WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. Rave Club Berlin
Case No. D2002-0890
1. The Parties
The Complainant is Microsoft Corporation, a Washington (United States of America) corporation whose principal place of business in Redmond, Washington, United States of America. Complainant is represented by Suzanne V. Wilson and Tricia A. Cross of the law firm Arnold & Porter, Los Angeles, California, United States of America.
The Respondent is Rave Club Berlin. According to the "whois" database maintained by the Registrar, Respondent is located in Cherry Hill, New Jersey, United States of America, or Amstelveen, Netherlands. Respondent has not appeared, directly or through a representative, in this proceeding.
2. Domain Names and Registrar
The domain names at issue [Contested Domain Names] are:
The registrar is Computer Service Langenbach GmbH, doing business as , Düsseldorf, Germany.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on September 25, 2002, (electronic copy) and September 26, 2002, (hard copy). The Center verified that the Complaint satisfies the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules for Uniform Domain Name Dispute Resolution Policy [the Rules], and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. Complainant made the required payment to the Center.
On September 26, 2002, the Center transmitted via e-mail to the Registrar a request for registrar verification in connection with this case. On September 26, 2002, the Registrar transmitted its verification response to the Center, confirming that Respondent is the Contested Domain Names' registrant, administrative contact, technical contact, and billing contact[1].
The Center verified that the Complaint satisfied the formal requirements of the Policy and the Rules on September September 26, 2002.
The formal date of the commencement of this administrative proceeding is October 1, 2002.
On October 1, 2002, the Center transmitted Notifications of Complaint and Commencement of Administrative Proceeding to Respondent by email and post/courier (the latter to both the United States and Netherlands addresses listed for Respondent in the whois database). Both copies sent by courier to New Jersey were returned undelivered. The copy sent to the Netherlands was delivered.
Respondent did not file a Response. The Center sent Respondent a Notification of Respondent Default on October 23, 2002.
In view of Complainant's designation of a single panelist and Respondent's default, the Center invited Richard G. Lyon to serve as a panelist.
On November 6, 2002, after receiving Mr. Lyon's Statement of Acceptance and Declaration of Impartiality and Independence, the Center transmitted to the parties a Notification of Appointment of Administrative Panel. The projected decision date is November 20, 2002.
4. Jurisdiction
A preliminary issue in cases such as this one, where no Response has been filed, is whether the Panel has obtained jurisdiction over the Respondent. Rule 10(b) requires that "each Party [be] given a fair opportunity to present its case."[2] Rule 2(a) requires that the Center employ "reasonably available means calculated to achieve actual notice to Respondent."
As outlined above, the Center employed each of the measures listed in Rule 2(a). Here the Center has proof of e-mail delivery. . Respondent has consented to the Policy by contract, in its agreement with the Registrar. Even if it did not receive actual notice of the Complaint, it suffers no unfairness when the Complainant and the Center complied with the prescribed notice procedure. It is worth noting that Respondent and its principal, John Zuccarini, have been party to many proceedings under the Policy and in the courts[3]. If ever there were a respondent familiar with the Center's procedures, and a registrant's contractual obligations and the consequences of not supplying current information with the Registrar, it is the Respondent in this proceeding.
I find that Respondent was "treated with equality" and "given a fair opportunity to present its case" and that there is jurisdiction over Respondent and the Contested Domain Names.
The Panel shall issue its decision based on the Complaint, the evidence presented, the Policy, the Rules, and the Supplemental Rules.
5. Factual Background
The following description of the facts and circumstances comes from the Complaint. Each of Complainant's charging allegations is supported by documentary evidence annexed to the Complaint.
Microsoft is a well-known, worldwide provider of computer operating systems, software, and related products and services, including products designed for use as reference or educational tools. It uses its registered trademark ENCARTA for this last category. Complainant has obtained trademark registrations in over forty countries for its ENCARTA marks in several classes of goods and services. In the United States these include (i) online information services, including providing reference and encyclopedic data in electronic form; (ii) computer program and general reference data in the form of a multi-media encyclopedia on a variety of subjects, stored on a compact disc; (iii) publications such as books, magazines, newsletters, brochures, pamphlets, atlases, maps, user guides for atlases and maps, dictionaries, thesauruses, instruction manuals, user guides and reference guides for a multi-media encyclopedia on a variety of subjects; and (iv) instruction manuals, user guides and reference guides for a multi-media encyclopedia. Complainant has expended substantial amounts to establish and promote the ENCARTA marks in these fields.
The United States Patent and Trademark Office has granted Microsoft the following trademark registrations that consist of or include the word ENCARTA:
Mark
International Class
Registration No.
Registration Date
ENCARTA
16
1,864,262
November 22, 1994
ENCARTA
9
1,874,547
January 17, 1995
ENCARTA
41
1,995,180
August 20, 1996
ENCARTA
16
2,304,532
December 28, 1999
Respondent registered the Contested Domain Names with the Registrar on or about March 24 () and April 6 (), 2001.
At the time the Complaint was filed each of the Contested Domain Names resolved to pornographic website located at ." Connecting to the Internet website also brought up another website, located at which appears to be a directory web site. The website is registered to John Zuccarini, the principal of Respondent. Once at the "" website the user is "mousetrapped."[4]
Respondent has recently changed the content of the website maintained at the Contested Domain Names. Now they resolve to a directory webpage located at [5] These directory pages contains several categories of hyperlinks, such as "Shopping," "Video Games," and "Domain Names," to other commercial websites. When an Internet user clicks on one of these hyperlinks, he or she is connected to an apparently independent website located at "."
