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					                WIPO Arbitration and Mediation Center

          Link Clicks Inc. d/b/a Ad Here and TOTALLYFREESTUFF.COM
                        John Zuccarini d/b/a Cupcake Patrol

                                  Case No. D2000-1547

1.   The Parties

     The Complainant is Link Clicks Inc. d/b/a Ad Here and TOTALLYFREESTUFF.COM,
     a Canadian corporation represented by Gowling, Lafleur Henderson LLP of Ottawa,
     Ontario, Canada.

     The Respondent is John Zuccarini d/b/a Cupcake Patrol with an address at 957, Bristol
     Pike, Suite D-6, Andalusia, PA 19020, USA.

2.   The Domain Name and Registrar

     The domain name at issue is <>.

     The Registrar is CORE Internet Council of Registrars.

3.   Procedural History

     The Complaint was received by email on November 9, 2000, and in hard copy on
     November 14, 2000, by the WIPO Arbitration and Mediation Center [the Center]. In
     accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute
     Resolution Policy [the Rules] as approved by ICANN on October 24, 1999, and the
     Center's own Supplemental Rules in effect as of December 1, 1999 [the Supplemental
     Rules], the Center verified that the Complaint satisfied the formal requirements of the
     Uniform Domain Name Dispute Resolution Policy adopted by ICANN on October 24,
     1999 [the Policy], the Rules and the Supplemental Rules. The Complaint was submitted
     in English and the proceedings have been conducted in English. The Complainant has
     paid the specified fee to the Center.

     The Center transmitted the requisite Registrar Verification request to CORE Internet
     Council of Registrars on November 20, 2000, and received a response on the same day,
     confirming that the Respondent, John Zuccarini, is the current owner/registrant of the
     domain name <>.
                                          page 1
     Proceedings in this case were formally commenced on November 28, 2000, when the
     Center sent a copy of the Complaint (including a minor formal amendment of the
     Registrar details filed by the Complainant at the Center's request) to the Respondent by
     post at the address recorded in the Registrant details for the domain name at issue and
     by email to The notification to the Respondent advised that a
     Response would need to be submitted to the Center no later than December 17, 2000, to
     be sure of being considered in these proceedings. No Response was received by the
     specified deadline. Consequently, on December 20, 2000, the Center issued a
     Notification of Respondent Default, which was duly transmitted to the Respondent and
     to the Complainant's representatives by email only.

     On January 5, 2001, the Center invited Mr. Keith Gymer to serve as single Panelist in
     these proceedings and received his Statement of Acceptance and Declaration of
     Impartiality and Independence on January 8, 2001. The Center appointed Mr. Gymer as
     Panelist on January 9, 2001, and notified the Respondent and the Complainant's
     representatives of this appointment by email on the same day.

4.   Factual Background

     According to the Registrar's records, the domain name <> was
     registered to the Respondent on January 26, 2000.

     The Complainant’s business is said to be the authorization and performance of on-line
     advertising for others. The Complainant’s own domain name <>
     was created on June 26, 1998.

     At its domain name <>, the Complainant promotes consumer goods
     and services which are provided on a free or trial basis. The Complainant is paid for
     this service by advertisers who purchase banner advertisements and hyperlinks for
     display at the Complainant’s domain name <>.

     The Complainant has filed the following applications to register its trade-marks:

              Trade-mark               Country       App. No.         Filing Date              Canada        1063139        June 14, 2000*
     TOTALLY FREE STUFF                Canada        1064004        June 20, 2000*
     TOTALLY FREE STUFF            United States    76072803*       June 19,2000*
     (* data obtained by the Panelist)

     The Complainant, by its Agent, sent a letter by courier on August 8, 2000 requesting
     that the Respondent cease and desist its use of the disputed domain name. This
     correspondence was refused by the Respondent. Evidence of the Respondent’s refusal
     was provided by the courier company and attached to the Complaint.

     Otherwise, the Complainant has made a number of further contentions by way of a
     Statement of Case in the Complaint. These are summarised below.

