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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party
Case No. D2000-1415
1. The Parties
The Complainant is Nicole Kidman, a movie actress ("Kidman").
The Respondent is John Zuccarini, d/b/a/ Cupcake Party, of Andalusia, Pennsylvania ("Zuccarini").
2. The Domain Names and Registrar
The domain names at issue are <nicholekidman.com> and <nicolekidmannude.com>. The domain names were registered with Network Solutions, Inc.
3. Procedural Background
On October 20, 2000, Kidman filed her Complaint by e-mail with the Arbitration and Mediation Center of the World Intellectual Property Organization ("the Center"). The Center received a hard copy of the Complaint on October 24, 2000. Subsequently, on November 3, 2000, electronically, and November 6, 2000, in hardcopy, Kidman submitted an Amended Complaint.
On November 9, 2000, after verifying that the Amended Complaint conformed with the technical requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for the Uniform Domain Name Dispute Resolution Policy ("Rules"), and the Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, the Center sent Zuccarini a formal Notification of Complaint and Commencement of Administrative Proceeding by courier, fax, and e-mail. See Rules ¶¶ 2, 4. Zuccarini did not respond within the required 20 days, see Rules ¶ 5, and on November 30, 2000 the Center sent a notice of default.
Kidman requested a three member panel. After clearing for potential conflicts, on December 11, 2000, the Center appointed David H. Bernstein, Sally Abel, and Natasha Lisman as the Panelists.
The Panel subsequently discovered that, because of a secretarial error at the Center, the Notification of Complaint sent to Zuccarini by Federal Express had been misaddressed: it included his name, city, state, and zip code, but not his street address. Thereafter, the Panel issued an Interim Order on December 20, 2000, providing in part as follows:
The touchstone of any administrative proceeding under the Policy is due process and a fair opportunity to participate. Rule 10(b). Although actual notice cannot always be assured, dispute resolution providers like the Center should, at the minimum, "employ reasonably available means calculated to achieve actual notice to Respondent." Rule 2(a). If domain name registrants maintain accurate information in their WHOIS records, they always will be assured of receiving timely notice of any disputes filed under the Policy.
Because of the secretarial error in this case, the Panel cannot be sure that the Center has employed "reasonably available means calculated to achieve actual notice to Respondent." In addition to providing notice by courier, the Center also attempted to provide the Respondent with notice by email and fax. Unfortunately, those attempts were unsuccessful because the email address and fax number provided on Respondent’s WHOIS information for both domain names appear to have been incorrect. To the extent Respondent has not received actual notice, it is, thus, in part, his own fault. Nevertheless, to ensure full compliance with the Rules and to provide Respondent with a fair opportunity to participate in this proceeding, Rule 10(b), the Panel hereby directs the Center to send a copy of this Order to the Respondent by Federal Express or other recognized courier service to the street address provided in the WHOIS information ("John Zuccarini, Cupcake Party, 957 Bristol Pike Suite D-6, Andalusia, PA 19020, USA"), along with a copy of the Notification of Complaint, Complaint, Amended Complaint, Notification of Default, and Notification of Appointment of Administrative Panel. The Respondent shall thereafter have 20 days (calculated from the Date the packet is sent by the Center) to submit a Response. In the event the Respondent elects to submit a Response within that time, he shall state whether he received prior notice of the dispute and, if so, provide full details concerning his receipt of all prior notice and his reasons for not earlier submitting a Response.
If the Center receives notice from the courier that the packet cannot be delivered as addressed, the Center shall so notify the Panel, which may then proceed immediately to decision. Similarly, if the Center receives confirmation of delivery, it shall so notify the Panel.
Pursuant to Rule 12, the Panel directs Complainant to submit within 10 days any proof it has of actual notice to Respondent of its Complaint and/or Amended Complaint. See Rule 3(b)(xii).
Pursuant to Rule 10(c), and in view of the exceptional circumstances caused by this secretarial error, the Panel hereby resets the deadline for issuing a decision in this matter to January 23, 2001.
On December 20, 2000, the Center re-sent to Zuccarini by Federal Express the notification of complaint and other materials indicated in the Panel’s order. On January 5, 2001, Federal Express informed the Center that the package could not be delivered for the following reason: "Customer not available or Business closed."
