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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Abercrombie & Fitch Stores, Inc. and A & F Trademark, Inc. v. John Zuccarini d/b/a Cupcake Patrol
Case No. D2000-1004
1. The Parties
1.1 Complainants are Abercrombie & Fitch Stores, Inc. and A & F Trademark, Inc., corporations organized under the laws of the State of Delaware, U.S.A. ("Complainant"). Respondent is John Zuccarini d/b/a Cupcake Patrol, an individual residing in 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania 19020, U.S.A. Complainant is represented by counsel, Colucci & Umans.
2. The Domain Names and Registrar
2.1 The domain names which are the subject of this proceeding are "abecrombie.com", "abercrombe.com", "abercromie.com", "abacrombie.com", "abercrombiefinch.com", "ambercrombiefitch.com", "abercrombi.com", "abercombie.com" and "abercrombieandfitch.com" owned by John Zuccarini d/b/a Cupcake Patrol. The domain names are registered with Core Internet Council of Registrars ("CORE"), Geneva, Switzerland, through one of CORE’s domain name resellers, Joker/CAL GmbH, Dusseldorf, Germany.
3. Procedural History
3.1 Complaint by e-mail was received by the WIPO Arbitration and Mediation Center ("Center") on August 10, 2000.
3.2 Complaint in hard copy was received by the Center on August 14, 2000.
3.3 Communication from Joker/CSL/CORE regarding status of domain names was submitted on August 15, 2000.
3.3 Acknowledgment of Receipt of Complaint was submitted on August 15, 2000.
3.4 Center’s Request for Registrar Verification and the Registrar (CORE) Verification were submitted on August 15, August 23, 2000, respectively.
3.5 Center’s Formal Requirements Compliance Checklist/Center’s Printout of Disputed Webpage was submitted on August 25, 2000.
3.6 Notification of Complaint and Commencement was submitted on August 25, 2000.
3.7 Communication from Complainant regarding unsuccessful delivery of Complaint to Respondent and the Center’s Acknowledgment of such Communication were respectively submitted on August 28 and September 1, 2000.
3.8 Notification of Respondent Default was submitted on September 25, 2000.
3.9 Notification of Appointment of Administrative Panel and Projected Decision Date was submitted on October 17, 2000.
4. Factual Background
4.1 Complainant, Abercrombie & Fitch Stores, Inc. (herein "Abercrombie"), is a U.S. nationwide retailer of men’s and women’s casual clothing and has been since 1892. Abercrombie owns and operates approximately 160 ABERCROMBIE & FITCH retail stores and ABERCROMBIE CHILDREN retail stores and sells its casual clothing under the registered trademarks and service marks of ABERCROMBIE & FITCH, ABERCROMBIE & FITCH CO. and ABERCROMBIE. Abercrombie had in excess of one billion dollars of sales in 1999.
4.2 Complainant, A & F Trademark, Inc. (herein "A & F"), is the owner of the following United States trademark registrations 1) ABERCROMBIE, Registration No. 2,305,464;2) ABERCROMBIE & FITCH CO., Registration No. 2,061,284; 3) ABERCROMBIE & FITCH, Registration No. 951, 410, and 4) ABERCROMBIE & FITCH, Registration No. 1,178,609 (herein the "Abercrombie Marks").
4.3 Complainant A & F is also the owner of numerous foreign trademark registrations for the mark ABERCROMBIE & FITCH in such countries as Argentina, Australia, Austria, Bahrain, Brazil, Canada, China, Czech Republic, Denmark, Egypt, Finland, France, Germany, Greece, Grenada, Hungry, India, Indonesia, Ireland, Israel, Italy, Japan, Jordan, South Korea, Mexico, New Zealand, Norway, Paraguay, Peru, Poland, Portugal, Saudi Arabia, Romania, Russian Federation, South Africa, Sweden, Switzerland, Taiwan, United Kingdom and other countries.
4.4 Complainant Abercrombie is the exclusive licensee of A & F for use of the Abercrombie Marks in connection with the advertisement, promotion, offering for sale and sale of men’s, women’s and children’s apparel and accessories.
4.5 Complainants also publish a quarterly catalogue entitled the A&F Quarterly where Complainants advertise, promote, offer for sale and sell Abercrombie & Fitch clothing, cologne, and related accessories in connection with the Abercrombie Marks.
4.6 Complainant A & F is the registrant for the domain names AF1892.com, abercrombie.com, abercrombieandfitch.com and AandFtrademark.com
4.7 Complainants also operate a web site at www.abercrombie.com, where Complainants advertise, promote, offer company information, offer for sale and sell merchandise, namely clothing and accessories, in connection with the Abercrombie Marks. Complainants’ www.abercrombieandfitch.com web site automatically hyper-links to Complainants’ www.abercrombie.com web site.