                                           page 2
5.   Parties’ Contentions

     A.    Complainant

     Panelist's note: The following extracts are taken directly, or with some qualification and
     paraphrasing, from the Complaint. There are a number of pertinent misspellings of
     both the Complainant's and the Respondent's domain names. These have been left
     uncorrected, but are followed by an identifying "[sic]" in each case where the Panelist
     believes from the context that the Complainant itself has mistyped the domain name it
     was intending to refer to.

     The Complainant submits that notwithstanding the fact that none of its trade mark
     applications has been registered, the Policy (para. 4(a)(i)) applies to common law
     trade-marks in addition to registered trade-marks. The Complainant cited a number of
     decisions supporting this contention.

     The Complainant asserts that it owns the trade-mark TOTALLY FREE STUFF and the
     trade-mark TOTALLYFREESTUFF.COM. The Complainant says it has continuously
     used the trade-mark TOTALLY FREE STUFF in association with advertising and
     promotion services since at least as early as June, 1996 [no evidence was provided to
     support this contention]. The Complainant also claim to have continuously used the
     trade-mark TOTALLYFREESTUFF.COM in association with its advertising and
     promotion services since at least as early as June, 1998. From January 1 to June 30,
     2000, the Complainant reportedly generated in excess of $180,000 CND in advertising
     revenue. According to PCDataOnline, a service that audits visits to specific websites,
     <> had in excess of 4,900,000 different users visit the site during
     that period. This number reportedly does not include repeat visitors.

     The Complainant alleges that the disputed domain name is a typographical variation of
     the Complainant’s mark and such registration and use constitutes "typosquatting". The
     Respondent profits from confusion created by the domain names and by passing off its
     services for "free stuff" as those of the Complainant and the Respondent has registered
     the disputed domain name <>[sic] to intentionally [mis]direct users
     seeking the Complainant’ s TOTALLY FREE STUFF directory and computer services
     provided at the domain <>.

     The Respondent’s use of the disputed domain name corresponds to the Respondent’s
     use of other typographical error domains which have been subject to UDRP and judicial
     proceedings. The Respondent’s pattern of use for domain names is consistent: when a
     potential or existing online customer, attempting to access the Complainant’s web site
     mistakenly types one of the Respondent’s misspelled domains such as
     <>, he is "mousetrapped" in a barrage of advertising windows,
     featuring a variety of products, including credit cards, Internet answering machines,
     games and music. The Internet user cannot exit the new windows without clicking on
     the succession of advertisements that appears. Simply clicking on the "X" in the top
     right hand corner of the screen, a common way to close a browser window, will not
     allow a user to exit. The Respondent is allegedly paid between 10 and 25 cents by the
     advertisers for every click.

     The Respondent’s "mousetrapping" practises have been considered in several cases
     against him under the Policy, all of which he has lost. In each case, the disputed
     domain was a common misspelling of a trade-mark or domain owned by the

                                           page 3
Complainant. In each of these hearings, the Panel has found him to have no legitimate
interest to any disputed domain name. The Complainant listed a number of such cases.

In a Court proceeding for a preliminary injunction under the Anticybersquatting
Consumer Protection Act 15 U.S.C. § 1125(d), the Respondent is reported to have
admitted that he selects domain names for registration based on the fact that they are
likely misspellings and confusingly similar to others’ famous marks or personal names.
In the decision issued by the United States District Court in Shields v. Zuccarini, 2000
US Dist. Lexis 3350 ("Shields"). The Court wrote that the Respondent’s very business
existence depends on his parasitic use of others’ names:

     "During his deposition before us, Zuccarini admitted that he registered the
     variations on "Joe Cartoon" as well as thousands of other domain names, because
     they are confusingly similar to other’s famous marks or personal names – and
     thus are likely misspellings of these names – in an effort to divert Internet traffic
     to his sites. ... He has also registered variations on popular product and
     webnames like,, and
     This conduct is compelling evidence of his bad faith."

