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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini

Case No. D2000-0578

 

1. The Parties

Complainants are Dow Jones & Company, Inc., a Delaware corporation (Dow Jones) and Dow Jones LP, a Delaware limited partnership (Dow Jones LP). Dow Jones is a limited partner of Dow Jones LP. Respondent is John Zuccarini, an individual whose postal address is in Andalusia, Pennsylvania, U.S.A. (Zuccarini).

 

2. Domain Name and Registrar

The domain names in issue are:

wallstreetjounal.com, and
wallstreetjournel.com.

The registrar is CORE Internet Council of Registrars, Geneva, Switzerland (CORE).

 

3. Procedural History

The WIPO Arbitration and Mediation Center (the Center) received the complaint on June 9, 2000 by email, and on June 13, 2000 via hard copy. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Complainants made the required payment to the Center. The formal date of the commencement of this administrative proceeding is June 20, 2000.

On June 19, 2000, an NSI WHOIS printout confirmed that Zuccarini is the registrant and CORE is the registrar of the two domain names and their status is "production".

On June 20, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, post/courier, facsimile and email to Zuccarini (the email transmittal is dated June 19, 2000 5:10 PM). The Center advised that the response was due by July 10, 2000.

On June 27, 2000, CORE confirmed that the registrant is Zuccarini, the Policy is applicable, and the domain name registrations in issue are in "active (<< production>>)" status.

On June 21, 22 and 23, 2000, Zuccarini and the Center’s case manager exchanged a series of email messages. The net of these messages is that (1) Zuccarini sought information as to the specific criteria the Center had used to determine that the complaint is in compliance with the Policy and the Rules, (2) the Center directed Zuccarini to the Policy, the Rules, the Supplemental Rules and case decisions, and (3) Zuccarini expressed frustration with the Center’s responses.

On July 10, 2000, the Center received via email Zuccarini’s response to the complaint. The response in hard copy was received July 12, 2000.

On August 4, 2000, the Center advised the parties via email that David W. Plant (USA) had been appointed as the panelist in this proceeding, and the Administrative Panel’s decision is due August 28, 2000.

 

4. Factual Background; Parties’ Contentions

a. The Trademark

The complaint is based on the trademark THE WALL STREET JOURNAL, which is the subject of four U.S. federal registrations and 56 registrations worldwide. Copies of the four U.S. federal registrations appear at Annex G to the complaint. Complainants aver (paragraph 12.b) Dow Jones owns all rights in the mark outside the U.S., and Dow Jones LP owns all the rights in the mark in the U.S. and licenses those rights to Dow Jones.

Complainants aver (paragraph 12.l.) inter alia the THE WALL STREET JOURNAL mark

"is well known and widely recognized by consumers in the United States and worldwide and has acquired and now enjoys an immensely valuable reputation and tremendous goodwill."

b. The Complaint

Complainants aver inter alia as follows –

At paragraph 11, (1) the domain names are confusingly similar to a mark in which "Complainant" has rights, (2) Zuccarini has no rights or legitimate interests in respect of the domain names in issue, and (3) the domain names were registered and are being used in bad faith. This averment is elaborated on at paragraphs 12.q. et seq., infra.

At paragraphs 12.a. - l., Complainants set out facts, which are not contested by Zuccarini, as to Complainants’ ownership, promotion and use of the mark, as well as related marks and Complainants’ "wsj.com" website ("the largest paying subscriber site on the Internet", receiving about 30,000 non-subscriber hits per day).

At paragraph 12.m., Complainants aver inter alia Zuccarini is using the domain names in issue

"to create unauthorized links to the on-line edition of The Wall Street Journal and to simultaneously create three links to Respondent’s sites, appearing as buttons on the user’s task bar. ... The Internet user is thus unable to delete the buttons without opening the [three] window advertisements. In this way, Respondent forces the user to access each of his three sites."

At paragraph 12.n., Complainants aver inter alia –

"On June 6, 2000, the Domain Names linked to the on-line edition of The Wall Street Journal and simultaneously to task-bar buttons that opened window advertisements for three of Respondent’s web sites ... ."

Copies of the window advertisements printed on June 6, 2000 appear in Annex J to the complaint.

