Gemstar-TV Guide International, Inc. v. John Zuccarini
Claim Number: FA0207000115076
Complainant is Gemstar-TV Guide International, Inc., Tulsa, OK (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is John Zuccarini, Andalusia, PA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tvguid.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 A.Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 10, 2002; the Forum received a hard copy of the Complaint on July 15, 2002.
On July 12, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <tvguid.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 July 16, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 5, 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 firstname.lastname@example.org 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 August 15, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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.
The <tvguid.com> domain name is confusingly similar to Complainant’s TV GUIDE mark.
Respondent has no rights or legitimate interests in the <tvguid.com> domain name.
Respondent registered and used the <tvguid.com> domain name in bad faith.
Respondent has failed to submit a Response in this proceeding.
Complainant has used the TV GUIDE mark for over fifty years to denote its television guide magazine. Complainant first registered the TV GUIDE mark with the United States Patent and Trademark Office (“USPTO”) on August 27, 1957 (Reg. No. 650,942). Since the early days of Complainant’s magazine publishing, Complainant has expanded its TV GUIDE related business to provide a number of electronic television information services. Complainant has consistently sought protection of the TV GUIDE mark by continuously registering the mark with the USPTO (e.g., 1,137,497; 1,767,448; 2,018,001; 2,142,554; 2,144,499; 2,312,449; and 2,554,596).
Complainant’s TV GUIDE services have developed into the largest print and electronic guidance products in the world. Complainant’s products and services reach close to 100 million subscribers. Furthermore, Complainant operates a website at <tvguide.com>, which provides similar content as its paper-based publications. This website receives millions of hits from consumers seeking television related information. Due to Complainant’s expansive consumer reach and the longstanding use of the TV GUIDE mark, Complainant’s mark has become famous and synonymous with Complainant’s valued services.
Respondent registered the <tvguid.com> domain name on December 10, 1999. Respondent is revealed as John Zuccarini, a notorious typosquatter who frequently registers domain names incorporating the misspelling of famous marks and links them to pornographic websites containing banner advertisements. In fact, Respondent’s <tvguid.com> domain name resolves to the pornographic <hanky-panky-college.com> website that displays banner advertisements.
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 established its rights in the TV GUIDE mark through proof of multiple trademark registrations with the USPTO and continuous use for over fifty years.
Respondent’s <tvguid.com> domain name is an obvious misspelling of Complainant’s distinct and famous TV GUIDE mark. Registering a domain name that deviates from a famous mark by the omission of one letter does not defeat a confusing similarity claim. Furthermore, Respondent is a known typosquatter and it is apparent that the misspelling was done on purpose. Therefore, Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a 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); 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 the domain name confusingly similar to Complainant’s marks); see also 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 Respondent’s infringement on a core trademark held by Complainant).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in the <tvguid.com> domain name and Respondent failed to answer the Complaint. Because Complainant’s assertions remain uncontested, it may be presumed that Respondent has no such rights or legitimate interests in the <tvguid.com> 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); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Furthermore, due to Respondent’s failure to submit a Response, all reasonable inferences may be made in favor of Complainant. 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”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent uses the <tvguid.com> domain name to link Internet users to a pornographic website, <hanky-panky-college.com>, that contains banner advertisements. This is a common practice for Respondent, as Respondent is well-known for a pattern of the same behavior. Respondent clearly benefits financially from the banner advertisements, while at the same time tarnishes Complainant’s famous mark with a display of pornography. Therefore, Respondent’s use of the domain name does not constitute a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it represent a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); 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 has no connection with the TV GUIDE mark or any mark that is substantially related to it. Respondent, John Zuccarini, has a history of registering infringing domain names and linking them to the <hanky-panky-college.com> website. Therefore, Respondent’s identity makes it clear that Respondent is not commonly known by the <tvguid.com> domain name. Hence, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <tvguid.com> domain name; thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy contains a non-exhaustive list of circumstances that, if found, warrant a finding of bad faith. Since the specified bad faith criteria are non-exclusive, the Panel must examine the totality of circumstances when analyzing the Policy ¶ 4(a)(iii) bad faith requirement. See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Respondent is a notorious typosquatter, who repeatedly registers domain names containing misspelled famous marks. An inference may therefore be drawn, in the current case, that Respondent was aware of Complainant’s TV GUIDE mark. It is clear that Respondent attempts to opportunistically financially benefit from the goodwill associated with Complainant’s longstanding use of the TV GUIDE mark. Therefore, Respondent’s infringing registration of <tvguid.com> with knowledge of Complainant’s rights and interests in the TV GUIDE mark and the clear intent to trade off of the mark’s goodwill, warrants a bad faith registration finding under Policy ¶ 4(a)(iii). See Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding that Respondent’s registration of names of famous people, with slight typographical errors, was evidence of bad faith); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).
Furthermore, Respondent uses the <tvguid.com> domain name to divert Internet traffic to the pornographic <hanky-panky-college.com> website, while financially benefiting from the pop-up advertisements. Such a use is intended to deceive Internet users who mistakenly misspell Complainant’s mark when searching for Complainant on the Internet. Therefore, Respondent’s use of the subject domain name constitutes bad faith use pursuant to Policy ¶ 4(b)(iv). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
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 <tvguid.com> be transferred from Respondent to Complainant.
James A. Crary, Panelist
Dated: September 3 2002
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