Encyclopaedia Britannica, Inc.
John Zuccarini and The Cupcake Patrol
a/ka Country Walk a/k/a Cupcake Party
[Indexed as: Encyclopaedia Britannica v. Cupcake Patrol]
[Indexed as: encyclopediabrittanica.com et al.]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No. D2000-0330
Commenced: 4 May 2000
Judgment: 7 June 2000
Presiding Panelist: Jeffrey M. Samuels
Domain name - Domain name dispute resolution policy - Identical - Confusingly similar - US Trademark - No rights or legitimate interests - Bad faith use - Bad faith registration - Bona fide business - Fair use - Anti-cybersquatting Consumer Protection Act - Misspellings.
Complainant has earned billions of dollars from selling encyclopedias and other reference-related goods and services under the registered mark ENCYCLOPAEDIA BRITANNICA. Complainant owns U.S. trademark registrations for the term BRITANNICA.
Respondent registered the domain names in dispute: "encyclopediabrittanica.com"; "brtanica.com"; "bitannica.com"; and "britannca.com". These domain names were hyper-linked to either an advertisement web page or to Complainant's www.britannica.com web site.
Held, Names Transferred to Complainant.
The domain names in dispute are virtually identical and confusingly similar to Complainant's ENCYCLOPAEDIA BRITANNICA mark.
Respondents have no rights or legitimate interests in the domain names in dispute. Respondents did not conduct any bona fide business under their domain names, as there is no evidence that Respondents are making a legitimate noncommercial or fair use of the domain names, "without intent for commercial gain to misleadingly divert consumers."
Evidence of "bad faith" registration and use is based on the following evidence: (1) Complainant's marks are well-known and enjoy a strong reputation; (2) Respondents have demonstrated a history of registering domain names consisting of misspellings of widely-known marks or names; (3) Respondents have been enjoined from engaging in the very conduct at issue in this proceeding; and (4) Respondents failed to respond to Complainant's efforts to make contact.
The Panel notes that although a finding of "bad faith" intent pursuant to the "Anticybersquatting Consumer Protection Act" does not compel a determination that a domain name was registered and used in "bad faith" pursuant to Policy guidelines, such a finding is accorded substantial weight in the Panel proceedings.
Policies referred to
Uniform Domain Name Dispute Resolution Policy
Laws referred to
Anticybersquatting Consumer Protection Act
Cases referred to
Shields v. Zuccarini, 2000 U.S. Dist. Lexis 3350 (March 22, 2000)
Panel Decision referred to
Jeffrey M. Samuels, Panelist: -
1. Procedural Background
On April 25, 2000, the WIPO Arbitration and Mediation Center received from Complainant, Encyclopaedia Britannica, Inc., a Complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy.
The instant Administrative Proceeding was commenced on May 4, 2000.
The domain names in dispute are as follows: "encyclopediabrittanica.com"; "brtanica.com"; "bitannica.com"; and "britannca.com".
Respondents John Zuccarini and The Cupcake Patrol failed to respond to the Complaint within the twenty (20) day period provided for in paragraph 5(a) of the Rules, and a "Notification of Respondent's Default," dated May 24, 2000, was forwarded by WIPO to Respondents.
The joinder of two Respondents in this proceeding is proper because the registrant of the domain names in dispute is the same person. See Adobe Systems Inc. v. Domain OZ, Case No. D2000-0057, paragraph 6, p.6 (Administrative Panel Decision, March 22, 2000.) Annex A to the Complaint, consisting of a copy of the printouts of a Whois database search of March 30, 2000, indicates that both John Zuccarini and The Cupcake Patrol share the identical postal address and the same administrative and billing contact, address, and telephone number.
2. Findings of Fact
Since the late 1870's, Complainant has sold encyclopedias, dictionaries, atlases and other reference-related goods and services throughout the U.S. under the mark ENCYCLOPAEDIA BRITANNICA. The mark was first registered in the U.S. in August 1950.
Complainant also owns U.S. trademark registrations for the term BRITANNICA (Reg. Nos. 2,287,468; 1,309,991; and 1,506,869) and has applied to register the term BRITANNICA.COM. Complainant also has registered or applied to register the marks BRITANNICA and ENCYCLOPAEDIA BRITANNICA in a number of other countries, including Canada, France, and the United Kingdom.
Complainant also owns a large number of domain names that include the term BRITANNICA, such as BRITANNICA.COM and BRITANNICA.NET, as well as misspellings of the term, such as BRITTANICA.NET and BRITTANICA.COM.
Complainant has sold many billions of dollars worth of encyclopedia, reference, and other on-line goods and services under its marks throughout the U.S. and has heavily advertised and promoted its marks. There is no question that Complainant's marks are famous.