At paragraph 12.o., Complainants aver inter alia –

"On January 10, 2000, the Internet user who entered the Domain Names linked to the on-line edition of The Wall Street Journal, which combined with three of Respondent’s web sites ... ."

At paragraph 12.p., Complainants aver inter alia –

"Internet users who enter the Domain Names -- and are linked to the on-line edition of The Wall Street Journal while simultaneously being forced to open unrelated advertising sites -- will be confused as to the source, sponsorship, affiliation or endorsement of the unrelated sites. ... Users will also believe that Complainant is responsible for forcing them to view the advertisements before they can delete the sites."

At paragraph 12.q., Complainants aver inter alia (to which Zuccarini has "no response", infra) –

"The Domain Names are identical or confusingly similar to [THE WALL STREET JOURNAL] ... . See Shields v. Zuccarini, ... finding confusing similarity under the United States AntiCyberSquatting Consumer Protection Act ..., because, in addition to Respondent’s admission that he registered misspellings precisely because of confusing similarity with others’ names, misspelled domain names were ‘for all practical purposes’ identical to plaintiff’s mark ... . See also Bama Rags, Inc. v. John Zuccarini ... . Respondent’s misspelled domain names ... were confusingly similar to ... registered mark ... ."

At paragraph 12.r. (first occurrence), Complainants aver (1) Zuccarini has no rights or legitimate interest in the domain names, (2) Complainants have exclusive rights to the mark and have not given Zuccarini permission to use the Wall Street Journal name, (3) no relationship entitles Zuccarini to use the mark, and (4) the domain names do not resemble Zuccarini’s personal name.

At paragraph 12.s. (first occurrence), Complainants aver Zuccarini registered and is using the domain names in bad faith, viz. –

"The Respondent is intentionally using Complainant’s famous and well-respected Wall Street Journal name to lure Internet users to his Web site for financial gain."

At paragraphs 12.s. (i) and (ii), Complainants refer to the findings in the Shields case and the Bama Rags case to support the foregoing averment, alleging inter alia –

(i) Zuccarini is a "wholesaler" of Internet domain names. The domain names in issue here are not the only "virtually identical or confusingly similar domain names" registered by Zuccarini. Zuccarini has admitted he registered

"thousands of [ ] [sic] domain names, because they are confusingly similar to others’ famous marks or personal names -- and thus are likely misspellings of these names -- in an effort to divert Internet traffic to his sites."

The Shields court found also –

"[Zuccarini] has registered a number of domain names that are obvious misspellings of celebrities names ... . He also has registered variations on popular product and website names, like sportillustrated.com ... .

* * *

"This conduct is compelling evidence of his bad faith."

(ii) In light of the fame throughout the world enjoyed by THE WALL STREET JOURNAL mark, Zuccarini cannot argue he was unaware of Complainants’ trademark rights when he registered and used the domain names. Zuccarini "deliberately registered and is using the Domain Names ... to lure Internet users to his Web sites. He then forces them to access and view the advertisements on those sites." In Shields, the court found Zuccarini received from the advertisers "between ten and twenty-five cents per click."

(iii) Zuccarini conducts no legitimate business and offers no goods or services that are in any way connected to The Wall Street Journal. If he did, such unauthorized activity "would itself be a violation of Complainant’s intellectual property rights."

At paragraph 12.r (second occurrence), Complainants aver inter alia Zuccarini is using the domain names in issue for commercial purposes. One site "invites the Internet user to click on any banner for 30-second credit approval. Clicking on a banner takes the user to a www.nextcard.com site ... which offers ‘an easy on-line application’ for a NextCard Visa credit card. ... A second Web site ... features a link to www.netradio.com .... which offers CD’s (compact disks) for sale."

At paragraph 12.s. (second occurrence), Complainants aver the foregoing examples are compelling evidence that Zuccarini is "using the Domain Names to lure users to commercial sites that reimburse him in some manner, for example, when someone clicks on the site." Complainants cite the Shields opinion and refer to the finding in the Bama Rags decision, viz. –

"Respondent is obtaining commercial gain at the expense of Complainant and is disrupting the business of Complainant."

