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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk
Case No. D2002-0487
1. The Parties
1.1 The Complainant is Encyclopaedia Britannica, Inc., a Delaware corporation, with its principal place of business at 310 South Michigan Avenue, Chicago, Illinois, 60604 United States of America.
1.2 The Respondent is John Zuccarini a/k/a "null John Zuccarini, Country Walk". Respondent’s contact information lists his address as 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania, United States of America.
2. The Domain Name and Registrar
2.1 The disputed domain name is <britannicaonline.com>.
2.2 The registrar of the disputed domain names is CSL Computer Services Langenbach GmbH d/b/a Joker.com located at Rathausufer 16, 40213 Dusseldorf, Germany.
3. Procedural History
3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center (the "Center") on May 25, 2002. At the request of the Center, the Complainant filed an amended complaint on June 14, 2002.
3.2 On June 17, 2002, all formal requirements for the establishment of the complaint were checked by the Center and found to be in compliance with the Internet Corporation for Assigned Names (the "ICANN") and Numbers Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the Center’s checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.3 On June 17, 2002, the Center transmitted notification of the complaint and commencement of the proceedings to Respondent.
3.4 On July 8, 2002, the Center transmitted notification of Respondent's default to the Respondent.
3.5 On July 16, 2002, the Center invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On July 18, 2002, the undersigned transmitted by facsimile the executed Statement and Declaration to the Center.
3.6 On July 22, 2002, Complainant and Respondent were notified by the Center of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. The Center notified the Panel that, absent exceptional circumstances it would be required to forward its decision to the Center by August 5, 2002. Pursuant to the Panel’s request, the decision deadline was extended to August 12, 2002.
The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
4.1 Complainant Encyclopedia Britannica, Inc. owns the rights to the registered trademark BRITANNICA ONLINE for "computer services, namely providing access to computer databases of information in the field of encyclopedias, yearbooks, and dictionaries," which was registered September 12, 1995, as U.S. Reg. No. 1,918,562, with a claimed first use as early as 1994. Complainant also owns numerous trademark registrations that include "Britannica" dating back to 1950.
4.2 The Respondent registered the domain name <britannicaonline.com> on October 22, 1999. The domain name is currently active and links to one or more pornographic web sites.
5. Parties’ Contentions
Since the 18th Century, Complainant has been engaged in the manufacturing, sales and distribution of encyclopedia, dictionaries, atlases and other reference-related goods and services. Since the late 1870s, Complainant has sold encyclopedia, dictionaries, atlases and other reference-related goods and services throughout the United States under the ENCYCLOPAEDIA BRITANNICA trademark.
On January 24, 1948, Complainant filed an application to register ENCYCLOPAEDIA BRITANNICA with the United States Patent and Trademark Office ("USPTO"). On August 15, 1950, Complainant received its first federal registration (Registration No. 529,006) for the EncyclopAEdia Britannica trademark.
On August 1, 1994, Complainant filed an application to register BRITANNICA ONLINE with the United States Patent and Trademark Office, thereby giving constructive notice of Complainant's intent to use that trademark. On September 12, 1995, Complainant received its first federal registration (Registration No. 1,918,562) for the BRITANNICA ONLINE trademark. See Annex C.
Complainant operates its principal web site at "www.britannica.com". This site offers a variety of on-line reference services, including providing news, sports, market and weather information.
Complainant has sold many billions of dollars worth of encyclopedia, reference and other on-line goods and services under the BRITANNICA ONLINE, ENCYCLOPAEDIA BRITANNICA and BRITANNICA trademarks ("EB Marks") throughout the United States, and Complainant has spent hundreds of millions of dollars to advertise and promote its encyclopedia, reference and other on-line goods and services under the EB Marks throughout the United States.
By virtue of Complainant's long use, advertising and promotion, the EB Marks have become well known and famous throughout the world and possess a strong secondary meaning signifying Complainant and the encyclopedia, reference and other on-line goods and services sold under the EB Marks throughout the United States.
On June 7, 2001, Complainant sent an e-mail to John Zuccarini, the Respondent in this proceeding, requesting that Mr. Zuccarini transfer the domain name <britannicaonline.com> to Complainant immediately ("June 7th Letter"). A copy of the June 7th Letter is attached hereto as Annex D. Respondent did not respond to the June 7th Letter.
On August 13, 2001, Complainant sent a second e-mail to Mr. Zuccarini once again demanding that Mr. Zuccarini transfer the domain name <britannicaonline.com> to Complainant ("August 13th Letter"). A copy of the August 13th Letter is attached hereto as Annex E. Respondent did not respond to the August 13th Letter.
