The J. Jill Group, Inc. v. John Zuccarini d/b/a RaveClub Berlin
Claim Number: FA0205000112627
Complainant is The J. Jill Group, Inc., Quincy, MA (“Complainant”) represented by Hal L. Poret, of Foley, Hoag & Eliot LLP. Respondent is John Zuccarini d/b/a RaveClub Berlin, Cherry Hill, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jjilll.com>, registered with Joker.com.
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.
James P. Buchele as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 2, 2002; the Forum received a hard copy of the Complaint on May 6, 2002.
On May 3, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <jjilll.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 May 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 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 email@example.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 June 27, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <jjilll.com> domain name is confusingly similar to Complainant’s registered J. JILL mark.
2. Respondent has no rights or legitimate interests in the <jjilll.com> domain name.
3. Respondent registered and used the disputed domain name in bad faith.
B. Respondent did not submit a Response.
Complainant is the owner of numerous registered trademarks containing the J. JILL mark, including: U.S. Reg. No. 1204106 issued on August 3, 1982 reflecting a first use date of January 1, 1954, Singapore Reg. No. T98/06509G registered on February 18, 1998, and Israel Reg. No. 119493 issued September 7, 1999, among others. In addition to the foregoing trademarks, Complainant is the registered owner of the following Internet domains, among others: <jjill.com> registered on June 2, 1997, <jjill.net> registered on April 7, 1999, <jjill.org> registered on April 7, 1999 and <jjills.com> registered on October 31, 2001.
Respondent registered the <jjilll.com> domain name on September 1, 2000. Respondent is currently using the contested domain name to direct Internet users to <amaturevideos.nl>, a commercial Internet site that features pornographic material. The web page consists of eighteen pornographic images form various adult websites along with brief descriptions of the contents of such websites. Complainant’s investigation revealed that Respondent is a well-known trafficker of domain names who specializes in the misspelling of well-known marks and directing Internet users to pornographic sites. Respondent has been found to be in violation of the UDRP on numerous occasions.
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.
Complainant has established its rights in the J. JILL mark through registration with the United States Patent and Trademark Office (“USPTO”) and other jurisdictions.
Respondent’s <jjilll.com> domain name is confusingly similar to Complainant’s mark. Respondent’s introduction of a third ‘l’ to Complainant’s registered mark does not detract from the overall impression of the domain name. Also, by capitalizing on a misspelling of a famous mark Respondent fails to create a distinct domain name, but nevertheless renders it confusingly similar to Complainant’s mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such generic typos do not change the Respondent’s infringement on a core trademark held by Complainant); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders it confusingly similar to Complainant’s marks).
Furthermore, Respondent’s disputed domain name is confusingly similar to Complainant’s J. JILL mark because the deletion of a space is inconsequential to a Policy ¶ 4(a)(i) analysis. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Because Respondent has not submitted a Response in this matter, the Panel may presume it has no rights or legitimate interests in respect of the disputed domain name. 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 has used the disputed domain name to redirect Internet users to a pornographic website. Respondent registered a confusingly similar domain name and is taking advantage of the goodwill established by Complainant in its mark. Such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).
Respondent is not commonly known by “jjilll” or <jjilll.com> pursuant to Policy ¶ 4(c)(ii). Respondent is only known to this Panel as John Zuccarini d/b/a RaveClub Berlin. 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 Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).
The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.
Because of the famous and distinct nature of Complainant’s mark and Complainant’s J. JILL listing on the Principal Register of the USPTO, Respondent is thought to have been on notice as to the existence of Complainant’s mark at the time Respondent registered the infringing <jjilll.com> domain name. Thus, Respondent’s registration despite this notice is evidence of bad faith registration. See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and Respondent should have been aware of it); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark, and thus, Respondent registered the domain name in bad faith).
Respondent registered <jjilll.com>, a domain name that incorporates Complainant’s mark, in order to trade on Complainant’s goodwill and create confusion as to the source or sponsorship of its website. Such behavior demonstrates bad faith registration and use within the meaning of Policy ¶ 4(b)(iv). Respondent’s sole purpose in registering Complainant’s established mark was to maximize the amount of Internet traffic it could divert to Respondent’s website. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding bad faith where Respondent threatened to develop the domain name in question into a pornography site).
Complainant has provided evidence that Respondent has a history of registering infringing domain names that incorporate the trademarks and service marks of others. Because Respondent has not refuted this claim, the Panel may accept the assertion as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). Respondent’s actions reflect a pattern of behavior known as typosquatting, which constitutes bad faith under the Policy. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated the Policy by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Budget Rent-a-Car Corp. v. Cupcake City, D2000-1020 (WIPO Oct. 19, 2000) (finding a pattern of conduct in registering domain names that infringe upon others’ marks where the Respondent has registered over 1,300 domain names).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby GRANTED.
Accordingly, it is Ordered that the <jjilll.com> domain name be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: July 1, 2002
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