Quiksilver,
Inc. v. John Zuccarini
Claim Number: FA0106000097742
PARTIES
Complainant is Quiksilver, Inc., Huntington Beach, CA, USA (“Complainant”) represented by Janie Dodge, of Quiksilver, Inc. Respondent is John Zuccarini, Andalusia, PA, USA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <roxyquicksilver.com> registered with CORE.
PANEL
On July 24, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 26, 2001; the Forum received a hard copy of the Complaint on June 27, 2001.
On June 28, 2001, CORE confirmed by e-mail to the Forum that the domain name <roxyquicksilver.com> is registered with CORE and that Respondent is the current registrant of the name. CORE has verified that Respondent is bound by the CORE 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 June 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 18, 2001 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@roxyquicksilver.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.
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
The <roxyquicksilver.com>
domain name is confusingly similar to Complainants QUIKSILVER and ROXY marks.
2.
Respondent has no rights or legitimate interests in the <roxyquicksilver.com> domain name.
3. Respondent registered and uses the <roxyquicksilver.com> domain name in bad faith.
B. Respondent
No response was received.
FINDINGS
1. Complainant promotes sporting events and sells clothing and related accessories.
2. Complainant uses its ROXY and QUIKSILVER marks to identify and promote its events, clothing and other goods and services.
3. Complainant has used the QUIKSILVER mark in commerce since at least 1967.
4. Complainant's marks are famous in the United States and in other countries.
5. Complainant has registered its ROXY and QUIKSILVER marks in the United States and in 60 other countries.
6.
Respondent registered the <roxyquicksilver.com> domain name on December 13, 1999.
7.
Respondent uses the <roxyquicksilver.com>
domain name to divert users to multiple commercial sites, essentially
"mousetrapping" the user.
8. Respondent has engaged in a pattern of such conduct with other registered trademarks and service marks.
DISCUSSION
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.
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;
(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 that it has rights to the ROXY and QUIKSILVER marks by virtue of its various federal and international registrations. The <roxyquicksilver.com> domain name is confusingly similar to Complainant's ROXY and QUIKSILVER trademarks in that it simply combines the two marks. See Nintendo of Am. Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where the Respondent combined the Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or
Legitimate Interests
Respondent has not come forward to demonstrate it has rights or legitimate interests in the <roxyquicksilver.com> domain name. There is a presumption that a Respondent has no rights or legitimate interests with respect to a disputed domain name when that Respondent fails to submit a response. 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent is using
the <roxyquicksilver.com>
domain name to mousetrap users into a series of commercial links that cannot be
easily exited. Such a use does not
constitute a bona fida offering of goods or services as provided under Policy ¶
4(c)(i). 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).
Additionally, Complainant asserts, and Respondent fails to refute, that Respondent is not known by the <roxyquicksilver.com> domain name pursuant to Policy ¶ 4(c)(ii). 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).
Finally, Respondent
is using the disputed domain name to link users to a series of commercial sites
that are not affiliated with the Complainant's marks; this is not a legitimate
noncommercial nor fair use of the <roxyquicksilver.com>
domain name as set forth under Policy ¶ 4(c)(iii). See AltaVista v. Krotov,
D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct
users to other, unconnected websites does not constitute a legitimate interest
in the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and
Use in Bad Faith
Respondent is using the <roxyquicksilver.com> domain name to intentionally attract, for commercial gain, users to websites that are not affiliated with Complainant by creating a likelihood of confusion with respect to Complainant's marks and the source, sponsorship, or endorsement of these other websites. Such use is evidence of bad faith according to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted.
Accordingly, it is Ordered that the <roxyquicksilver.com> domain name be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: July 26, 2001
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