On August 24, 2001, Complainant sent a letter by facsimile and certified mail to Mr. Zuccarini demanding, for a third time, that Mr. Zuccarini transfer the domain name <britannicaonline.com> to Complainant, but the facsimile number was inaccessible and the certified letter was returned to Complainant as undeliverable ("August 24th Letter"). A copy of the August 24th Letter is attached hereto as Annex F. The August 24th Letter was sent to the same fax number and postal address identified in Whois report dated September 14, 2001. See Annex A.
The Respondent's lack of rights or a legitimate interest in the domain name and his bad faith in registering and using the domain name are demonstrated by numerous facts, including:
On October 19, 1999, Complainant announced the debut of its web site located at "www.britannica.com". During its first day of operation, "www.britannica.com" received approximately 10 million hits. Upon information and belief, the Respondent registered <britannicaonline.com> on or about October 22, 1999, in order to intentionally divert traffic away from Complainant's web site.
On or about October 22, 1999, the Respondent also registered <encyclopediabrittanica.com>, <brtanica.com>, <bitannica.com> and <britannca.com> ("Contested Domain Names"), which Contested Domain Names Respondent used to hyperlink to advertisement pages hosted by Respondent and to Complainant’s "www.britannica.com" web site. See Encyclopædia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a County Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330, para. 2, p. 1 (Administrative Panel Decision, June 7, 2000) at Annex J. On April 25, 2000, Complainant filed a complaint with the Center pursuant to the Policy and, on June 7, 2000, the Administrative Panel found, among other things, that the Contested Domain Names were "virtually identical and confusingly similar to Complainant’s . . . marks..." and that there was "more than ample evidence of 'bad faith' registration and use [of the Contested Domain Names]." Id., at para. 3, p. 1. Consequently, the Administrative Panel ordered the Respondent to transfer the Contested Domain Names to Complainant. Id., at para. 4, p. 1.
According to the Federal Trade Commission complaint filed on September 25, 2001, Respondent has registered in excess of 5,500 domain names, many of which are misspellings of widely known and famous trademarks or celebrity names. See Federal Trade Commission v. John Zuccarini, et. al., Civil Action No. 01-CV-4854, Complaint, and Federal Trade Commission Press Release dated October 1, 2000, at Annex H. On October 18, 2001, the United States District Court for the Eastern District of Pennsylvania issued a preliminary injunction prohibiting Respondent from, among other things, registering any new domain names, operating any web sites with domain names that are misspellings of other domain names, and operating any web sites with domain names that are confusingly similar to famous trademarks, service marks or names. See Federal Trade Commission v. John Zuccarini, et. al., Civil Action No. 01-CV-4854, Preliminary Injunction Order at Annex I.
On March 22, 2000, the United States District Court for the Eastern District of Pennsylvania granted a preliminary injunction under the Anticybersquatting Consumer Protection Act ("ACPA"), 15 U.S.C. § 1125(d), against John Zuccarini, the Respondent, trading as Cupcake City, for Respondent's bad faith registration of domain names that were substantially similar to the plaintiff's trademarks. See Shields v. Zuccarini, 2000 U.S. Dist. Lexis 3350 (March 22, 2000). In Shields, the plaintiff, Joseph Shields, created, exhibited and marketed cartoons under the names "Joe Cartoon" and Joe Cartoon Co." 2000 U.S. Dist. Lexis at *2. The plaintiff used the trademark JOE CARTOON to market his cartoons for the past fifteen years and registered the domain name <joecartoon.com> on June 12, 1997. Id. In November of 1999, Mr. Zuccarini registered five variations of the plaintiff's trademark: <joescartoon.com>, <joecarton.com>, <joescartons.com>, <joescartoons.com> and <cartoonjoe.com>. Mr. Zuccarini hosted web sites at these domain names featuring advertisements for other sites and credit card companies and received between ten and twenty-five cents from advertisers for every click. Id. Visitors were trapped or "mousetrapped" in these sites, unable to exit without clicking on a succession of ads. Id. The Court in Shields granted plaintiff's preliminary injunction and determined that "Zuccarini has engaged in exactly the type of conduct the ACPA is designed to prevent, and [that] Shields will suffer irreparable harm unless we enjoin this flagrant violation of his rights." Id. at *26.
Respondent's ownership of numerous domain names that are virtually identical to widely known and famous trademarks or celebrity names suggests a bad faith intent to profit from the activities of others. See J.P. Morgan v. Resource Marketing, Case No. D2000-0035, para. 6, p. 4 (Administrative Panel Decision, March 23, 2000).
Respondent uses the <britannicaonline.com> domain name to hyperlink to a pornographic web site and a gambling advertisement. Copies of Respondent's pornography and gambling web pages that are hyperlinked from "www.britannicaonline.com" are attached as Annex G.
The Respondent is not commonly known by the <britannicaonline.com> domain name and has not acquired any trademark or service mark right to such name. The Respondent has not applied for or obtained any state of federal trademark or service mark registrations for the <britannicaonline.com> domain name.
Upon information and belief, Respondent does not conduct any legitimate commercial or non-commercial business activity using the <britannicaonline.com> domain name.