Complainants conclude that Zuccarini is not making legitimate non-commercial or fair use of the domain names without intent for commercial gain.

At paragraph 13, Complainants request that the domain names in issue be transferred to Dow Jones.

c. The Response

At the outset, Zuccarini strongly objects (pages 2 - 4) to the response he received from the case manager in regard to his "request for specific information, of where exactly I could find the criteria that must be present in a complaint before it is considered valid." Copies of June 21, 22 and 23, 2000 emails appear at "annex a" to the Response. Zuccarini urges (page 4) the Panel to deny the complaint and the transfer of the domain names in issue solely on the ground that the case manager’s responses to Zuccarini’s requests were deliberately vague and done to prevent a "fair and proper hearing".

Zuccarini states he has "no response" (page 5) to any averments in the complaint through paragraph 12.l. Thus, inter alia, Zuccarini does not contest (1) Complainants’ exclusive rights to the THE WALL STREET JOURNAL mark, (2) Complainants’ registration, promotion and use of the mark and variations of the mark worldwide, or (3) the worldwide fame and goodwill associated with the mark.

Also, Zuccarini has "no response" (pages 5 - 6) to paragraph 12.q. Accordingly, Zuccarini does not challenge Complainants’ averments that (1) the domain names are identical or confusingly similar to THE WALL STREET JOURNAL, or (2) Zuccarini registered the domain names in issue precisely because of such confusing similarity.

Zuccarini does respond with respect to paragraphs 12.m., n., o., and p. (page 5). He repeats this response with respect to paragraphs 12.s. (first occurrence), 12.s. (first occurrence) subsection ii., 12.r. (second occurrence), and 12.s. (second occurrence). Zuccarini contends Complainants have no evidence that (1) the domain names in issue "had links to or opened any windows that the Complainant has described," and (2) what "Complainant claims took place, is what did actually take place." Zuccarini avers –

"It is not unusual for me to have the experience of someone telling me that when they typed in a domain name I own they were redirected to a certain page. When in fact what had happened is that the page this person thought they had been redirected to, actually was already on their browser from another domain of main they had just previously been to.

"A similar circumstance occurring in this case is quite possible."

Zuccarini responds (page 6) to paragraph 12.r. (first occurrence), averring he has the right to own the domain names in issue and contending he has as much right to such ownership as he does to say the words "Wall Street Journal" in a conversation with someone. In addition, Zuccarini urges –

"I have just as much right to own the Domain Names as the person who owns the correct spelling of domain name, wallstreetjournal.com has, which is an entity not associated with Dow Jones & Company." 1

Zuccarini responds (pages 6 - 8) to paragraph 12.s. (first occurrence), subsection i. –

"To say I am a wholesaler of Internet domain names is completely incorrect.... I have never sold a domain name to anyone, nor have I ever offered to sell a domain name to anyone."

Zuccarini explains his testimony in the Shields case as follows –

"My answer was, Yes, I have registered many domain names, but only a small percentage of them could be considered similar to existing marks, and that it is impossible for me to divert Internet traffic away from another web site to mine, since the very meaning of the word divert is ‘to turn away from an intended destination.’

"The fact that someone types in my domain name instead of another clearly determines the destination of [sic] that individual has decided on.

"I have not ever and could not ever possibly do anything to divert someone from going to a web site owned by another person if a Internet user types into their browser someone elses domain name."

Zuccarini then provides a "small sample" (76 in number) of domain names he owns that "could not possibly be thought as similar to existing marks."

Zuccarini responds (page 9) to paragraph 12.s. (first occurrence), subsection iii., by criticizing Complainants’ comments on activity "they admit I am not involved in." Further, he avers –

"To say, even if I did have links to the The Wall Street Journal, I would need to be authorized by them to have these links is outlandish.

"I do not need permission from the Wall Street Journal to link to their web site from any web site I own. That is my right.

"The Internet is much more than just links, but if the Internet is anything, it is millions and millions of pages with links on them.

"Is the The Wall Street Journal proposing that these millions and millions of links all have official authorization."

The response does not include a prayer for relief, other than the request to deny the complaint and the transfer of the domain names in light of the email exchanges between Zuccarini and the Center.