On October 19, 1999, Complainant announced the debut of its web site at www.britannica.com. It appears that Respondents registered the domain names in dispute on or about October 22, 1999. (See May 4, 2000 letter to WIPO from CORE Registrar indicating that domain name "encyclopediabrittanica.com" was registered on October 22, 1999.)
Respondents use the brtannica.com and bitannica.com domain names to hyperlink to advertisement web pages hosted by both Respondents and Complainant (See Annexes F and G) and the "enyclopediabrittanica.com" and "britannca.com" domain names to hyperlink to Complainant's www.britannica.com web site.
On January 31, 2000, Complainant sent an e-mail to Mr. Zuccarini requesting that he "cease and desist" from use of the domain name "encyclopediabrittancia.com". See Annex D. On February 17, 2000, Complainant's attorney sent a letter to Mr. Zuccarini, at the postal address provided to the Internet Council of Registrars, demanding transfer of the domain name to Complainant. See Annex E. The letter was returned as "undeliverable."
Respondents, according to the complaint, have registered in excess of 1,300 domain names, many of which are misspellings of widely known and famous marks or celebrity names, including COSMOPOLITON.COM, OPHRAWINFREY.COM, and JENEFERLOPEZ.COM. See Annex H.
Attached as Annex J to the Complaint is a copy of the decision of the U.S. District Court for the Eastern District of Pennsylvania granting a preliminary injunction under the "Anticybersquatting Consumer Protection Act" (15 U.S.C. paragraph 1125(d)) against John Zuccarini, trading as Cupcake City, for his bad faith registration of domain names which are substantially similar to plaintiff's marks. See Shields v. Zuccarini, 2000 U.S. Dist. Lexis 3350 (March 22, 2000). In that case, the Court found that Zuccarini had registered domain names consisting of misspellings of plaintiff's mark and hosted web sites at these domain names featuring ads for other sites and credit card companies. Zuccarini received between ten and twenty-five cents from advertisers for every click. In entering a preliminary injunction, the district court found "overwhelming evidence that Zuccarini acted with a bad-faith intent"1 and that he "conducts no bona fide business and offers no goods or services that have anything to do with *** any of the other sites he has registered."
In the instant administrative proceeding, Complainant must prove each of the following elements: (1) that Respondents' domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (2) that Respondents have no rights or legitimate interests in respect of the domain names in dispute; and (3) that Respondents registered and use the domain names in dispute in bad faith. The Panel determines that Complainant has met its burden.
Respondents' "encyclopediabrittanica.com" domain name is virtually identical and confusingly similar to Complainant's ENCYCLOPAEDIA BRITANNICA mark. Respondents' domain names brtannica.com, britannca.com, and bitannica.com are virtually identical and confusingly similar to Complainant's BRITANNICA and BRITANNICA.COM marks.
The Panel further determines that Respondents have no rights or legitimate interests in the domain names in dispute. As found by the District Court in Shields, and as the evidence in this proceeding makes clear, Respondents do not conduct any bona fide business under their domain names. There also is no evidence that Respondents are making a legitimate noncommercial or fair use of the domain names, "without intent for commercial gain to misleadingly divert consumers." See paragraph 4. c.(iii) of the Policy. In fact, the opposite is true. Taking advantage of consumers' known disposition to misspell domain names, Zuccarini has diverted Internet traffic to his web sites, thereby earning substantial revenue from advertisers. According to the Shields court, Zuccarini's click-based revenue now approaches $1 million per year.
Finally, there is more than ample evidence of "bad faith" registration and use. As noted by Complainant, the fact that: (1) Complainant's marks are well-known and enjoy a strong reputation; (2) Respondents have demonstrated a history of registering domain names consisting of misspellings of widely-known marks or of the names of celebrities; (3) Respondents have been enjoined from engaging in the very conduct at issue in this proceeding; and (4) Respondents failed to respond to Complainant's efforts to make contact provide strong support for a determination of "bad faith" registration and use. It is clear that Respondents, by using the domain names in issue, have intentionally attempted to attract, for commercial gain, Internet users to their web site, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent's web site, within the meaning of paragraph 4. b. (iv) of the Policy.
In view of the above, the Panel orders that the contested domain names be transferred to Complainant.
Jeffrey M. Samuels
Dated: June 7, 2000
1. While a finding of "bad faith" intent pursuant to the "Anticybersquatting Consumer Protection Act" does not compel a determination that a domain name was registered and used in "bad faith" pursuant to paragraph 4. B. of the Policy, given that the relevant factors under the Act and Policy, to some extent, differ, such a finding is entitled to substantial weight.
Domain Name Transferred