Victoria's Secret et al v. John Zuccarini dba Cupcake Patrol, Cupcake Party and Country Walk
Claim Number: FA0010000095762
The Complainant is Victoria's Secret et al Columbus, OH, USA ("Complainant") represented by Mellise Blakeslee, McDermott, Will & Emery. The Respondent is John Zuccarini dba Cupcake Patrol, Cupcake Party and Country Walk, Andalusia, PA, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are victoriasecretmodels.com, victoriasecretsmodesl.com, victoriassecretmodesl.com, victoriasecerets.com, victoriasecretes.com, victoreasecret.com, victoriasecerts.com, lanebyrant.com, and laynebryant.com registered with CORE and Network Solutions.
The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on October 4, 2000; The Forum received a hard copy of the Complaint on October 4, 2000.
On 10-6-00 & 10-11-00, Network Solutions and CORE, respectively, confirmed by e-mail to the Forum that the domain names victoriasecretmodels.com, victoriasecretsmodesl.com, victoriassecretmodesl.com, victoriasecerets.com, victoriasecretes.com, victoreasecret.com, victoriasecerts.com, lanebyrant.com, and laynebryant.com are registered with CORE and Network Solutions and that the Respondent is the current registrant of the names. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.
On October 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 1, 2000 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 Respondentís registration as technical, administrative and billing contacts, and to firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and 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 November 6, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Louis E. Condon 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 Uniform 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 Forumís Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
No submission was received from the Respondent.
Complainant owns federally registered trademarks in the marks VICTORIAíS SECRET and LANE BRYANT. The Complainant also owns numerous other trademarks that contain variations of these core terms.
The Respondent is the owner of numerous domain names which infringe upon otherís established marks.
Respondent uses the domain names in question to open numerous Internet web browser windows, each of which contains an advertisement for goods and services that can be purchased through the Internet. The Internet visitors are then "mousetrapped" in the site and unable to exit without clicking through a succession of advertisements. Apparently, Respondent receives between $0.10 and $0.25 from the advertisers for every click by the user.
Counsel for the Complainant sent the Respondent and Respondentís Counsel several demand letters requesting that Respondent transfer the domain names to the Complainant. At various points in time, both the Respondent and his designated Counsel agreed to transfer the domain names to the Complainant. Complainant sent the Respondent the necessary paperwork to end the dispute between the parties and transfer the domain names on August 7, 2000. No response was ever received from the Respondent.
In submitting no response, the Panel presumes that the Respondent does not deny the claims of the Complainant set forth in documents provided to the Panelist. The Panel will make rational assertions from the Complainant, supported by ICANN Policy and precedent. 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").
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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;
(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 in the marks VICTORIAíS SECRET and LANE BRYANT.
The Respondent has misspelled the Complainantís marks and/or added the letter "s" at the end of the marks. Misspelling words and adding letters on to words do not create a distinct mark but is nevertheless confusingly similar with the Complainantís marks. See State Farm v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to the Complainantís mark "State Farm"); Cream Pie Club v. Britany Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that "the addition of an "s" to the end of the Complainantís mark, "Cream Pie" does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name <creampies.com> is similar in sound, appearance, and connotation").
In addition, adding the generic term MODEL, which is descriptive of the Complainantís services, to the Complainantís registered marks does not circumvent the "identical or confusingly similar" test found in Policy 4.a.(i). The domain names are confusingly similar to the Complainantís mark. See Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake city, Cupcake Confidential, Cupcake-Party, Cupcake Parade,and John Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ëchatí and ëfinancialí to be confusingly similar to Complainantís marks and likely to mislead internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).
Thus, the Panel determines that the domain names in question are identical and confusingly similar to the Complainantís marks.
Rights or Legitimate Interests
While the burden of proof is on the Complainant, 4.c of the Policy advises a Respondent how to demonstrate its rights to and legitimate interests in the domain names. The paragraph sets out a non-exclusive list of circumstances which will establish the relevant rights and/or legitimate interests of the Respondent. The Respondent has not responded to the Complainantís allegations, and thus, the Panel concludes that the Respondent has no rights or legitimate interests in the domain names at issue. See America Online, Inc. v. AOL Intíl, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests).
Registration and Use in Bad Faith
The Respondent has linked the infringing domain names to "click-through" advertisements, in which the Respondent profits every time the users click the window to close the advertisement. The Panel concludes that the Respondent is using the domain names in order to attract users to Respondentís website, for commercial gain, by creating a likelihood of confusion with the Complainantís marks as to the source, sponsorship, affiliation, or endorsement of the Respondentís websites. Policy 4.b.(iv). The Respondent has also engaged in a pattern of conduct of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Policy 4.b.(ii). Thus, the Panel concludes that the Respondent has registered and used the domain names in bad faith. See Bama Rags, Inc. v. John Zuccarini, d/b/a/ Cupcake Confidential, FA 94380 and FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith based on registration and commercial use of "typo" versions of the trademark DAVE MATTHEWS BAND); Hewlett-Packard Company v. John Zuccarini, FA 94454 (Nat. Arb. Forum April 7, 2000) (finding bad faith based on registration and use of "typo" version of the trademark HEWLETT-PACKARD); Encyclopedia Britannica, Inc. vs. John Zuccarini, a/k/a The Cupcake Patrol, a/k/a The Country Walk, a/k/a Cupcake Party, D2000-0330 (WIPO June 7, 2000) (finding bad faith based on registration and use of "typo" versions of the trademarks BRITANNICA and ENCYCLOPEDIA BRITANNICA).
Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.
Accordingly, for all of the foregoing reasons, it is ordered that the domain names victoriasecretmodels.com, victoriasecretsmodesl.com, victoriassecretmodesl.com, victoriasecerets.com, victoriasecretes.com, victoreasecret.com, victoriasecerts.com, lanebyrant.com, and laynebryant.com be transferred from the Respondent to the Complainant.
Louis E. Condon
Dated: November 18, 2000
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