 

5. Discussion and Findings

Paragraph 4.a. of the Policy directs that Complainants must prove, with respect to each domain names in issue, each of the following:

(i) The domain name in issue is identical or confusingly similar to the THE WALL STREET JOURNAL mark; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Paragraph 4.b. of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4.c. of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.

a. The Exchanges of Email Messages

The exchanges of email messages between Zuccarini and the Center do not go the merits or any averment in the complaint. As we note below, footnote 3, Zuccarini is no stranger to these kinds of proceedings. As he stated in his June 21 email to the Center, "I have been involved in a few domain cases already." If he genuinely believed that the complaint was deficient in form or in substance, he was fully capable of pointing to the deficiency. He did not do so. The Center answered his requests by referring him to the Policy, the Rules, the Supplemental Rules and domain name decisions.

Apparently, Zuccarini’s concerns were not significant. Although Zuccarini complains about the Center’s responses to his email inquiries, he points to no failure of the complaint to comply with formal requirements of the Policy, the Rules or the Supplemental Rules. We address the implications of Zuccarini’s response in the discussion below.

b. Identity or Confusing Similarity

Complainants have the burden of proving this element and each of the other two elements of Paragraph 4.a. of the Policy.

Not only are the THE WALL STREET JOURNAL mark and the domain names in issue virtually identical on their faces, Zuccarini expressly declines to respond to Complainants’ averments (paragraph 12.q.) that –

The domain names are "identical or confusingly similar to" Complainant’s mark; and

The Shields court found Zuccarini admitted he registered misspellings because of confusing similarity.

On this record, this element has been established.

c. Rights or Legitimate Interests

On this record, Zuccarini has expressly declined to challenge (1) the validity of THE WALL STREET JOURNAL mark and Complainants’ various registrations, (2) Complainants’ exclusive rights to the mark, (3) the global fame and goodwill associated with the mark, or (4) any fact averred by Complainants as to promotion of the mark, use of the mark, and sales of services and goods under the mark.

Zuccarini does not attempt to undercut Complainants’ averments with evidence Zuccarini must possess as to his development and use of the domain names in issue. Rather, Zuccarini asserts that Complainants have provided no evidence to support their description of Zuccarini’s websites associated with the two domain names. Zuccarini offers only the unsupported and conclusory assertions (page 6) that (1) he has the right to own the domain names, (2) he has as much right to own the domain names as he does to say "Wall Street Journal" in conversation, and (3) another entity unrelated to Dow Jones owns "wallstreetjournal.com". On this record, it is fair to conclude that Zuccarini has no evidence to undercut Complainants’ averments concerning Zuccarini’s actual development and use of the two domain names in issue.

This conclusion is reinforced by the findings in the Shields case 2. There, in issuing a preliminary injunction against Zuccarini, which Zuccarini "vigorously contested," the Court found Zuccarini’s variations on the "www.joecartoon.com" site

"featured advertisements for other sites and credit card companies. Visitors were trapped or ‘mousetrapped’ in the sites, unable to exit without clicking on a succession of ads. Zuccarini received between ten and twenty-five cents from the advertisers for every click.

* * *

"... Zuccarini testified before us that he was amazed to learn ‘people mistype [sought domain names] as often as they do,’ and thus variants on actual spelling of likely search names would result in many unintended visitors to Zuccarini’s sites. Actual experience seems rather clearly to have borne out Zuccarini’s analysis, as his click-based revenue now approaches $1 million per year.

* * *

"... the vast majority of Zuccarini’s many websites [viz. 3,000] ... are merely vehicles for him to make money."

* * *

"... Zuccarini admits that he is literally in the business of profiting on the public’s confusion. He makes money with each Internet user he deceives, and his revenue stream suggests that he deceives many people.

The May 8, 2000 decisions in Bama Rags, Inc. v. John Zuccarini, NAF 0003000094380 and FA 0003000094381 are to the same effect.

Also, more recently, in Spiegel Catalog, Inc. v. John Zuccarini, Case No. AF-0237a-d (July 28, 2000), the panel found that Zuccarini’s registered domain names in issue there, as here, -- typographical errors or confused misspellings of the mark in issue -- were "designed to lead a consumer who misspells or misenters complainant’s name to a web site from which respondent will profit." The Spiegel panel ruled that Zuccarini had demonstrated no legitimate right or interest in the domain names in issue and had registered and used them in bad faith.