Also on December 20, 2000, Kidman informed the Center that she had sent the Amended Complaint to Zuccarini by Federal Express on November 6, 2000, but that the package was returned as undelivered. She reports that the Federal Express carrier had indicated by handwritten notes on the package that Zuccarini had refused delivery by posting a note on his window instructing Federal Express not to leave any packages.
To date, and despite these additional efforts to provide actual notice to
Respondent, Respondent has not filed any Response. It nevertheless is clear that the Center has employed "reasonably available means calculated to achieve actual notice to Respondent" and that any failure of receipt of actual notice is entirely the fault of Respondent, who not only has failed to update his WHOIS registration information but also directed Federal Express not to leave any packages for him. Accordingly, this dispute is properly before the Panel and the Panel will proceed with its decision on the merits.
4. Factual Background
Because Zuccarini has submitted no response, we accept the allegations of the Amended Complaint as true. See Rita Rudner v. Internetco Corp., Case No. D2000-0581 (WIPO Aug. 3, 2000), § 4; see also Rules ¶ 5(e) ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.").
Kidman is a well-known film actress. She has starred in numerous motion pictures including Eyes Wide Shut (1999), Practical Magic (1998), The Peacemaker (1997), Batman Forever (1995), To Die For (1995), My Life (1993), Far and Away (1992), Billy Bathgate (1991), Days of Thunder (1990), and Dead Calm (1988). She has received various awards for her acting, including the Golden Globe Award in 1996 for her role in To Die For.
On February 5, 1999, Zuccarini registered the domain name <nicolekidmannude.com> with Network Solutions, Inc. The following day, he registered the name <nicholekidman.com>, also with Network Solutions, Inc. Zuccarini does not offer any goods or services through the websites he has established with these domain names.
Turning one’s browser to the <nicholekidman.com> or <nicolekidmannude.com> sites causes "pop-up" advertisements for a variety of commercial enterprises to appear. An Internet user who arrives at these sites must click on a series of windows containing advertisements before exiting, a fate referred to as being "mousetrapped." See Electronics Boutique Holdings v. Zuccarini, 2000 WL 1622760, *2, --- F. Supp. 2d ---, --- (E.D. Pa. Oct. 30, 2000) (describing "mousetrapping"); Shields v. Zuccarini, 89 F. Supp. 2d 634, 635 (E.D. Pa. 2000) (same). Moreover, at the time of the Amended Complaint, the advertisements at <nicolekidmannude.com> were for sexually explicit websites.
5. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
A. The Domain Names Are Similar to Kidman’s Mark (Policy ¶ 4(a)(i))
There is little question but that Kidman has established common law trademark rights in her name. By virtue of her successful films, she has achieved renown, and the use of her name in connection with entertainment services provides a strong indication of source. See Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (WIPO May 29, 2000), § 6; Jeanette Winterson v. Mark Hogarth, Case No. D2000-0235 (WIPO May 22, 2000), §§ 6.2-6.13; Rita Rudner, Case No. D2000-0581, § 5.
Kidman also has shown that the domain names are confusingly similar to her "mark." The <nicholekidman.com> domain name is "virtually identical and confusingly similar" to Kidman’s common law mark; the only difference is the purposeful misspelling, created by the addition of an "h," and it is well established (and well known to Zuccarini) that such misspellings are actionable under the Policy. Encyclopedia Britannica, Inc. v. John Zuccarini, Case No. D2000-0330 (WIPO June 7, 2000), § 3 (closely misspelled domain name satisfies "confusingly similar" factor); Hewlett-Packard Co. v. Cupcake City, File No. FA000200093562 (NAF Mar. 31, 2000) (finding a "phonetically identical" but differently spelled mark to meet the Policy requirement).
The more interesting question is whether <nicolekidmannude.com> is "identical or confusingly similar" to Kidman’s mark, as required by the Policy. The Panel emphasizes that, in defining "identical or confusingly similar," it is interpreting that term as it appears in the Policy, rather than as it may appear under the trademark law of a nation. Thus, the term must be construed in the light of the purpose of the Policy: "to prevent the extortionate behavior commonly known as ‘cybersquatting,’ in which parties registered domain names in which major trademark owners had a particular interest in order to extort money from those trademark owners," Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, Case No. D2000-0662 (WIPO Sept. 19, 2000), § 6, or otherwise profit therefrom.