The United States District Court has issued a further Order against the Respondent John
Zuccarini for typosquatting in the case Electronics Boutique Holdings Corp. v.
Zuccarini (U.S. Dist. Ct. for the E. District of Pennsylvania, Civil Action No.:00-4055
October 30, 2000, unreported) ("Electronic Boutique"). Zuccarini had registered five
domain names which were spelling variations of the Plaintiff’s trade-mark
ELECTRONICS BOUTIQUE. The court ordered (i) the transfer of the five domain
names from Zuccarini to the Plaintiff, (ii) a permanent injunction against Zuccarini from
using any domain substantially similar to the Plaintiff’s, and (iii) the maximum amount
of statutory damages provided for under the Anticybersquatting Consumer Protection
Act, namely $100,000 per domain. In the decision, the Court made the following
findings of fact about the use of the disputed domain names by Zuccarini:

     "I note at the outset that the profitability of Mr Zuccarini’s enterprise is
     completely dependant on his ability to register domain names that are confusingly
     similar to famous names. As the similarity in the spellings of Mr. Zuccarini’s
     domain names to popular or famous names increases, the likelihood that an
     Internet user will inadvertently type one of Mr. Zuccarini’s misspellings (and Mr.
     Zuccarini will be compensated) increases.

     Mr. Zuccarini’s bad faith intent to profit from the domain misspellings is
     abundantly clear. Mr Zuccarini registered the domain misspellings in order to
     generate advertising revenue for himself despite being aware of the Electronics
     Boutique Stores and its website. Mr. Zuccarini believes that Internet users will
     misspell the domain names of the websites they intend to access and instead
     access one of Mr. Zuccarini’s websites. Mr. Zuccarini has profits each time an
     Internet user makes a typing or spelling mistake which Mr. Zuccarini correctly

     In addition, the domain mispellings quite obviously do not consist of names used
     to identify Mr. Zuccarini, legally or otherwise. Also Mr. Zuccarini has no bona
     fide business purpose for registering domain misspellings, as he does not and has
     not offered any goods or services that relate to EB or electronic products. Lastly.
     Mr. Zuccarini has no intellectual property rights at issue in this matter. I find

                                      page 4
      that Mr. Zuccarini specifically intended to prey on the confusion and
      typographical and/or spelling errors of Internet users to divert Internet users from
      EB’s website for his own commercial gain."

The Respondent’s "mousetrap" links accessed from the disputed domain name offer free
and low-cost promotions for wares and services such as telephone, Internet and
entertainment services. These services may easily be confused as being offered,
authorized or endorsed by the Complainant.

One of the Respondent’s mousetrap sites is the domain <>, which offers
"Affilliate [sic] Partnerships" where commissions are paid to referring websites for
linking persons who join the callwave program to <>. The company
states: "Why are CallWave’s affilliates [sic] making so much money? The Internet
answering machine is FREE and CallWave pays $1.00 per lead". The <>
URL mousetrapped by the disputed domain name discloses the referring Partner
Identification no. PID=237990, which suggests that the Respondent receives payments
as an Affiliate partner.

The effect of the links opened by a visit to the disputed domain name is that Internet
users may believe that the sites that have been selected, approved or authorized by the
Complainant. Moreover, the Respondent may be generating revenue which otherwise
may have accrued to the Complainant.

The Complainant submits that (1) the disputed domain name is confusingly similar to
the common law trade-mark TOTALLYFREESTUFF.COM owned by the
Complainant; (2) the Respondent has no legitimate rights nor interests in the disputed
domain name; and (3) the Respondent has registered and is using the disputed domain
name in bad faith.

(1)   Confusingly Similar

      The Complainant submits that the disputed domain name is confusingly similar to
      the Complainant’s trade-marks and domain name. The only difference between
      the two domain names is the subtraction of the letter ‘l’ in the disputed domain
      name. This omission, known as a typo, is common as users will often mistakenly
      omit the letter without realization. As such, the likelihood of confusion between
      <> [sic] and <> [sic] is considerable.

      The Respondent’s use of the disputed domain name is made on the business
      model of "unintended visitors" described by the Court in Shields and Electronic
      Boutique. It is impossible to know the number of Internet users confused by
      entering the disputed domain name in search of the Complainant’s services. The
      Complainant submits, however, that every time a user enters the domain name in his browser is an instance of confusion with the
      Complainant’s services, as the disputed domain is not a bona fide trade-mark for
      the Respondent’s services. The disputed domain name is simply a misspelling of
      the Complainant’s trade-mark and corresponding domain name.