Neither Zuccarini’s attempt to explain away his testimony in the Shields case (pages 6 - 7), nor his hearsay account of some one else’s purported experience (page 5) undercuts in any way the evidence before this Panel and the inferences that evidence supports.

The conclusion is ineluctable that Zuccarini has no rights or legitimate interests in the two domain names in issue here. He has tendered no evidence to suggest (1) he has developed and used the domain names in connection with a bona fide offering or goods or services, or (2) he has been commonly known by either domain name, or (3) he is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain, to misleadingly divert consumers or to tarnish the mark at issue. Indeed, the record here is persuasively to the contrary on each of these three factors 3.

d. Registration and Use in Bad Faith

Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to draw from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by Complainants.

It is plain that Zuccarini registered and has used the two domain names solely for the purpose of trading on the global reputation of THE WALL STREET JOURNAL, taking advantage of the tendency of Internet users to misspell, and attracting such users to his own sites, and thus to profit from his own sales of advertising and from links to other websites. Zuccarini’s admissions in the Shields case, and the Court’s findings in that case (e.g. "there is overwhelming evidence that Zuccarini acted with a bad-faith intent of profit") buttress this conclusion.

Zuccarini’s attempt (pages 6 - 7) to explain away his testimony in Shields rings hollow. At best it is wishful thinking, unsupported by any evidence in this record. It is crystal clear that he registered thousands of domain names because they are confusingly similar to others’ famous marks or personal names -- and thus are likely misspellings of those names -- in an effort to divert Internet traffic to his sites.

Zuccarini has without question acted in bad faith in registering and in using the two domain names in issue.

e. Paragraph 4.b. and 4.c. Factors

Zuccarini has attempted (page 6) to address the four illustrative factors in Paragraph 4.b. of the Policy that are evidence of bad faith. Zuccarini has demonstrably failed with respect to the fourth factor, which embraces squarely his conduct, viz.:

(iv) by using the domain name, Zuccarini has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.

Similarly, Zuccarini has failed to demonstrate that any of the three factors in Paragraph 4.c. of the Policy shows any right or legitimate interest of Zuccarini in the domain names in issue. Indeed, on the record here, each such factor points plainly to a lack of any right or legitimate interest on Zuccarini’s part in either domain name.

6. Decision

In light of the findings by the Panel, the Panel decides:

(a) Zuccarini has not demonstrated any basis for denying the Complaint or the transfer of domain names in issue; and

(b) Complainants have met their burden of proving (1) the two domain names in issue are identical or confusingly similar to the THE WALL STREET JOURNAL mark, (2) Zuccarini has no rights and no legitimate interest in respect of the domain names in issue, and (3) the domain names in issue have been registered and are being used by Zuccarini in bad faith.

Accordingly, the Panel requires that the registration of the "wallstreetjounal.com" and "wallstreetjournel.com" domain names be transferred to Complainants.

 


 

David W. Plant
Presiding Panelist

Dated: August 28, 2000


 

Footnotes:

1. This averment is not supported with any evidence of the existence or ownership of a "wallstreetjournal.com" domain name.

2. Shields v. Zuccarini, 89 F.Supp.2d 634 (E.D. Pa. March 22 and 27, 2000).

3. The Panel undoubtedly could find against Zuccarini on collateral estoppel grounds, especially in light of the express findings in the Shields case. The Panel does not do so here, because the Panel believes the matter ought be resolved on the merits on this record, especially since Zuccarini apparently appears here without the aid of counsel. Zuccarini, however, is no stranger to proceedings such as these. In addition to the decisions discussed here, see Hewlett-Packard Company v. Cupcake City, NAF FA 0002000093562 (March 31, 2000), Hewlett-Packard Co. v. Zuccarini, NAF FA 00040000994454 (May 30, 2000), Encyclopedia Britannica, Inc. v. Zuccarini, WIPO D2000-0330 (June 7, 2000).

 

Источник информации: http://www.internet-law.ru/intlaw/udrp/2000/d2000-0578.html

 

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