WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Media West-GSI, Inc., Gannett Satellite Information Network, Inc., and Gannett Co., Inc. v. Cupcake City and null John Zuccarini a/k/a John Zuccarini
Case No. D2001-0235
1. The Parties
The Complainants are: Media West-GSI, Inc., Gannett Satellite Information Network, Inc., and Gannett Co., Inc. Media West-GSI, Inc., a subsidiary of Gannett Satellite Information Network, Inc., has offices at 50 West Liberty Street, Suite 802, Reno, Nevada 89501, U.S.A. Gannett Satellite Information Network, Inc. has offices at 1000 Wilson Boulevard, Arlington, Virginia 22229, U.S.A. Gannett Co., Inc. has offices at 1100 Wilson Boulevard, Arlington, Virginia 22234, U.S.A.
The Respondents are: Cupcake City, an entity whose address is 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania 190202, U.S.A. and null John Zuccarini, a person at the same address. The Respondents are represented by: Christopher A. Grillo, Esq., Law Office of Christopher A. Grillo, 1 East Broward Boulevard, 7th Floor, Fort Lauderdale, Florida 33304, U.S.A.
2. The Domain Names and Registrars
The disputed domain name is registered with the registrar Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
The registrar for the disputed domain name is Internet Council of Registrars (CORE), World Trade Center ll-29, Route de Pre-Bois-CH-1215, Geneva, Switzerland.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center�s Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The domain names in dispute in this proceeding were in dispute in a previous ICANN/WIPO proceeding where the complaint was dismissed "without prejudice" for lack of information (Media West-GSI, Inc. and Gannett Satellite Information Network, Inc. v. Cupcake City and Null John Zuccarini aka John Zuccarini, ICANN/WIPO Case No. D2000-1205, December 6, 2000)
This Complaint was filed on February 15, 2001. On February 19, 2001, the Center requested that the registrar NSI check on the registrant for the domain name . On March 5, 2001 NSI reported back to the Center that the registrant was the Respondent Cupcake City and that John Zuccarini was the administrative contact.
Also on February 19, 2001 the Center requested that the registrar CORE check and report back on the registrant for the disputed domain name . On February 22, CORE reported to the Center that the registrant was the Respondent null John Zuccarini.
On March 8, 2001 the Center forwarded a copy of the Complaint to the Respondents by registered mail and by e-mail and this Proceeding officially began. The Respondents� Response was received by the Center on March 28, 2001.
The Administrative Panel submitted a Declaration of Impartiality and Independence on March 30, 2001, and the Center proceeded to appoint the Panel on April 4, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by April 17, 2001.
4. Factual Background
The Complainants have been publishing the newspaper USA Today since 1982. They claim a daily circulation of some 2.2 million readers in some sixty (60) countries. The Complainant also states that its on-line version of its daily newspaper has been available since 1995.
The Respondents are in the business of selling advertising over the internet at a large number of web sites. On April 24, 1999, Respondent Cupcake City registered the disputed domain name , and on October 22, 1999 Respondent Zuccarini registered the disputed domain name .
The Complainants sent the Respondents letters on April 10, 2000 and on May 2, 2000 alleging infringement of Complainants� USA Today mark and demanding that the Respondents turn the disputed domain names over to the Complainants as a way to resolve the dispute "amicably" (Complaint Exhibits J and K). The Respondents did not reply to the Complainants� letters, and the Complainants are now seeking transfer of the disputed domain names through this proceeding.
5. The Parties� Contentions
Complainants� Contentions:
- The Complainants have invested a substantial amount of time and resources to establish and operate their USA TODAY newspaper and website and to promote and advertise the USA TODAY marks and associated products and services. As a result, the marks are famous and are an indication of quality and origin exclusively with the Complainants.
- Respondents are not licensees of the Complainants and are not authorized to use the marks in the disputed domain names.
- Except for the addition of the words "sports" and "weather", two well-known sections of both Complainant�s USA TODAY newspaper and the USATODAY.com website, the second level name for both of the domain names is identical to Complainant�s USA TODAY mark.
- At the disputed domain name websites, the Respondents "frame" pages from the Complainants� websites without permission to do so.
- The Respondents registered the disputed domain names in bad faith in that their purpose was to divert web traffic from the Complainants� websites to the Respondents� websites.
- The Respondents are selling advertising at the websites of the disputed domain names and derive significant commercial gain from this practice.
- The Respondents� bad faith also is demonstrated by their targeting a very famous mark.
- The Respondents are in bad faith because they have exhibited a pattern of registering famous marks.
- The disputed domain names should be transferred to the Complainants.
Respondents� Contentions:
- Proceedings under the Policy violate the United States of America Constitution because they involve a taking of property without due process.