(2)   No Rights or Legitimate Interests

      The Respondent has no rights or legitimate interests in <>
      [sic]. The Respondent conducts no bona fide business at this web site and is not
      commonly known by this name. The Respondent has linked the disputed domain

                                      page 5
      to other sites through the technique of "mousetrapping" described above. These
      mousetrap sites have no bona fide reason to function as links from the disputed
      domain name.

      The Panel in Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake
      Patrol (WIPO Case D2000-0330), stated that a finding under the
      Anticybersquatting Consumer Protection Act should be given "substantial weight"
      in a UDRP proceeding. The bad faith business practices of the Respondent were
      considered by the United States District Court in Shields and Electronic Boutique.
      The Complainant submits that the prior proceedings against the Respondent set
      out above reflect a business practice of registering misspelled domain names to
      trade off and profit from the fame and reputation of others.

      There is no evidence that the Respondent is making a legitimate non-commercial
      or fair use of the disputed domain name. In fact, the Respondent has admitted in
      Shields that he intentionally hoped to mislead web traffic to his sites and earns
      approximately $1 million dollars annually from click-based revenue. In addition,
      there is no evidence that the Respondent’s business is commonly known as
      <>. As mentioned previously, many of the domain names the
      Respondent has registered link to the same sites to which <>
      [sic] links. There is no connection between the domain name and the linked sites.

(3)   Bad Faith Registration and Use

      Registration of commonly misspelled names are indicative of bad faith under the
      Policy. In State Farm Mutual Automobile Insurance Company v. Commercial
      Real States (NAF Case FA0094728), the Panel found that typo-squatters "with a
      demonstrable pattern of conduct involving the registration of domain names that
      are substantially similar to the famous marks and names of other companies" is "a
      plain violation of paragraph 4(b)(ii) of the Policy." The Complainant also listed a
      number of cases where similar conclusions were reached.

      The Respondent has a history of registering misspellings of famous names and
      common phrases, and given the number of domain names he has registered, can
      be said to have warehoused hundreds of such names for the sole purpose of
      financially benefitting from user confusion. The Complaint included a listing
      provided by the domain registrar Network Solutions Inc., showing at least 1440
      names domain names with the Respondent Mr. Zuccarini named as
      Administrative Contact, almost all of which are common misspellings of famous
      trade-marks, adult subject matter and celebrity names. Domains registered with
      CORE and other Registrars are not included in this list. The Network Solutions
      list of 1440 domain names, and the Policy decisions, and the District Court
      judgments of Shields and Electronic Boutique noted above provide overwhelming
      evidence that the that Respondent is in the business of registering confusingly
      similar domain names in bad faith for profit, such as the case for the disputed
      domain name in this proceeding.

      The Respondent, in fact, has been specifically prohibited from engaging in such
      conduct by the U.S. District Court of Eastern Pennsylvania in Shields. This has
      not been a deterrence to the Respondent: in the case of Electronic Boutique, the
      U.S. District Court concluded that "Mr. Zuccarini boldly thumbs his nose at the
      rulings of this court and the laws of our Country."

                                      page 6
           The Respondent has deliberately attempted to attract web users to the disputed
           domain name for financial gain, by creating a likelihood of confusion with the
           Complainant’s mark. The mousetrap links from the disputed domain offer free
           phone, Internet, music and credit card services. A web user could be led to
           believe that these services are in fact the ones the Complainant is offering on its
           web site, <>, without realizing that a different service was
           being provided. Given the likelihood of a misspelling with this domain name, it is
           probable many web users have indeed made this mistake and confused the
           Respondent’s offers for the Complainant’s. By intentionally creating such
           confusion, as the Respondent admitted in Shields and the Court found in
           Electronic Boutique, the Respondent has financially profited.

