DECISION

Interact Accessories, Inc. v. John Zuccarini d/b/a Cupcake Party and Cupcake City

Claim Number: FA0108000099076

PARTIES

Complainant is InterAct Accessories, Inc., Hunt Valley, MD (“Complainant”) represented by Charles R. Bacharach, of Gordon, Feinblatt, Rothman, Hoffberger & Hollander, LLC.  Respondent is John Zuccarini d/b/a Cupcake Party and Cupcake City, Andalusia, PA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <gamesharks.com>, <gamesharkcodes.com> and <gamesharkcode.com>, registered with Network Solutions, CORE.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 15, 2001; the Forum received a hard copy of the Complaint on August 17, 2001.

On August 16, 2001, Network Solutions confirmed by email to the Forum that the domain names <gamesharkcodes.com> and <gamesharkcode.com> are registered with Network Solutions and that the Respondent is the current registrant of the name.  On August 22, 2001, CORE confirmed by e-mail to the Forum that the domain name <gamesharks.com> is registered with CORE and that the Respondent is the current registrant of the name.  Network Solutions and CORE have verified that Respondent is bound by the Network Solutions 5.0 registration agreement and the CORE registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On August 22, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 11, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@gamesharks.com, postmaster@gamesharkcodes.com, and postmaster@gamesharkcode.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 4, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant makes the three following contentions:

(a.)       Respondent’s Domain Names Are Confusingly Similar to Complainant’s Registered Mark.

(b.)       Respondent Has No Rights Or Legitimate Interests In The Domain Names.

(c.)       Respondent Has Acted With Bad Faith.

B. Respondent

No response was submitted by the Respondent.

FINDINGS

On or about October 13, 1995, Complainant filed a trademark registration with the United States Patent and Trademark Office (“PTO”) for the mark “GAME SHARK.”  The PTO granted registration of the mark GAME SHARK on November 10, 1998, Reg. No. 2,203,092.  Complainant uses the mark in connection with the manufacture, sale and distribution of computer programs used in video game enhancers for changing game-play features on video games and computer and video game accessories.  Complainant has also registered the mark “GAMESHARK PRO”, which is U.S. Reg. No. 2,394,958. 

Complainant’s counsel e-mailed Respondent about this dispute as early as April, 1999 and Respondent acknowledged receipt of the e-mail. 

Once unwary Internet users log-on to the <gamesharks.com>, <gamesharkcodes.com> or <gamesharkcode.com> websites, they become caught in a “mouse trap” and are exposed to a continuing array of “pop-up” windows displaying advertisements for various goods and services unrelated to the Complainant’s goods and services.  There is no content to the websites using these domain names other than advertisements.  The only way to discharge these unsolicited advertisements is to close each window as it pops up.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Given its trademark registration, the Complainant has proven rights in the GAME SHARK mark.

The Respondent’s domain names <gamesharks.com>, <gamesharkcodes.com> and <gamesharkcode.com> are confusingly similar to the Complainant’s GAME SHARK mark.  For one domain name, the Respondent added the letter “s” to the GAME SHARK mark.  See e.g., Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2001) (finding that misspelling of words and adding letters on to words does not create a distinct mark and is confusingly similar to Complainant’s marks).  For the other two domain names, the Respondent added the words “code” or “codes.”  Both the addition of the letter “s” and the addition of the words “code” and “codes” after “gameshark” are intended to cause confusion.  Complainant’s customers are users of video games.  They frequently seek out and trade “codes” to the games they play to enable themselves to attain higher scores.  “Gameshark codes” is a common phrase used to reference the codes applicable to Complainant’s products.  Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business).  As such, the Panel concludes that all three domain names are confusingly similar to the Complainant’s mark. 

Based on the above, the Panel determines that the elements set forth in Policy ¶ 4(a)(i) have been established.

Rights or Legitimate Interests

The Respondent has linked the domain names to websites offering “mouse trap” advertisements.  By linking these domain names to such websites, Respondent is merely confusing and diverting Internet traffic.  It is likely that the Respondent receives a profit for luring Internet users to such advertisements.  Such action with a confusingly similar domain name is evidence of no rights or legitimate interests in the domain names because such action is not a “bona fide” use of the domain names.  See Vapor Blast Mfg. Co., v. R & S Tech., Inc. FA 96577 (Nat. Arb. Forum Feb 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

In addition, Respondent cannot claim to be commonly known by the domain names containing the GAME SHARK mark.  Policy ¶ 4(c)(ii).

The Panel concludes that the elements set forth in Policy ¶ 4(a)(ii) have been established. 

Registration and Use in Bad Faith

By linking the domain names to such advertisement websites, the Respondent has intentionally attempted to attract Internet users for financial gain to the websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant of the website or of a product or service on the website.  Policy ¶4(b)(iv).  See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements).

In addition, Respondent has knowingly registered thousands of Internet domain names that are identical to, or confusingly similar to, the distinctive marks of others without the permission of the mark holders.  Policy  ¶ 4(b)(ii).  See e.g., Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).

The Panel concludes that the elements set forth in Policy ¶ 4(a)(iii) have been established. 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain names <gamesharks.com>, <gamesharkcodes.com> and <gamesharkcode.com> be transferred from Respondent to Complainant.

John J. Upchurch, Panelist

Dated: October 11, 2001

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