WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin
Case No. D2002-0635
1. The Parties
The Complainant is Classmates Online, Inc., a Washington (USA) corporation with itsprincipal place of business in Renton, Washington, United States of America,represented by William A. Drew of the law firm Elliott, Ostrander &Preston, PC, Portland, Oregon, United States of America.
Complainantidentified John Zuccarini, "individually and [doing business as] RaveClubBerlin" as the Respondent.� Theregistrar shows that John Zuccarini is the owner of (withCupcake Patrol being listed as the organization), and RaveClub Berlin is theowner of .� In theResponse, RaveClub Berlin and Cupcake Patrol claim to be the registrants of theDisputed Domain Names and have come forward as the Respondents.� RaveClub Berlin and Cupcake Patrol appear tobe unincorporated organizations controlled by Mr. Zuccarini.� In correspondence with the WIPO Arbitrationand Mediation Center (the �Center�), Mr. Zuccarini asserted that his address isc/o Wilderness Quest of Nova Scotia Corp., San Jose, Costa Rica.� For purposes of this decision, the term Respondents refers collectively to JohnZuccarini, RaveClub Berlin, and Cupcake Patrol.� Respondents are represented in this proceeding by Ari Goldbergerof ESQ Law Firm, Cherry Hill, New Jersey, United States of America.�
2. Domain Names and Registrar
The domain names at issue (Disputed Domain Names)are:
and
.
Accordingto the "whois" database, the Disputed Domain Names were registered onJune 5, 2001, and January 27, 2000, respectively.
The registrar is Computer Service Langenbach GmbH,doing business as , D�sseldorf, Germany.
3. Procedural History and Jurisdiction
TheCenter received the Complaint on July 9, 2002 (electronic copy), andJuly 10, 2002 (hard copy).�The Center verified that the Complaint satisfied the formal requirementof the ICANN Uniform Domain Name Dispute Resolution Policy (the �Policy�), theRules for Uniform Domain Name Dispute Resolution Policy (the Rules), and theWIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the�Supplemental Rules�).� Complainant madethe required payment to the Center.�
On July11, 2002, the Center transmitted via email to the Registrar a request forregistrar verification in connection with this case.� On July 12, 2002, the Registrar confirmed from thewhois database the ownership stated above and the contact information.� There was additional correspondence betweenthe Center and the Registrar on July 19, 2002, concerningRespondents' addresses.
Having verified that the Complaint satisfied the formalrequirements of the Policy and the Rules, on July 12, 2002, theCenter transmitted to the Respondent, via post/courier and e-mail, aNotification of Complaint and Commencement of the Administrative Proceeding.� The formal date of the commencement of thisadministrative proceeding was originally July 12, 2002.
The Center received a Responsefrom Respondent on August 2, 2002 (email), and onAugust 5, 2002 (hardcopy).�
Complainant had requested thatthe matter be decided by a single-member panel.� Respondents requested a decision by a three-member panel.� SeePolicy, paragraph 5(b)(iv).� The Centerinvited Richard G. Lyon (PresidingPanelist), Cecil O.D. Branson, Q.C., and David E. Sorkin to serve aspanelists.� Each of the panelistsproperly verified his independence.
OnAugust 20, 2002, the Center notified the parties of the panel members' namesand set a projected decision date of September 3, 2002.� After receiving the parties' requests tosubmit additional materials (see second following paragraph), the Panelnotified the Center, which in turn notified the parties, that the Panelextended its projected decision date to September 10, 2002.
We findthat the Panel was properly established, that the Respondents received timelynotice of the Complaint, and that the Panel has jurisdiction over thisdispute by reason of the Policy.[1]
On August 23, 2002, byelectronic mail sent simultaneously to the Center, the Panel members,Respondents, and Respondents' counsel, Respondent's counsel submitted twoadditional annexes to the Complaint and a "Reply Memorandum" togetherwith a request under Rule 12 that the Panel consider these materials.� Two days later Respondents submitted to theCenter their Petition to Consider Respondents Reply to Complainant's Reply.�
On September 6, 2002, the Panelissued its Procedural Order No. 1, annexed as a Schedule to this decision.[2] �In that Order:
(a) We denied both requests to submit additional information.� Submissions beyond the Complaint andResponse are discretionary with the Panel under Rule 12.� Panels ordinarily deny leave to submitmaterials beyond the complaint and response, as inconsistent with the intent ofthe Policy that a case be decided promptly.�We found nothing in Complainant's proposed supplemental materials thatcould not have been submitted with the Complaint or that address arguments thatComplainant could not reasonably have anticipated.� Each side's proposed additional argument consisted entirely ofrepeating arguments that it made in its initial pleading.� In deciding this case we take no account ofsuch proposed supplemental materials. �We here note our strong condemnation ofComplainant's sending its request to submit additional material directly to thePanel members, an inexcusable violation of Rule 8.� That alone is reason to deny Complainant's request to submit,even if otherwise there were a reason under the Rules or the circumstances toallow it.