- The Complainants� mark USA TODAY is not distinctive since there are some sixty-seven (67) domain names using this term.
- What the Respondents did or did not do in previous proceedings is irrelevant in this proceeding; the Complainants are trying to prejudice the Panel against the Respondents.
- The Respondents are making fair use of the Complainants� mark and this use is protected by free speech.
- The Respondents are typosquatters, and this is legal and not to be confused with cybersquatting, which is illegal. Only identical marks infringe other marks, not those that are similar.
- Profit linked to domain names does not indicate bad faith.
- Respondent offers services that do not compete with the Complainants� services.
- The decisions reached in other proceedings under the Policy are irrelevant.
- The Complaint should be dismissed and the Complainants should bear the costs of this proceeding.
6. Discussion and Findings
In order for the Complainants to prevail and have the disputed domain names transferred to themselves, they must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
Under this part of the Policy�s requirements, the Complainants must show that the disputed domain names and are identical or confusingly similar to their mark. The Complainants have produced copies of a myriad of registrations on the United States principal trade mark register for their mark USA TODAY (for example no. 1,332,045, "USA TODAY" registered on the principal register for int. class 16, daily newspapers, registered on April 23, 1985; and also no. 1,415, 846, "USA TODAY" with design also on the principal register in int. class 16 for daily newspapers registered on November 4, 1986. These two trademarks are registered in the name of the Respondent Gannett Co., Inc. See Complaint Exhibit D.). The Complainants also have shown that the mark has been registered in a number of foreign countries and that their newspaper is internationally known and has a large circulation.
The Respondents assert that they are "typosquatters� and that spelling a mark or domain name differently results in a noninfringing mark. The Panel finds Respondents� argument inapposite since Respondent has not misspelled the Complainants� mark.
The Respondents added the words "sports" and "weather" to the Complainants� famous newspaper name. As the Complainants point out in the Complaint ( p. 13), the Panel finds the public would believe the disputed domain names were an integral part of the Complainants� on-line newspaper offerings, for almost every daily newspaper has a sports and a weather section. Thus, the disputed domain names are confusingly similar to the Complainants� mark.
Legitimate Rights or Interests
The Complainants categorically deny having conferred any license or other right that would allow the Respondents to use the Complainants� mark in the disputed domain names.
The Respondents assert fair use ("freedom of speech" at Response p. 4), but it does not appear to the Panel the Respondents can come under the Policy at 4c(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." The Respondents certainly are making commercial use of the disputed domain names, and are misleadingly diverting consumers as we discuss further in the bad faith section below.
Registered and Used in Bad Faith
The Complainants have shown that the Respondents have registered many, many other famous marks as domain names (the Complaint p. 14 and Exhibit C). Based on this evidence, the Complainants advance the argument that the Respondents have violated the Policy at 3b(ii). However, even though the Complainants have shown the Respondents have engaged in a pattern of registering many other famous domain names, it still is not apparent to the Panel that the Respondents were attempting "to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name,.." as required by this provision of the Policy.
On the other hand, the Panel finds the Complainants have amply demonstrated that the Respondents registered the disputed domain names in violation of the Policy at 4b(iv), i.e., the Respondents registered confusingly similar domain names in order to attract the Complainants� customers or interested parties to the Respondents� websites at the disputed domain names in order to have them view the advertising the Respondent sells. This is bad faith in registration and use under the Policy at 4b(iv). The Panel finds it interesting to note that the Respondents are quite open about their business of "traffic generating" (the Response at p. 2). (see Scholastic Inc. v. Applied Software Solutions, Inc. ICANN/WIPO Case No. D2000-1629, March 15, 2001; Encyclopaedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, ICANN/ WIPO Case No. D2000-0330, June 7, 2000; and Bama Rags, Inc. v. John Zuccarini, d/b/a Cupcake Confidential, ICANN/NAF Case No. FA003000094380, May 8, 2000 ).
The Panel finds the Complainants have shown the Respondents registered and are using the disputed domain names in bad faith.
7. Decision
In keeping with ICANN Policy para 4(i) and Rule 15, the Panel finds the Respondents� disputed domain names are confusingly similar to the Complainants� famous mark; the Respondents have no rights or legitimate interests in the domain names; and the Respondents registered and are using the domain names in bad faith.
Therefore, the Panel orders that the registrar NSI transfer the domain name from the Respondent Cupcake City to the Complainants Media West-GSI, Inc., Gannett Satellite Information Network, Inc., and Gannett Co., Inc.
The Panel also orders that the registrar CORE transfer the domain name from the Respondent null John Zuccarini to the same Complainants.
Dennis A. Foster
Sole Panelist
Date: April 17, 2001
Full & Egal Universal Law Academy