Zone Labs, Inc. v. John Zuccarini d/b/a
The Cupcake Patrol
Claim Number: FA0308000190613
Complainant is Zone Labs, Inc., San Francisco, CA
(“Complainant”) represented by Michelle
R. Harbottle of Gray Cary Ware & Freidenrich LLP.
Respondent is John Zuccarini d/b/a The Cupcake Patrol, Volcan, Panama (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <zonelarm.com> registered with Computer
Services Langenbach Gmbh d/b/a 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. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 26, 2003; the Forum received a hard copy of the
Complaint on August 28, 2003.
On
August 27, 2003, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by
e-mail to the Forum that the domain name <zonelarm.com> is
registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that
Respondent is the current registrant of the name. Computer Services Langenbach
Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services
Langenbach Gmbh d/b/a 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 5, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of September 25, 2003 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@zonelarm.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
October 9, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <zonelarm.com>
domain name is confusingly similar to Complainant’s ZONEALARM mark.
2. Respondent does not have any rights or
legitimate interests in the <zonelarm.com> domain name.
3. Respondent registered and used the <zonelarm.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
provides evidence of a trademark registration with the United States Patent and
Trademark Office (“USPTO”) for the ZONEALARM mark (Reg. No. 2,510,036
registered on November 20, 2001) related to downloadable computer software for
providing security for computers connected to the Internet. Complainant’s
certificate of registration lists a first use in commerce of July 13, 1999 and
a trademark application filing date of January 11, 2001.
Complainant’s
products are advertised and promoted extensively in newspapers, magazines and
in other advertising media through the use of the ZONEALARM mark. Last year,
Complainant spent over $3,800,000 on worldwide advertising and promotion.
Complainant operates a website at <zonealarm.com> where Internet users
find information about and technical support for Complainant’s products.
Respondent
registered the <zonelarm.com> domain name on August 15, 2001.
Respondent is using the disputed domain name to redirect Internet users to a
website that displays pornographic material. When seeking to leave Respondent’s
website, Internet users receive pop-up advertisements for a variety of goods
and services.
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
draw such inferences 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.
Complainant has
established rights in the ZONEALARM mark through registration with the USPTO
that relate back to Complainant’s filing of its trademark registration
application on January 11, 2001. See FDNY Fire Safety Educ. Fund, Inc. v.
Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that
Complainant’s rights in the FDNY mark relate back to the date that its
successful trademark registration was filed with the U.S. Patent and Trademark
Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960,
144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is
prima facie proof of continual use of the mark, dating back to the filing date
of the application for registration).
Complainant
argues that Respondent’s <zonelarm.com> domain name is confusingly
similar to Complainant’s ZONEALARM mark because the disputed domain name
appropriates Complainant’s mark with the exception that the first letter “a” is
omitted. The omission of this letter fails to ameliorate the confusing
similarity between the domain name and the mark because the domain name
capitalizes on a probable typographical error when an Internet user attempts to
type a domain name into the URL. 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 State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).
Accordingly, the
Panel finds that Complainant has demonstrated Policy ¶ 4(a)(i).
Respondent has
not come forward to challenge the allegations included in the Complaint. Thus,
the Panel accepts all of Complainant’s reasonable allegations and inferences as
true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard”); see also Desotec
N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that
failing to respond allows a presumption that Complainant’s allegations are true
unless clearly contradicted by the evidence).
Moreover, based
on Respondent’s failure to answer the Complaint, the Panel presumes Respondent
lacks any rights to or legitimate interests in the disputed domain name with
regard to Policy ¶ 4(a)(ii). See
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); see
also Parfums Christian Dior v. QTR
Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
Response, Respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
Respondent is
using the <zonelarm.com> domain name to redirect Internet traffic
to a website that provides pornographic material, along with pop-up
advertisements offering a variety of goods and services. Respondent’s use of
the disputed domain name establishes neither 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 Paws, Inc. v. Zuccarini a/k/a
Country Walk, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the
use of a domain name that is confusingly similar to an established mark to
divert Internet users to an adult-oriented website “tarnishes Complainant’s
mark and does not evidence noncommercial or fair use of the domain name by a
respondent”); see also Am. Eagle Outfitters, Inc. v. Zuccarini a/k/a Country
Walk, FA 155178 (Nat. Arb. Forum June 10, 2003) (finding that Respondent’s
use of a domain name that was a misspelling of Complainant’s mark to redirect
Internet users to an adult-oriented website was not a bona fide offering of
goods or services) see also Geoffrey, Inc. v. Toyrus.com, FA 150406
(Nat. Arb. Forum April 5, 2003) (holding that Respondent’s use of the disputed
domain name, a simple misspelling of Complainant’s mark, to divert Internet
users to a website that featured pop-up advertisements and an Internet directory,
was neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the domain name).
Furthermore,
Complainant has not authorized or licensed Respondent in any way to use or
exploit the ZONEALARM mark. The Panel finds that Respondent has not established
that it is commonly known by ZONELARM or <zonelarm.com> because
there is no evidence in the record that suggests Respondent is commonly known
by the mark and the mark fails to spell correctly a cognizable phrase. See RMO,
Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known
by the domain name prior to registration of the domain name to prevail"); see
also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003)
(noting that “the
disputed domain name does not even correctly spell a cognizable phrase” in
finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).
The Panel finds
that Complainant has demonstrated Policy ¶ 4(a)(ii).
Respondent’s
link of a domain name--confusingly similar to Complainant’s mark--to a website
offering pornographic material and pop-up advertisements indicates that
Respondent is profiting commercially from its use of the disputed domain name.
Accordingly, the Panel finds that Respondent registered and subsequently used
the <zonelarm.com> domain name with the intent to attract Internet
users to its website for commercial gain by creating a likelihood of confusion
with Complainant’s mark, which is evidence of bad faith registration and use
under Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Party Night Inc. &
Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to
adult-oriented websites was evidence that the domain names were being used in
bad faith); see also Bama
Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding
bad faith where Respondent attracted users to advertisements).
Furthermore,
Respondent’s registration and use of a domain name that capitalizes on the
typographical error of an Internet user is considered typosquatting.
Typosquatting, itself is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Nat’l Ass’n of
Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21,
2003) (“Typosquatting is the intentional misspelling of words with intent to
intercept and siphon off traffic from its intended destination, by preying on
Internauts who make common typing errors. Typosquatting is inherently parasitic
and of itself evidence of bad faith”); see also L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12,
2001) (finding that Respondent acted in bad faith by establishing a pattern of
registering misspellings of famous trademarks and names).
The Panel finds
that Complainant has demonstrated Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <zonelarm.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
October 15, 2003
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