(b) Werequested that Complainant provide additional evidence of the number ofsubscribers to its website, and such other matters as Complainant may deemrelevant to the name recognition associated with the word classmates and worldwide knowledge of that website, in each case asof January 27, 2000, the date Respondents registered the first of theDisputed Domain Names.�
(c) Weauthorized Respondent to submit evidence it deemed relevant in reply to anyadditional evidence that Complainant submitted following the Procedural Order.
Complainant submitted anaffidavit with exhibits (discussed in Sections 4, 5, and 7 below).� Respondents submitted nothing further.
Complainant's supplementalsubmission provided considerable detail supporting Complainant's initialaffidavit evidence, quoted in Section 4, of its website's popularity amongInternet users at the time Respondents registered the Disputed DomainNames.� Some of this material shouldhave been included initially in support of the assertions in thataffidavit.� In order that our ProceduralOrder not be misunderstood as precedent for future panels' increased use oftheir authority under Rule 12, we caution future complainants to take care toprovide competent and sufficient evidence with their complaints.
4. FactualBackground
Complainantowns the well-known website ��,which it has operated since 1995 (Complaint, Annex 4).� Complainant uses this website for abusiness, operated entirely electronically, that permits high school andcollege classmates to register with the site and by this means locate andcommunicate with their classmates.�According the Complaint, supported by the sworn statement ofComplainant's Intellectual Property Manager,
Classmates[.com] is one of the 10largest advertisers on the Internet.�Its advertising reaches 60% of the U.S. Internet population eachweek.� For the past 20 months [from July2002], it has achieved approximately seven billion ad impressions per month on43 different websites.� For the pastnine months, Classmates has consistently achieved a 50% unaided brand awarenessrating, established by outside research companies.� (Complaint, �12 and Annexes 9 and 10)
Complainant'ssupplemental evidence demonstrated, interalia, that in December 1999 and January 2000, when it registered the firstof its service marks and prior to Respondents' registration of the first of theDisputed Domain Names, C had 3.5 million registered users,attracted over 2 million hits per day, and gained an average of 13,744 newregistrants and 352 paid subscribers per day[3] (McGuane affidavit, paragraphs 6-9 and Exhibits 3-6).� NetRatings "ad relevance" chartsindicate that Complainant was one of the heaviest advertisers on the Internetduring that time, and Nielsen/NetRatings ranked its website 111 (January 2000)and 115 (December 1999) among all websites in number of hits, at timesduring those months more frequently visited than �� or ��(id. paragraphs11-13, 15-16 andExhibit 8).� .
Respondentshave not disputed this evidence, although as noted in the following sectionthey do dispute its relevance.�Respondents similarly do not deny having knowledge of Complainant's siteprior to registering the Disputed Domain Names.� Given the renown of the �c� site, they could notcredibly do so.
Complainantholds a service mark for "C" that is registered with theUnited States Patent and Trademark Office (USPTO).� Complainant also has pending before the USPTO the five additionalservice mark applications, each of which incorporates the word classmates.� Complainant alleges (Complaint, paragraph 12(1)) that it has usedthe service mark classmatessince as early as 1993.
EachDisputed Domain Name diverts a user to a pornography website entitled that is registered to a company in Amsterdam,Netherlands.� Once diverted, the user is"mousetrapped" -- unable to exit without clicking on a succession ofadvertisements.�
5. Parties' Contentions
The Complainant's contentions may be summarized as follows:
a) Complainanthas rights to "C" as a registered service mark, andcommon law rights to other variants of the word classmates by virtue of its use of these marks on its website andpending trademark registrations.� Thesuccess of Complainant's business has made Complainant's marks famous.� The Disputed Domain Names are confusinglysimilar to Complainant's "family" of service marks.�
b) Respondentshave no right or legitimate interest in the Disputed Domain Names.� Respondents have never been known by theword classmates, and that word bearsno relation to the pornography sites operated by Respondents.
c) Respondentsare using the Disputed Domain Names in bad faith by typosquatting onComplainant's well-known marks and site.�By so doing, Respondents are intentionally attempting to attractInternet users to their websites for commercial gain by creating confusionbased on common misspellings of Complainant's mark.�
d) Respondentshave been the subject of numerous complaints under the Policy, lawsuits forviolation of the Anticybersquatting Consumer Protective Act of 1999, and anaction by the United States Federal Trade Commission, as a result of theirrepeated registering of domain names that are confusingly similar to famous orwell known domain names or trademarks.