           The Complainant submits that the Respondent has a confusingly similar domain
           name to the trade-mark TOTALLYFREESTUFF.COM owned by the
           Complainant. The Respondent has no legitimate interests in the disputed domain
           name and that he has registered and is using the disputed domain name in bad

     In accordance with Paragraph 4(b)(i) [sic - the correct Paragraph is 4(i)] of the Policy,
     the Complainant requests the Administrative Panel appointed in this administrative
     proceeding issue a decision that the disputed domain name <> be
     transferred to the Complainant.

     B.    Respondent

     No Response to the Complaint was received from the Respondent.

6.   Discussion and Findings

     In order for the Panel to decide to grant the remedy of transfer of a domain name to a
     Complainant under the Policy it is necessary that the Complainant must prove, as
     required by Paragraph 4(a) of the Policy, that

           (i)    the contested domain name is identical or confusingly similar to a trademark
                  or service mark in which the Complainant has rights; and

           (ii)   the 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 fact that the Respondent has not provided a Response to the Complaint does not
     relieve the Complainant of the burden of proving its case. In the absence of a Response,
     Paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based
     upon the complaint". Under Paragraph 14(a) of the Rules in the event of such a
     "Default" the Panel is still required "to proceed to a decision on the complaint", whilst
     under Paragraph 14(b) it "shall draw such inferences therefrom as it considers
     appropriate." It is clear that this does not mean a default decision is automatically to be
     issued in favour of the Complainant. If that were the intended result then there would
     be no need to appoint a Panel to decide the dispute. Consequently, the Panel must
     assess the Complaint on its merits.

                                            page 7
The Complainant has provided extensive evidence to demonstrate the Respondent's past
history of systematic misappropriation of the familiar trademarks of others (or minor
typographical variations of such marks). This may be convincing support for the
contention that the Respondent has no rights or legitimate interest in the domain name
at issue and that the domain name has been registered and is being used in bad faith,
provided always that the Complainant itself has rights which justify protection under the

It is not enough that there is overwhelming evidence that the Respondent has
consistently acted in bad faith in previous cases. Despite what some critics have
claimed, the UDRP is not a vehicle which is automatically prejudiced in favour of a
Complainant. Each case is to be decided on its own merits - the potential remedy is a
matter of contract, not equity. It is not a case of "three strikes (or more apparently in
the case of Mr. Zuccarini) and the Respondent is out", although victims of
Mr. Zuccarini's tactics might reasonably be excused for complaining that neither the
Courts nor the UDRP appear to have found or provided an adequate response to curtail
his egregious conduct.

In the present case, the Complainant claims what are presently unregistered trade mark
rights in TOTALLY FREE STUFF and The domain name at issu e
is <>. It is plain that this domain name is confusingly similar to the
trade marks claimed by the Complainant.

If either of the Complainant's marks was a registered trade mark, in force and not
subject to any opposition or revocation action, then it would also be readily possible to
conclude that the Complainant has relevant rights in the mark(s) which would be
protectable under the Policy. However, in this case the marks are not registered and the
applications were in any event filed after the Respondent registered the domain name at

The Panelist considers it settled interpretation that the reference to "rights" in Paragraph
4(a)(i) of the Policy includes both registered and unregistered rights (this issue has been
previously addressed in relation to disputing parties based in the United Kingdom, for
example, in the decision in WIPO Case No. D2000-0235 Jeanette Winterson v. Mark
Hogarth, as well as in various other cases as cited in the Complaint). In the case of
unregistered marks, however, there can be no presumption of entitlement to rights under
law and the onus must be on the Complainant to provide convincing evidence that it
should be entitled to such rights.

In the Panelist's view, it is reasonable to expect that the standards to be applied to
supporting evidence in cases brought under the Policy, and based on claims to
unregistered rights in particular, should be equivalent in form and extent to that which
would be required in an opponent's evidence-in-chief in a trademark opposition brought
on corresponding grounds.

The marks in this case are "TOTALLY FREE STUFF" and "". These
marks are prima facie directly descriptive of what the Complainant provides - i.e. links
to and advertising of <totally free stuff>. It is not surprising, therefore, that the
Complainant presently has no registered trademark rights in these marks.