4.8 Complainants also operate a children’s web site located at www.abercrombiekids.com, which offers information, advertises, promotes, offers for sale and sells children’s apparel and accessories in connection with the Abercrombie Marks.
4.9 Complainants’ promotion, advertisement and sale of its merchandise in connection with the Abercrombie Marks has caused the Abercrombie Marks to become famous, distinctive and well-known both in the United States and abroad.
5. Parties’ Contentions
5.1 Respondent, John Zuccarini d/b/a Cupcake Patrol (herein "Respondent"), has registered the following domain names: 1) abecrombie.com; 2) abercrombe.com; 3) abercromie.com; 4) abacrombie.com; 5) abercrombiefinch.com; 6) ambercrombiefitch.com, and 7) abercrombi.com, 8) abercombie.com and 9) abercombieandfitch.com (herein "the Infringing Domain Names"), which are all virtually identical and confusingly similar to Complainants’ Abercrombie Marks.
5.2 Respondent has registered the nine (9) Infringing Domain Names which are intentional misspellings of the Abercrombie Marks. Namely, Respondent generally omits one letter, typically an "i" or "e" or inserts another letter such as an "n" in abercrombieandfinch.com to replace the "t", so that people who are attempting to log-on to the www.abercrombie.com and www.abercrombieandfitch.com web sites, and misspell the domain name, will be directed to Respondent’s infringing web sites. Clearly, Respondent is intentionally attempting to disrupt the business of Complainants, which is further evidenced by the fact that Respondent has registered nine (9) different domain names, all nine of which are intentional misspellings of Complainants’ Abercrombie Marks.
5.3 Respondent also operates and hosts web sites located at www.abecrombie.com, www.abercrombe.com, www.abercromie.com, www.abacrombie.com, www.abercrombiefinch.com, www.ambercrombiefitch.com, www.abercrombi.com, www.abercombie.com and www.abercombieandfitch.com. Each of these web sites automatically hyperlink to other web sites, namely, www.gamesmp3.com, www.e-cardssucks.com and www.callwave.com. Therefore, people are automatically locked into a series of automatic hyperlinks merely by entering one of the Infringing Domain Names as a web address. Respondent’s operation of automatic hyperlinking or "mousetrapping" at the infringing web sites diverts customers from Complainants’ web site, because it prevents people who want to go to Complainants’ web site, but who misspell, or enter the wrong web site address, from easily realizing they have entered the wrong address and typing in the correct address, which is Complainants’ ABERCROMBIE and ABERCROMBIE & FITCH trademarks. Instead, people are trapped and locked into a maze of automatic hyperlinks to other numerous web pages. As a result, people are likely to be confused and discouraged from further attempts to log onto Complainants’ web sites.
5.4 Respondent has no legitimate trademark interests in the Infringing Domain Names which infringe Complainants’ Abercrombie Marks which Complainants have been using in connection with the sale of men’s and women’s apparel since 1892. Since Respondent has registered nine (9) domain names which are deliberate misspellings, but virtually identical to, Complaints’ Abercrombie Marks, Respondent is clearly attempting to confuse the public. Thus, Respondent registered not just one, but nine domain names with the deliberate bad faith intent to confuse the public. Complainants’ Abercrombie Marks are famous and distinctive and have been in continuous use since 1892. Accordingly, Respondent registered the Infringing Domain Names with the intent to divert customers of Complainants to Respondent’s infringing web sites, and to benefit from the goodwill and fame associated with Complainants’ Abercrombie Marks.
5.5 Respondent has previously and recently been held liable of cybersquatting pursuant to the Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125(d) (herein "ACPA"), by the United States District Court for the Eastern District of Pennsylvania in Shields v. Zuccarini, 89 F.Supp.2d 634 (E.D. Pa 2000). In that case, Respondent registered five (5) domain names, namely, joescartoon.com, joecarton.com, joescartons.com, joescartoons.com and cartoonjoe.com which were all held to be confusingly similar to plaintiff’s mark JOE CARTOON, which plaintiff had used and advertised for fifteen years.
5.6 Like this case, in Shields, Respondent also operated web sites at the infringing domain names which "mousetrapped" people into a series of other web sites, namely locking them into a series of hyperlinks to other web sites.
5.7 In Shields, the Court held that Respondent acted with bad faith as required by ACPA because Respondent: 1) had no rights in the JOE CARTOON mark; 2) had registered thousands of other domain names which were confusingly similar or intentional misspellings of names of famous people and famous trademarks such as rikymartin.com, britineyspears.com and sportillustrated.com; and 3) did not offer any bona fide business and offers no goods and/or services that had anything to do with plaintiff’s mark at the infringing web sites. Thus, the court concluded that, "there is overwhelming evidence that Zuccarini acted with a bad-faith to profit when he registered these five domain names." Id. 89 F.Supp.2d 634, 640 (E.D.Pa. 2000). Similarly, in this case, Respondent does not offer any bona fide business or sale of any goods and/or services at the nine (9) domain names which infringe the Abercrombie Marks.