The Respondents' contentions maybe summarized as follows:
a) Complainant has no enforceable servicemarks, in either its registered mark or the unregistered marks now the subjectof pending USPTO applications, because (a) all are variants of a common Englishword and thus not entitled to service mark protection, and (b) the pendingapplications have been "suspended" or subject to further officeaction by the USPTO.� Complainant has noenforceable rights in its registered mark, because it is generic("describes the essential feature of Complainant's service") and ismerely its address and thus not entitled to service mark protection under USPTOGuidelines.[4] �Respondentsidentify eighteen pending United States trademark applications by partiesunaffiliated with Complainant, and a Google� search yielding 671,000 web pages,in response to a search for the word classmates,in support of their assertion that classmatesis generic and consequent argument that the Panel should accord Complainant norights in the word.
b) Respondents have a right and legitimateinterest in the Disputed Domain Names, because it is legitimate to register adomain name based on the misspelling of a generic common word.
c) Respondents did not act in bad faith �they simply registered misspellings of a common word.� Respondents did not register the Disputed Domain Names with theintent to sell them to the Complainant, to disrupt its business, to prevent itfrom registering its mark, or to confuse customers.� Complainant has not shown that Respondents registered theDisputed Domain Names expressly to disrupt Complainant's business, and such ashowing is required by the Policy.
d) Respondents' conduct in other matters andthe nature of their business are irrelevant to this proceeding.� Complainant is required to establish itscase under the Policy based on the facts of this case, and has failed to do so.
6. RelevantStandards
TheComplainant must prove the elements set out in paragraph 4(a) of thePolicy.� These elements are as follows:
(i) Respondents'Disputed Domain Names are identical or confusingly similar to a trademark orservice mark in which Complainant has rights; and
(ii) Respondentshave no rights or legitimate interests in respect to the Disputed Domain Names;and
(iii) Respondents'Disputed Domain Names have been registered and are being used in bad faith.
Complainant bears the burden of proof on each of theseelements.�
7. Discussion andFindings
Paragraph 4(a)(i)- Confusing Similarity with a Mark in which Complainant Has Rights
Respondent has admitted that the Disputed Domain Names aresimilar (indeed, intentionally similar) to Complainant's marks.� The issue we must decide, on the evidencebefore the Panel, is whether Complainant has "rights" in its marksthat are sufficient to invoke the Policy.
In order for Respondent to succeed on this point the Panelmust set aside, or disallow rights under, a mark that the USPTO hasallowed.� A few arbitration panels thathave taken this step have provided language that gives Respondents' argumentsurface credence.� The best case forRespondents is American Airlines Inc. v.WebWide Internet Communication GmbH, Case No. FA 0204000112518 (NAF,June 13, 2002) (STOP proceeding), in which the panel stated that"the jurisdiction provided by Rule 15 is adequate to permit an evaluationof such a simple mark as the mark 'American'" and held that thecomplainant had "no legitimate interest" in the mark despite itsUSPTO registration in the same class as respondent's proposed use.� Other panels have stated or implied that aUDRP panel is empowered to find that a respondent had overcome the presumption of validity that obtains from a validregistration.[5]�
Nearly all of these cases from which Respondents cite language favorable to their cause are however distinguishable on their facts, [6] or because the panel found that the complainant had failed to prove the elements of paragraphs 4(a)(ii) or 4(a)(iii) of the Policy. [7] �There is authority that a panel absolutely lacks authority to ignore a valid USPTO registration.� Christie v. Porcaro, WIPO Case No.D2001-0653; Hola S. A. v. Idealab, WIPO Case No.D2002-0089 ("It is not for the Panel to decide whether registration of the marks should or should not have been granted.� The holding of a registered mark is sufficient for the purposes of the Policy.� Any claim that the registration should not have been granted or should be revoked falls to be decided by the Courts of the relevant country."). [8] �Even when finding no enforceable rights in a mark, panels in several of the cases cited by Respondents have been careful to point out that they are not invalidating USPTO action.� See, e.g., Interactive Television Corp. v. N, WIPO Case No. D2000-0358; Dial-a-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764.�
While a descriptive term limits considerably a mark owner'sability to prevent others from comparable use of the term in a domain name, andthe scope of its mark generally, it does not ipso facto render the mark unenforceable or unavailable for useunder the Policy.� Given our narrowlycircumscribed jurisdiction and the limited record available to us, we believewe may deny Complainant allenforceable rights, expressly including the ability to invoke the Policy, in aduly registered mark, if ever, only for the most compelling legal reasons orupon a factual showing far more convincing than the one offered by Respondentsin this case.� Here Complainant hasdemonstrated, on uncontested evidence, widespread recognition (andidentification with Complainant) by United States Internet users of itsregistered mark, similar marks for which USPTO applications are pending,[9]and a heavily trafficked website.� Such recognition and identification weresubstantial at the time Respondents registered the Disputed Domain Names.���
The Panel finds that Complainant has rights in itsregistered classmates mark, and hassatisfied paragraph 4(a)(i) of the Policy.�
Paragraph4(a)(ii) -- Legitimate Interest
Respondent's sole claim of legitimate interest in the Disputed Domain Names, that it is legitimate to register a domain name based on the misspelling of a generic common word, falls with their failure on their argument that Complainant has no rights in its marks.� Respondents do not deny awareness, at the time of registration, of Complainant's marks or the popularity of its website; they base their claim of legitimate registration and use on the asserted lack of efficacy of the marks.� Respondents meet none of the safe harbors in paragraph 4(a)(ii) of the Policy.� They neither were known by nor operated any business using the Disputed Domain Names prior to Complainant's establishment of rights in the marks.� Respondents' use of the Disputed Domain Names is commercial, and typosquatting and mousetrapping are compelling evidence of illegitimate use.� E.g., Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423 (June 30, 2002).
Respondents offer no proof of any of the circumstancesthat have prevented other owners of marks with generic terms from proving arespondent's lack of legitimate interest, such as fair use prior to issuance ofthe mark,[10] noncommercial use,[11] or commercial use inlegitimate fields unrelated to the mark owner's business but described by thecommon word.[12]
Complainanthas satisfied its burden on this issue.
Paragraph 4(a)(iii) -- Bad Faith
An objectivedetermination of good faith registration and use may also limit a mark owner'sright to prevent incorporation of a descriptive or generic word in another'sdomain name.[13]� As with disproving a respondent's legitimateinterest, the use of a descriptive word in the complainant's mark perforcemakes it more difficult for the mark owner to carry its burden of persuasion todemonstrate bad faith.�
Complainanthas met that burden in this case.�Typosquatting is presumptive -- well nigh conclusive -- evidence ofregistration and use in bad faith.[14]� Respondents have offered no evidence inrebuttal; once again their denial of bad faith rests on either their ownpresumption that Complainant lacks rights in its marks or their argument thatnotwithstanding Complainant's marks Respondents may use a misspelling of acommon word for a website whose business is unrelated to that word.� Respondents' use of the Disputed DomainNames is for commercial purposes, and by any objective standard Respondents'selection of the Disputed Domain Names was intended to attract Complainant'smany users to those sites.� As a roterecital of the legal conclusions he seeks, Respondent Zuccarini's affidavit ofthe reasons for selecting these names, set out in the margin,[15] adds nothing ofevidentiary value.�
8. Decision
For theforegoing reasons, we find in favor of the Complainant regarding the DisputedDomain Names.� The Panel orders that theDisputed Domain Names be transferred to the Complainant.
Richard G. Lyon
Presiding Panelist
Cecil O.D. Branson, Q.C.
PanelistDavid E. Sorkin
Panelist
Dated:� September 24, 2002
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin
Case No. D2002-0635
PROCEDURAL ORDER NO. 1
1.The Panel denies Complainant's request, dated August 23, 2002, forleave to submit additional information.
2.The Panel denies Respondents' request, dated August 25, 2002, forleave to file additional information.
3.Pursuant to Rule 12, the Panel requests that Complainant submit evidence of (a)the number of subscribers to its website, and (b)such other matters as Complainant may deem relevant to the name recognitionassociated with the word classmatesand worldwide knowledge of that website, in each case as ofJanuary 27, 2000, the date Respondents registered the first of thedomain names at issue in this proceeding.�The Panel wishes such evidence to be in a fuller form than asserted inparagraph 3 of Annex 9 to the Complaint and to include copies of any reportsand other material documentation.
4.Complainant shall make its submission to the Center, with a copy toRespondents' counsel, in electronic form no later than September 11, 2002.�Respondents shall submit to the Center, with a copy to Complainant'scounsel, in electronic form any evidence they consider relevant in response nolater than September 16, 2002.�
5.The Panel expressly requests that the parties submit only evidentiary matter,without additional argument of counsel.
