing

party include: Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake

Patrol a/ka Country Walk a/k/a Cupcake Party, WIPO Case

No. D2000-0330; Diageo p.l.c. v. John Zuccarini, WIPO

Case No. D2000-0541; Dow Jones & Company, Inc. and Dow Jones LP v.

John Zuccarini, WIPO Case No. D2000-0578;

Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini, WIPO

Case No. D2000-0928; Saks & Company v. John Zuccarini, WIPO

Case No. D2000-1285. In the Encyclopaedia Britannica case, there

were four domain names at issue, two in Dow Jones, twenty-three in Yahoo,

and only one in Saks & Company. There are others. The Respondent’s

conduct has also been examined by a United States court in Shields v. Zuccarini,

54 U.S.P.Q. 2d 1166 (E.D.Pa. 2000). The Respondent has registered

variations of other famous trademarks, trade names, and celebrity names such

as "Sony", "Blue Mountain Arts", "Hewlett-Packard",

"National Car Rental", "Britney Spears", "Salma Hayek",

"Oprah Winfrey", "Jennifer Lopez", "Star Wars",

"Mayo Clinic", "Michael Jordan", "Ally McBeal",

"Ricky Martin", "USA Today", "Taco Bell", "Austin

Powers", "Microsoft" and "Playboy". Indeed, according

to the opinion in the Shields case, the Respondent admitted that he had

registered "thousands of other domain names, because [underlining

added] they are confusingly similar to others’ famous marks or personal

names -- and thus are likely misspellings of these names -- in an effort to

divert Internet traffic to his sites".

Respondent has distinguished himself for free-riding on the goodwill of others,

particularly by registering domain names that are identical or confusingly similar

to trademarks owned by third parties, in order to profit from said domain names.

This case is no exception. Respondent has obtained a domain name that is confusingly

similar to Complainant’s trademark COLDWATER CREEK. The domain name <coldwatercrek.com>

is a common misspelling of said mark and was registered to create confusion

among those Internet users who are looking for Complainant’s products and services.

The disputed domain name has been used for diverting Internet users to Respondent’s

site, where they are mouse-trapped and exposed to Respondent’s advertisements

and adult content. Such practice has been considered by other Panels to constitute

bad faith registration and use. This Panel agrees.

The third requirement of the Policy has therefore been fulfilled.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain name <coldwatercrek.com>

be transferred to the Complainant.

Kiyoshi I. Tsuru

Sole Panelist

Dated: November 15, 2003