Bearing these principles in mind, at least two of the panelists on this Panel conclude that the Policy is not focused on the narrow question of "whether the domain name causes confusion as to source," Wal-Mart Stores, Inc., Case No. D2000-0662, § 6, but rather on the broader question of whether a domain name is similar enough in light of the purpose of the Policy to justify moving on to the other elements of a claim for cancellation or transfer of a domain name. A majority of the Panel thus agrees "that a domain name is ‘identical or confusingly similar’ to a trademark . . . when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name." Wal-Mart Stores, Inc., Case No. D2000-0662, § 6.
An independent basis for finding that a domain name is confusingly similar to a trademark is that, by virtue of the domain name itself, the domain name may confuse Internet users as to whether the site is associated or affiliated with, or sponsored by, the trademark holder. Given that Kidman has appeared "nude," see http://mrshowbiz.go.com/archive/news/Todays_Stories/406/kathleenturner040600.html ("Kidman's nude turn in The Blue Room propelled that play to sellouts"), it is possible that some Internet users would be confused into believing that the site at <nicolekidmannude.com> is affiliated with Kidman. On this record, the Panel cannot determine whether or not that is the case, but given that Respondent has defaulted and that confusion is a reasonable hypothesis, the Panel finds that Complainant satisfies this alternative basis for satisfying the first factor as well.
Thus, under either of these two approaches, the Panel concludes that <nicolekidmannude.com> is "identical or confusingly similar" to Kidman’s mark, as that term is used in the Policy.
B. Zuccarini Lacks Rights or Legitimate Interests (Policy ¶ 4(a)(ii))
Kidman made a prima facie showing that Zuccarini does not have rights or legitimate interests in respect of the domain names. Having failed to respond to the Complaint, Zuccarini has not rebutted this showing. See Document Techs, Inc. v. International Elec. Communications Inc., Case No. D2000-0270 (June 6, 2000) ("[O]nce a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.").
The sheer number of domain names similar to the marks of celebrities that Zuccarini has registered – and the arbitral and judicial findings against him – are sufficient to establish a prima facie case that he does not have rights or legitimate interests in respect of <nicholekidman.com> and <nicolekidmannude.com>. The sites that Zuccarini has registered include such approximations of celebrity names as drewberrymore.com, bspears.com, and zetajones.com. See WHOIS Listing (Complaint Exh. 10); see also Electronics Boutique Holdings Corp., 2000 WL 1622760, at *4 n.11 (noting that "[b]y his own admission, Mr. Zuccarini has registered thousands of domain names through various host companies" and that "[t]he majority of those domain names are misspellings of famous names"). His cybersquatting practices have been addressed in numerous decisions, including Minolta Co., Ltd. v. Cupcake City, Case No. D2000-1291 (Jan. 18, 2001) (domain name <minoltacameras.com>); Abercrombie & Fitch Stores, Inc. and A & F Trademark, Inc. v. John Zuccarini d/b/a/ Cupcake Patrol, Case No. D2000-1004 (WIPO Nov. 1, 2000) (domain names <abecrombie.com>, <abercrombe.com>, <abercromie.com>, <abacrombie.com>, <abercrombiefinch.com>, <ambercrombiefitch.com>, <abercrombi.com>, <abercombie.com> and <abercrombieandfitch.com>); Electronics Boutique Holdings Corp., 2000 WL 1622760 (domain names <www.electronicboutique.com>, <www.eletronicsboutique.com>, <www.electronicbotique.com>, <www.ebwold.com> and <www.ebworl.com>); Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini, Case No. D2000-0928 (WIPO Sept. 29, 2000) (23 domain names similar to the trademark "Yahoo!"); Dow Jones & Cop., Inc. and Dow Jones LP v. John Zuccarini, Case No. D2000-0578 (WIPO Aug. 28, 2000) (domain names <wallstreetjounal.com> and <wallstreetjournel.com>); Diageo p.l.c. v. John Zuccarini, Case No. D2000-0541 (WIPO Aug. 22, 2000) (domain name <guinnes.com>); Speigel Catalog, Inc. v. John Zuccarini, Case Nos. AF-0237a-d (eResolution July 28, 2000) (domain names <speigals.com>, <speigels.com>, <spiegals.com>, and <spiegles.com>); Encyclopedia Britannica, Inc., Case No. D2000-0330 (domain names <encyclopediabrittanica.com>, <brtanica.com> and <britannca.com>); Hewlett-Packard Co. v. John Zuccarini, File No. FA00040000994454 (NAF May 30, 2000) (domain name <hewlitpackard.com>); Bama Rags, Inc. v. John Zuccarini, File No. FA 0003000094381 (NAF May 8, 2000) (domain name <davemattews-band.com>); Hewlett-Packard Co., File No. FA000200093562 (domain name <hewlittpackard.com>); and Shields, 89 F. Supp. 2d at 635 (domain names <joescartoon.com>, <joecarton.com>, <joescartons.com>, <joescartoons.com> and <cartoonjoe.com>). It is clear on this record that Zuccarini’s actions are not related to any particular rights or interests he has in the domain names similar to Kidman’s mark.
