Paws, Incorporated v. John Zuccarini a/k/a Country Walk
Claim Number: FA0209000125368
Complainant is Paws, Incorporated, Albany, IN (“Complainant”) represented by Robert C. Beasley. Respondent is John Zuccarini a/k/a Country Walk, Andalusia, PA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <garfeild.com>, registered with Joker.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 19, 2002; the Forum received a hard copy of the Complaint on September 23, 2002.
On September 20, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <garfeild.com> is registered with Joker.com and that Respondent is the current registrant of the name. Joker.com 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 September 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 16, 2002, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail. As Respondent’s postal address and fax number were known to be invalid, no attempt was made by the Forum to reach Respondent via post or fax.
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 November 1, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
A. Complainant’s Submission makes the following assertions:
The domain name registered by Respondent, <garfeild.com>, is confusingly similar to Complainant’s registered GARFIELD mark. Respondent has no rights or legitimate interests in the <garfeild.com> domain name. Respondent registered and used the <garfeild.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Paws, Inc., is the holder of the trademark GARFIELD (U.S. Reg. No. 1,151,014). Complainant registered this mark on April 14, 1981, on the Principal Register of the United States Patent and Trademark Office (“USPTO”) and first used it in commerce on June 19, 1978. Complainant also holds approximately 195 registered trademarks for the GARFIELD mark worldwide. Complainant uses its family of marks in conjunction with its syndicated comic strip, the most widely syndicated comic strip in the world. Complainant has approximately 500 licenses in effect worldwide on or in connection with goods and services related to the registered GARFIELD mark. Complainant also operates an official GARFIELD website at <garfield.com>, which receives over 1 million visitors per month.
Respondent, John Zuccarini a/k/a Country Walk, registered the <garfeild.com> domain name November 4, 1999, but is not licensed or otherwise authorized to make any use of the GARFIELD mark for any purpose. Respondent uses the disputed domain name to redirect Internet users to <hanky-panky-college.com>, which claims to be “The Secret to Getting Free XXX Passwords to Top Adult Paysites.”
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and may draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 to and/or Confusingly Similar
Complainant has established rights in its GARFIELD mark through registration on the Principal Register of the USPTO as well as via continuous and widespread use of the mark worldwide.
Respondent’s <garfeild.com> domain name is confusingly similar to Complainant’s registered GARFIELD mark. The only differences between Respondent’s domain name and the registered mark of Complainant is the addition of the top-level domain “.com” after the mark and the transposition of the letters “i” and “e” in the domain name. These minimal differences do not prevent a finding of confusing similarity under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Pier 1 Imp., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to Complainant's PIER 1 mark).
Accordingly, the Panel finds that the <garfeild.com> domain name is confusingly similar to Complainant’s registered GARFIELD mark under Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
The burden of proving a lack of rights or legitimate interests in a domain name rests initially upon Complainant. Under Policy ¶¶ 4(c)(i-iii), Respondent can rely on a “bona fide offering of goods or services” connected with the disputed domain name, the fact that it has been “commonly known by the domain name,” or that it is making a “legitimate noncommercial or fair use of the domain name” to demonstrate a right or legitimate interest in a domain name. If Complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), thereby shifting the burden to Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
It is neither a bona fide offering of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is confusingly similar to an established mark diverts Internet users to pornographic sites. Such use tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent. 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 tarnish 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). As stated, Respondent’s use of a confusingly similar domain name to gain a commercial profit by directing unsuspecting Internet users to pornographic websites is not a bona fide offering of goods or services, nor a noncommercial or fair use of the domain name.
Respondent is not commonly known by the name GARFEILD or <garfeild.com>. Complainant has not given Respondent permission or consent to use its GARFIELD mark, and Respondent’s registration of the disputed domain name occurred years after Complainant initially registered its mark and began using it in commerce. Furthermore, due to the widespread popularity of the GARFIELD mark, it is doubtful that any entity could claim to be commonly known by the mark. For these reasons, Complainant has sufficiently established that Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i-iii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Once a complainant has successfully presented its prima facie case illustrating a respondent’s lack of rights or legitimate interests in its domain name, the burden of demonstrating rights and legitimate interests in the domain name shifts to the respondent.
As Respondent submitted nothing to the Panel in Response to this Complaint, Respondent fails to meet that burden, and the Panel may conclude that Respondent has no rights or legitimate interests in the disputed domain name. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also 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).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in its domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent registered and used the disputed <garfeild.com> domain name in bad faith. Policy ¶ 4(b)(iv) states that in circumstances indicating that the disputed domain name was registered to “intentionally attempt to attract, for commercial gain, Internet users…by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of your website or location,” bad faith use and registration is evidenced. See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain). Evidence of bad faith when diverting Internet users is even stronger when the diversion sends users to a pornographic website. See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”).
Respondent is using the disputed domain name to redirect Internet users to a pornographic website, presumably in return for compensation. Internet users attempting to reach Complainant’s <garfield.com> domain name could be confused as to the sponsorship of or affiliation between Respondent’s site and Complainant’s business under the registered GARFIELD mark. As Respondent submitted no Response to the Complaint, the Panel concludes from the facts presented by Complainant that Respondent registered a confusingly similar domain name in order to gain revenue from diverting Internet users to pornographic websites, both registering and using its domain name in bad faith. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to 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).
Accordingly, the Panel finds that Respondent both registered and used its domain name in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <garfeild.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 15, 2002.
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