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Дела по доменам общего пользования
Дела по национальным доменам
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