Moreover, a review of factors noted by prior cases and the Policy as indicative of a Respondent’s rights and legitimate interests shows his lack of right or interest in the domain names. Zuccarini has not used or shown any "demonstrable preparations to use the domain name[s] or a name corresponding to the domain name[s] in connection with a bona fide offering of goods or services." Policy ¶ 4(c)(i). Nothing about the content of the websites maintained at <nicholekidman.com> and <nicolekidmannude.com> suggests otherwise. In fact, the undisputed Amended Complaint suggests, with support in recent court decisions, that Zuccarini’s business is the charging of fees to advertisers for each advertisement that mousetrapped users must click through to extricate themselves. Cf. Electronics Boutique Holdings Corp., 2000 WL 1622760, *2; Shields, 89 F. Supp. 2d at 635.
Similarly, Zuccarini has not shown that he or any business of his "ha[s] been commonly known by" the domain names. Policy ¶ 4(c)(ii). Moreover, Kidman’s widespread fame preceded Zuccarini’s registration of the domain names, suggesting that Zuccarini selected the domain names because of her fame and not because of some interest of his own.
Kidman did not grant permission to Zuccarini to register these domain names, nor did Kidman and Zuccarini have any sort of pre-dispute commercial or other relationship. See Julia Fiona Roberts, Case No. D2000-0210, § 6.
In the absence of any response from Zuccarini, we further conclude that he is not "making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." Policy ¶ 4(c)(iii). The use of domain names that incorporate or are confusingly similar to a famous person’s name strongly suggests an intent to divert users seeking information on that celebrity. Cf. Shields, 89 F. Supp. 2d at 639-40 (noting that Zuccarini had conceded a practice of selecting names "in an effort to divert Internet traffic to his sites"). Likewise, the sexual implications of the domain name <nicolekidmannude.com> and the sexually explicit advertisements to which it was connected threaten to tarnish Kidman’s mark. See Rita Rudner, Case No. D2000-0581.
C. Zuccarini Registered and Used the Domain Names in Bad Faith (Policy¶ 4(a)(iii))
Zuccarini’s registration and use of the domain name is in bad faith. As noted above, the only explanation of Zuccarini’s actions is that he intended to divert the internet traffic of persons intending to find websites legitimately associated with Kidman, and that he appears to have done so to profit from fees paid by advertisers. This in and of itself can show bad faith. See Policy ¶ 4(b)(iv) (it is evidence of bad faith that, "by using the domain name, [the respondent] ha[s] intentionally attempted to attract, for commercial gain, Internet users to [his or her] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] web site or location.").
In addition, the many arbitral and judicial decisions rendered against Zuccarini show that his behavior is part of an overall pattern of misuse of famous marks for illegitimate purposes. His practice of profiting from the good name of others is evidence of his bad faith registration and use of the domain names <nicholekidman.com> and <nicolekidmannude.com>.
We therefore find that Zuccarini has registered and used the domain names in bad faith.
For the foregoing reasons, the Panel decides:
(a) that the domain names <nicholekidman.com> and <nicolekidmannude.com> are identical or confusingly similar to common law marks in which Kidman has rights;
(b) that Zuccarini has no rights or legitimate interests in respect of the domain names; and
(c) that Zuccarini’s domain names have been registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <nicholekidman.com> and <nicolekidmannude.com> be transferred to Kidman.
David H. Bernstein
Dated: January 23, 2001