6.Any material other than that expressly requested by the Panel will bedisregarded.� Inclusion in a submissionof material other than that expressly requested by the Panel will be groundsfor the Panel to disallow the entire submission.
7.The projected decision date is extended to September 25, 2002.
FOR THE PANEL:
Richard G. Lyon
Presiding Panelist
September 6, 2002
[1] Although in his correspondence with the Center Respondent Zuccarini threatens the Center and the World Intellectual Property Organization with a lawsuit, in part "[for] denying me a fair and proper hearing," neither he in his correspondence nor his counsel in the Response contests the Panel's jurisdiction under the Policy.
[2] In response to Complainant's request, the Center extended the deadlines for submissions to September 13, 2002,� for Complainant and September 18, 2002, for Respondent, with a projected decision date of September 27, 2002.
[3] A "registered user," as distinguished from a "visitor," actually submits information into Complainant's online database.� A "paid member" pays a fee to use the database to contact his or her classmates.
[4] "If the proposed mark is used in a way that would be perceived as nothing more than an address at which the applicant can be contacted, registration must be refused. Examples of a domain name used only as an Internet address include a domain name used in close proximity to language referring to the domain name as an address, or a domain name displayed merely as part of the information on how to contact the applicant." United States Patent & Trademark Office, Examination Guide No. 2-99: Marks Composed, in Whole or in Part, of Domain Names (1999).
[5] Interactive Television Corp. v. N (WIPO Case No. D2000-0358); Dial-a-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764; Successful Money Management Seminars Inc. v. Direct Mail Express, Case No FA0101000096457 (NAF 2001); Knight-Ridder, Inc. v. John Zuccarini Cupcake Patrol, Case No. FA101000096551 (NAF 2001).�
[6] The complainant held no registered mark in EMONEY Group, Inc. v. Eom, Sang Sik, Case No. FA0012000096337 (NAF 2001);Canned Foods, Inc. v. Ult.Search Inc., Case No. FA0012000096320 (NAF 2001); Dial-a-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764; Business Architecture Group, Inc. v. Reflex Publishing, Case No. FA0104000007051 (NAF 2001); Perricone v. Hirst, Case No. FA0007000095104 (NAF 2000) (intent to use application only); McCune v. BuyD, Case No. AF-0854 (eResolution 2001); Knight-Ridder, Inc. v. John Zuccarini Cupcake Patrol, supra (as to "herald" mark).
[7] Perricone v. Hirst, supra (no bad faith); General Machine Products Co., Inc. v. Prime Domains, Case No. FA0001000092531 (NAF) (no proof of lack of legitimate interest); Ultrafem, Inc. v. Royal, Case No. FA0106000097682 (NAF 2001) (bona fide use by respondent); Energy Source Inc. v. Your Energy Source, Case No. FA0101000096364 (NAF 2001) (no bad faith; legitimate use); SOCCERPLEX, Inc. v. NBA Inc., Case No. FA0003000094361 (NAF 2000) (no bad faith); Car Toys, Inc. v. Informa Unlimited, Inc., Case No. FA0002000093682 (NAF 2002) (no showing of lack of legitimate use or bad faith); CRS Technology Corp. v. Condenet, Inc., Case No FA0002000093547 (NAF 2000) (no confusion; no bad faith); Successful Money Management Seminars Inc. v. Direct Mail Express, supra (legitimate use; no bad faith).
[8] Respondents are well aware of this line of cases.� See, e.g., �Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.
[9] Since the registered mark suffices for purposes of paragraph 4(a)(i), there is no need to decide � and we expressly refrain from deciding -- whether Complainant's other marks, for which service mark applications are pending in the PTO, generate rights sufficient to invoke the Policy or satisfy paragraph 4(a)(i).
[10] E.g., EMONEY Group, Inc. v. Eom, Sang Sik, supra note 7.
[11] E.g., Primedia Special Interest Publications, Inc. v. Treadway, WIPO Case No. D2000-0752.
[12] E.g., PRL USA Holdings, Inc. v. Collazo, WIPO Case No. D2002-0108.
[13] See, e.g., cases cited at note 7, supra.
[14] E.g., Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423 (June 30, 2002); Go Daddy Software, Inc. v. Hadani, WIPO Case No. D2002-0568
[15] The affidavit reads in its entirety:
1. I registered the [Disputed DomainNames] because they are both misspellings of the common dictionary wordCLASSMATE.�
2. I did not register the [DisputedDomain Names] for the purpose of selling them to Complainant or any party, todisrupt Complainant's business, to prevent it from incorporating its trademark,or to confuse consumers seeking to find Complainant's web site."
Full & Egal Universal Law Academy