5.8 In addition, in Encyclopedia Britannica, Inc. v. John Zuccarini d/b/a Cupcake Patrol a/ka Country Walk a/ka Cupcake Party, Case No. D2000-0330, the World Intellectual Property Organization (herein "WIPO"), the administrative panel transferred four (4) domain names from Respondent to Complainant, namely 1) encylcopediabrittanica.com; 2) brtanica.com; 3) bitannica.com, and 4) britannca.com. Even though Respondent did not officially respond in the WIPO administrative proceeding, the panel determined that the Complainant’s marks were famous, that Respondent had no legitimate interests in the domain names and that Respondent had registered and used the domain names in bad faith.
5.9 In Encyclopedia Britannica, the WIPO administrative panel also determined that Respondent had a history of registering domain names consisting of misspellings of widely known marks or the names of celebrities, that Respondent had been previously enjoined by the United States District Court for the Eastern District of Pennsylvania in Shields v. Zuccarini, which is referenced above, and that Respondent’s failure to respond also demonstrated bad faith. Accordingly, WIPO has already determined that Respondent has acted in bad faith in a prior decision based upon a virtually identical set of facts.
5.10 On June 5, 2000, attorneys for Complainants sent a cease and desist letter via e-mail and FedEx to Respondent requesting him to shut down the web sites located at the Infringing Domain Names and to transfer the Infringing Domain Names to Complainant because Respondent’s registration and use of such domain names infringed Complainants’ trademark rights. Respondent never responded to Complainants’ letter despite FedEx’s confirmation that the letter was received and signed for by "J.Zuccarini".
5.11 On June 16, 2000, attorneys for Complainants sent another letter to Respondent notifying him that since he failed to respond to the letter of June 5, 2000, Complainants would pursue further legal action to protect their trademark rights. Respondent also did not respond to this communication despite FedEx’s confirmation that the letter was received.
5.12 Respondent’s failure to respond to Complainants’ letters despite confirmation that Respondent received and signed for the initial letter sent on June 5, 2000, demonstrates that Respondent has no legitimate interests in the infringing domain names and is continuing to act and use the infringing domain names in bad faith.
5.13 In addition, Respondent registered the nine (9) infringing domain names with Joker.com, thus Respondent is obligated to comply with the Registrar’s Terms and Conditions which are provided at Joker.com’s web site. Section 4.1 of the Terms & Conditions provides that "[t]he customer assures that he does not interfere with or infringe upon the rights of any third party." Since Respondent was obligated to review and adopt this policy when Respondent registered the nine (9) domain names which infringe the Abercrombie Marks, Respondent totally disregarded and violated Section 4.1 of the Terms and Conditions. This is further evidence that Respondent registered and used the Infringing Domain Names in bad faith.
5.14 Complainants have proven that: 1) Respondent’s nine (9) domain names are virtually identical and confusingly similar to Complainants’ Abercrombie Marks; 2) Respondent has no legitimate interests in the Infringing Domain Names, and 3) Respondent has registered and used the Infringing Domain Names in bad faith.
5.15 Respondent is in default and has not filed a Response.
6. Discussion and Findings
6.1 Complainants must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; (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. The Panel will now look at each one of the elements to determine if Complainants have met their burden of proof.
6.2 The Panel has reviewed the evidence submitted by the Complainants concerning ownership of the trademarks ABERCROMBIE and ABERCROMBIE AND FITCH and is satisfied that the Complainants have proven trademark rights in such terms. Furthermore, the Panel finds that the nine (9) domain names are confusingly similar to the trademarks in which the Complainants have rights.
6.3 The record does not show any legitimate non-commercial use or fair use by Respondent. The Panel hereby finds that Respondent has not shown any legitimate rights in the domain names.
6.4 Finally, the Panel needs to examine the issue of bad faith. The record has evidence of Respondent’s bad faith under Policy 4(b)(iv) due to the misdirection of web traffic to Respondent’s other websites, as well as a pattern of bad faith registration in other instances which prevent the trademark owner from registering these domain names in violation of Policy 4(b)(ii). Accordingly, the Panel finds that Complainants have met their burden of proof as to Policy 4(a)(iii) in that the domain names were registered and are being used in bad faith.
7.1 The Panel decides that the nine (9) domain names are identical or confusingly similar to the trademarks of Complainants, that Respondent has no rights or legitimate interests in such domain names, and that the domain names in issue have been registered and are being used in bad faith.
7.2 The Panel hereby orders that the registrations of the nine (9) domain names be transferred to Complainant A & F, the owner of the Abercrombie Marks.
Clark W. Lackert
Dated: November 1, 2000