This, in itself, does not necessarily mean that the Complainant cannot have any
proprietary common law or unregistered rights in the marks. In common law
jurisdictions it is generally recognised that a mark can become distinctive (and entitled

                                       page 8
to registration) on evidence that it has in fact acquired a distinctive character as a result
of the use made of it. However, for marks as inherently descriptive and non-distinctive
as "TOTALLY FREE STUFF" or "", the evidence which would be
required to prove that the mark has acquired sufficient distinctiveness to merit
registration would surely be substantial.

The evidence which would be required to support a claim to protection for the purposes
of a trademark opposition would probably not need to be so substantial - for example, it
might be sufficient to establish a significant local rather than a national reputation in
such a mark. Nonetheless, the Panelist considers that it would certainly require more
than mere assertion to justify any claim to proprietary rights in such a descriptive mark.

The Panelist notes that the Respondent did not expressly challenge any of the assertions
in the complaint. However, this cannot simply be taken as an admission of all the
claims in the Complaint. The Respondent might conceivably have taken the view that
the Complainant had failed to make a case meriting a response. The Panelist may be
entitled to draw reasonable inferences from the Respondent's lack of response but, in
this Panelist's view, it is not justifiable to go so far as to acknowledge a claim to
unregistered rights which is inadequately substantiated. The Policy requires a
Complainant to prove that it has relevant rights, not merely assert that such rights exist.

Taking all these issues into consideration, the evidence presented by the Complainant
falls well short of that which would be desirable to support the claims to proprietary
rights in such descriptive marks as "TOTALLY FREE STUFF" and
"" in this case.

On checking, for example, the Panelist found there are in fact several hundred active
domain names incorporating the element "freestuff". In addition to the Complainant's
<> and the Respondent's <>, other active
domains apparently not connected with the Complainant include: <>;
<>; <> ; <>;
<> and others such as <>. The
Complainant's own website asserts that it is "THE ORIGINAL Totally Free Stuff!!",
which may be true, but would also seem to be an implicit recognition both that other
"Totally Free Stuff" sites exist and that the Complainant can hardly claim exclusive
rights in "Totally Free Stuff".

The Complainant has certainly provided no convincing evidence to justify a claim to
such exclusive rights - a simple statement of one year's advertising revenue and site
visitors can hardly be considered sufficient to show that the Complainant has the
exclusive reputation with web users that it seeks to claim.

In the circumstances, the Panelist concludes that the Complainant has not adequately
discharged its obligation to show that its claim to unregistered rights in the trademarks
is justifiable. The evidence as submitted is simply insufficient to convince the Panelist
that the Complainant is entitled to assert such rights in such descriptive marks.

The Complainant pointed to a number of prior decisions under the Policy in support of
its case. Whilst the decisions are available, it is not possible to know what evidence was
filed in support of the claims in these earlier cases.

In the Panelist's view, none of these cases helps the Complainant overcome the
fundamental deficiency in the evidence which obliges the Panelist to conclude that the

                                        page 9
     Complainant has failed in these proceedings to provide sufficient evidence to support its
     claim to have protectable rights in the descriptive marks "TOTALLY FREE STUFF"
     and/or "".

     In the present proceedings, it follows that, as the Complainant has not provided
     sufficient evidence to convince the Panelist that it is entitled to claim such rights, it has
     not fulfilled the requirements of Paragraph 4(a)(i) of the Policy. No further
     determination is needed.

     By way of comment, the Panelist reaches this conclusion not without sympathy for the
     Complainant's predicament, particularly after having experienced the Respondent's
     "mousetrapping" activities himself when checking the domain name at issue. Given the
     negative impact of such "mousetrapping" the Panelist finds it hard to comprehend why
     any advertiser would be prepared to pay Mr. Zuccarini for the spurious "clicks" accrued
     though this method.

7.   Decision

     For the reasons given in Section 6 above, the Panelist decides that this Complaint
     should be dismissed for lack of adequate evidence to support the claim to unregistered
     trademark rights required under Paragraph 4(a)(i) of the Policy.

                                         Keith F.Gymer
                                          Sole Panelist

                                   Dated: January 12, 2001

                                            page 10

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