There is no evidence in the record of any association, legitimate or otherwise, between Respondent and the word ENCARTA.
6. Parties' Contentions
Complainant contends as follows:
The Contested Domain Names are identical to Complainant's ENCARTA marks except for the addition of words that describe services provided by Complaint under those marks.
Respondent has no rights or legitimate interests with respect to the Contested Domain Names because (1) Complainant is the owner of record of the ENCARTA marks, (2) Respondent was on notice of such ownership at the time it registered the Contested Domain Names, (3) Complainant has not licensed Respondent to use its ENCARTA marks, and (4) Respondent has never been known by the name ENCARTA.
Respondent registered the Contested Domain Names in bad faith because (1) Respondent registered the domain names for the purpose of gaining a business advantage as a result of Internet users' confusing Respondent's site with Complainant's site and thereby capitalizing on Complainant's good name and goodwill, (2) Respondent provided incomplete data in the Registrar's "whois" database, and (3) Respondent registered the Contested Domain Names for commercial purposes.
Use in bad faith is established by the foregoing and by Respondent's diversion from the websites at the Contested Domain Names to pornographic sites, and, later, other commercial sites unrelated to the ENCARTA name.
Respondent's history of cybersquatting is evidence of both registration and use in bad faith.
Respondent has not responded to the Complaint.
I shall therefore proceed to a decision based solely on the Complaint. Complainant[6] retains its burden of proving the requisite elements of Paragraph 4(a) of the Policy[7].
7. Discussion and Findings
In order to prevail in this administrative proceeding, Complainant must prove the following elements, which are set out in Paragraph 4(a) of the Policy:
(i) Respondent's domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the domain names; and
(iii) Respondent's domain names have been registered and are being used in bad faith.
Domain Names Identical or Confusingly Similar to Trademark
The Contested Domain Names incorporate Complainant's registered mark and words that describe some of the services Complainant offers under that mark. Identity and confusion are therefore established. See, e.g., CBS Broadcasting Inc. v. Hassad, WIPO Case No. D2000-1064.
Absence of Legitimate Interest in the Domain Names
A complainant has the burden of proving that the respondent does not have a legitimate interest in the disputed domain name[8]. Since there is not a strict logical means of proving a negative fact, several Panels have recognized that a complainant can meet this burden with a prima facie showing[9]. Once a complainant has made this prima facie showing, the burden shifts to the respondent to show that the respondent has a legitimate interest in the domain name.
Although decisions under the Policy are not entirely consistent about what constitutes a prima facie showing, under any standard Complainant in this case has met its burden of proof with competent evidence, as described above.
No legitimate interest in the Contested Domain Names appears on the record. Respondent offers nothing. The uncontested evidence demonstrates that Respondent is using the Contested Domain Names to take advantage of the reputation of Complainant's marks. There is no evidence that Respondent has ever "been commonly known by the domain name[s]." Rather than making a "legitimate noncommercial or fair use of the domain name[s]," Respondent is using the site "for commercial gain" and "to misleadingly divert consumers."[10]
Bad Faith
Complainant has established bad faith in registration and use of the Contested Domain Names, even without relying on Respondent's past conduct in respect to other domain names. Use of another's mark in a pornography site is clear evidence of bad faith[11], and the circumstances that prove illegitimacy set out above similarly establish bad faith in both use and registration. While bad faith in registration may be inferred from subsequent bad faith use, here there is also independent evidence of registration in bad faith: Respondent's failure to provide complete information to the Registrar.
8. Decision
For the foregoing reasons, the Panel orders that the Contested Domain Names be transferred to the Complainant.
Richard G. Lyon
Sole Panelist
Dated: November 12, 2002
1. Because the case file initially did not include a copy of the verification for , at my request the Center re-confirmed Respondent's ownership on November 12, 2002.
2. See, e.g.; AT&T Corp. v. Damian Macafee, WIPO Case No. D2001-1159.
3. Some of these are listed in Federal Trade Commission v. Zuccarini, Civil Action No. 01-CV-4854 (E.D. Pa. April 9, 2002); Sony Corp. v. Zuccarini d/b/a Rave Club Berlin, NAF Claim No. FA0204000109040 (May 23, 2002); AT&T v. Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2001-1503 (April 3, 2002); see also Shields v. Zuccarini, 254 F.3d 476 (3d Cir. 2001). Complainant's description of Respondent as an "incorrigible," "infamous," and "notorious" cybersquatter has been established in many UDRP and court cases.
4. Complainant includes copies of the first page of the "www." site with its Complaint. I independently verified the content of this website, including the mousetrapping, in connection with another case. See Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635. M
5. Complainant has submitted a copy of the "" webpage. I independently verified the accuracy of Complainant's allegations on November 8, 2002.
6. Rule 14.
7. Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423.
8. Policy, 4(a); Dell Computer Corp. v. Clinical Evaluations, supra.
9. Compare Credit Suisse Group v. Milanes-Espinach, WIPO Case No. D2000-1376 and Anti Flirt S.A. v. WCVC, WIPO Case No. D2000-1553, with Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467.
10. Policy, 4(c), parts (ii) and (iii).
11. E.g., Fairchild Publications, Inc. v. Yomtobian, WIPO Case No. D2000-1003.
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