Cabela's Incorporated v. John Zuccarini
Claim Number: FA0203000105895
PARTIES
Complainant
is Cabela's Incorporated, Sidney, NE
(“Complainant”) represented by David
Hutton, Esq. Respondent is John
Zuccarini, Andalusia, PA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <cabalas.com>,
registered with Joker.com.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
Judge
Harold Kalina (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on March 15, 2002; the Forum received a hard copy of the
Complaint on March 18, 2002.
On
March 18, 2002, Joker.com confirmed by e-mail to the Forum that the domain name
<cabalas.com> is registered
with Joker.com and that Respondent is the current registrant of the name. Joker.com has verified that Respondent is
bound by the Joker.com registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
March 19, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 8,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@cabalas.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
April 16, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Respondent’s <cabalas.com>
domain name is confusingly similar to Complainant’s CABELA’S regsitered
trademark.
Respondent
does not have rights or legitimate interests in the disputed domain name.
Respondent
regsitered and used the disputed domain name in bad faith.
B.
Respondent
No
Response was submitted.
FINDINGS
Complainant has rights to its CABELA’S
mark due to its registration of the mark with the United States Patent and
Trademark Office (USPTO) on January 25, 1983, Reg. No. 1,224,738. Complainant also registered CABELAS.COM with
the USPTO, Reg. No. 2,247,977.
Complainant has used the CABELA’S mark since 1961 in connection with its
sale of hunting, fishing, and outdoor clothing equipment. Complainant has invested substantial sums of
money in developing and marketing CABELA’S.
Respondent registered the disputed domain
name on January 10, 2000. Respondent
initially registered <cabelasucks.com>, and when Complainant requested
that Respondent transfer that domain name, Respondent retaliated by registering
<cabalas.com>.
Respondent has registered many famous trademarks in the past, and it has
established a pattern of trademark
infringment. See Hewlett-Packard Co. v.
Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) and Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000).
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw
such inferences it considers appropriate pursuant to paragraph 14(b) of the
Rules.
Paragraph
4(a) of the Policy requires that the Complainant must prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1)
the domain name registered by the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the Respondent 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.
Identical and/or Confusingly Similar
Complainant has rights to its CABELA’S
mark due to its registration of the mark with the USPTO on January 25, 1983,
Reg. No. 1,224,738.
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent is presumed not to have any
rights or legitimate interests in the disputed domain name because it never
submitted a Response to this Complaint.
See Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that
Respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
Respondent,
known as John Zuccarini, is not commonly known as <cabalas.com> or CABELA’S.
As a result, it does not have any rights or legitimate interests under Policy
¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that Respondent does not have rights in a domain name
when Respondent is not known by the mark); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where Respondent was not
commonly known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The Panel may find that Respondent’s
long pattern of registering domain names confusingly similar to registered
famous marks is evidence of its bad faith under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated
Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon
others’ famous and registered trademarks); see
also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO
Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where
Respondent registered multiple infringing domain names containing the
trademarks or service marks of other widely known Australian businesses).
Respondent’s use of the confusingly similar <cabalas.com> domain name creates
a likelihood of confusion among Internet users as to the source, sponsorship,
and affiliation of the disputed domain name.
This indicates Respondent’s bad faith use and registration under Policy ¶
4(b)(iv). See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29,
2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not
used the domain name because “It makes no sense whatever to wait until it
actually ‘uses’ the name, when inevitably, when there is such use, it will
create the confusion described in the Policy”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum
Aug. 29, 2000) (finding bad faith where the domain name in question is
obviously connected with the Complainant’s well-known marks, thus creating a
likelihood of confusion strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <cabalas.com>, be transferred from Respondent to
Complainant.
Judge Harold Kalina (Ret.)
Dated:
April 22, 2002
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