Complainant has not licensed or otherwise permitted the Respondent to use the EB Marks or to apply for or use any domain name incorporating those marks. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, para. 7.2, p. 4 (Administrative Panel Decision, February 18, 2000); Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022, para. 6D, p. 5 (Administrative Panel Division, March 3, 2000).
In addition to any actual knowledge Respondent may have of Complainant's rights in the EB Marks, Respondent has had constructive notice of Complainant's trademark rights in the BRITANNICA ONLINE trademark since at least 1995.
Notwithstanding Respondent's constructive notice of Complainant's prior rights in the BRITANNICA ONLINE trademark and probable actual knowledge of Complainant's rights in EB Marks, Respondent obtained the "www.britannicaonline.com" domain name in order to intentionally attempt to attract, for commercial gain, Internet users to Respondent's hyperlinked pornography and gambling web pages by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation or endorsement of Respondent's web site.
The Respondent's "www.britannicaonline.com" domain name is identical and confusingly similar to Complainant's BRITANNICA ONLINE registration and trademark, and is virtually identical and confusingly similar to Complainant's BRITANNICA and ENCYCLOPAEDIA BRITANNICA registrations and trademarks. As evidenced by Complainant's numerous trademark registrations for, and wide reputation in, the EB Marks, "it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name" <britannicaonline.com>. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, para. 7.7, p. 9 (Administrative Panel Decision, February 8, 2000).
Respondent has actively concealed his identity and has not responded to any of Complainant's attempts to contact Respondent.
The facts that (i) Complainant's EB Marks have a strong reputation and are widely known throughout the world; (ii) Respondent has a history of obtaining domain names that are misspellings of widely known or famous trademarks or celebrity names; (iii) Respondent has used the "wwww.britannicaonline.com" domain name to intentionally divert traffic away from Complainant's "www.britannica.com" web site; (iv) Respondent has been preliminarily enjoined from engaging in similar conduct in Shields v. Zuccarini, 2000 U.S. Dist. Lexis 3350 (March 22, 2000) and temporarily restrained and preliminarily enjoined from redirecting and obstructing consumers on the Internet or World Wide Web in Federal Trade Commission v. John Zuccarini et al., Civil Action No. 01-CV-4854, U.S. Dist. E.D. PA (September 26, 2001); (v) Respondent has actively concealed his identity and has not responded to any of Complainant's numerous attempts to contact him; and (vi) it is not possible to conceive of any plausible or contemplated active use of the <britannicaonline.com> domain name by Respondent that would not be illegitimate or unlawful, constitute evidence of the registration and use of the domain names in bad faith in accordance with Paragraph 4(a)(iii) of the Policy.
Respondent did not file a response to the complaint.
6. Discussion and Findings
6.1 The Policy, adopted by ICANN on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules, establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
6.3 The Center forwarded notification of the complaint to the Respondent via post/courier and email in accordance with the contact details found in the appropriate WHOIS database. The Center also forwarded notification of default to the Respondent via email.
6.4 Based on the methods employed to provide the Respondent with notice of the complaint and default the Panel is satisfied that The Center took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by the Center.
6.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
6.6 As the Respondent has failed to submit a response to the complaint, the Panel may accept as true all of the allegations of the complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, February 29, 2000.
6.7 Based upon the registered trademark for BRITANNICA ONLINE and the continuous use of the mark, the Complainant clearly has rights in the mark.
6.8 Complainant asserts that the domain name <britannicaonline.com> is identical to the trademark BRITANNICA ONLINE.
6.9 The Panel agrees with the Complainant and finds that the <britannicaonline.com> domain name is identical to the registered trademark BRITANNICA ONLINE, and that the Complainant has established it has rights in the mark BRITANNICA ONLINE, pursuant to paragraph 4(a)(i) of the Policy.
6.10 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
6.11 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name <britannicaonline.com>.
6.12 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name <britannicaonline.com> pursuant to paragraph 4(a)(ii) of the Policy.
6.13 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.
6.14 The Respondent’s bad faith is evident from the facts set forth above. Respondent is a reputed cybersquatter with a history of violating trademark rights, including the Complainant’s trademark rights. Respondent is using the <britannicaonline.com> domain name to link to pornographic web sites. There is no doubt that Respondent registered and is using the domain name in bad faith.
6.15 The Panel finds the Complainant has established that the Respondent registered and used the domain name <britannicaonline.com> in bad faith, pursuant to paragraph 4(b)(iv) of the Policy.
As the Complainant, Encyclopaedia Britannica, Inc., has established that the Respondent, John Zuccarini a/k/a null John Zuccarini, Country Walk, has engaged in abusive registration of the domain name <britannicaonline.com> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <britannicaonline.com> be transferred to the Complainant.
R. Eric Gaum
Dated: August 12, 2002