DECISION

Target Brands Inc v. John Zuccarini aka Cupcake Patrol

Claim Number: FA0112000102859

PARTIES

Complainant is Target Brands, Inc., Minneapolis, MN (“Complainant”), represented by Ann Dunn Wessberg, of Faegre & Benson, LLP.  Respondent is John Zuccarini Cupcake Patrol, Nassau, N.P. (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <marshalfields.com>, registered with Joker.com.

PANEL

On January 22, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as Panelist in this proceeding.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 13, 2001; the Forum received a hard copy of the Complaint on December 14, 2001.

On December 18, 2001, Joker.com confirmed by e-mail to the Forum that the domain name <marshalfields.com> is registered with Joker.com and that Respondent is the current registrant of the name.  Joker.com has verified that Respondent is bound by the Joker.com 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 December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2002 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@marshalfields.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.

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 name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. The <marshalfields.com> domain is confusingly similar to the Complainant’s trademark MARSHALL FIELD’S.

2. Respondent’s use of a domain name, that is confusingly similar with the Complainant’s trademark, directs traffic to a pornographic website and does not constitute a legitimate interest with respect to the domain name.

3. On information and belief, Respondent has registered the domain name <marshalfields.com> in bad faith.

B. Respondent

Respondent did not submit a Response.

FINDINGS

Since 1852, MARSHALL FIELD’S has been among the premier retailer’s in the United States.  Currently there are sixty-four MARSHALL FIELD’S department stores in eight states.  Complainant is the owner of a federal trademark registration for the trademark MARSHALL FIELD’S, registered April 10, 1984, U.S. Reg. No. 1,273,988.  The Complainant also owns a registration for the domain name <marshallfields.com>.  The Complainant’s website has been in operation since 1998 and offers members of the public a broad array of services.

Respondent registered domain name on May 9, 2000.  Respondent has registered various domain names infringing upon the trademarks of others.  Respondent has even registered a domain name similar to that of the Complainant before, <marshalfield.com>.  Respondent links <marshalfields.com> to <amatuervideos.nl>, which warns that the site contains “adult content.”  Upon clicking on the “enter site” button, one is immediately confronted with pornographic images.

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and

(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

Complainant has established rights in its MARSHALL FIELD’S mark through its extensive use and trademark registration.  Further, the domain name in controversy is confusingly similar to Complainant’s mark.  The only variation between the disputed domain name <marshalfields.com> and the Complainant’s mark MARSHALL FIELD’S is the exclusion of the letter “l.”  The misspelling of famous marks does not defeat a claim of confusing similarity.  See Target Brands, Inc. v. Zuccarini, FA 99683 (Nat. Arb. Forum Oct. 18, 2001) (finding the domain name <marshalfield.com> confusingly similar with Complainant’s mark MARSHALL FIELD’S); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks).

   .

Therefore, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  As a result, the Panel may presume that Respondent has no rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

There is no evidence provided that establishes that Respondent is commonly known by “marshalfields.com.”  Therefore, Respondent cannot demonstrate rights under Policy ¶ 4 (c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark); see also Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

Since Respondent uses a domain name that is confusingly similar to a famous mark to link to a pornographic website, Respondent does not have a legitimate noncommercial use for the domain name and has not used the domain name in connection with a bona fide offering of goods and services.  Therefore, Respondent cannot satisfy either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).  See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Target Brands, Inc. v. Zuccarini, FA 99683 (Nat. Arb. Forum Oct. 18, 2001) (finding Respondent’s use of <marshalfield.com> is not a bona fide use since the domain name is not associated with a website, rather the user is immediately diverted to a different website that barrages the viewer with advertisements associated with the Respondent); see also Encyclopaedia Britannica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Because of the distinctiveness of Complainant’s famous mark, the Respondent knew or should have known of the existence of the Complainant’s mark at the time the Respondent registered <marshalfields.com>.  See Target Brands, Inc. v. Zuccarini, FA 99683 (Nat. Arb. Forum Oct. 18, 2001) (finding Respondent is on notice when the Respondent registered the domain name <marshalfield.com> because of the “famous and distinctive nature of Complainant’s mark” MARSHALL FIELD’S); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Second, the Respondent has engaged in a pattern of registering misspellings of famous marks, which is evidence of bad faith as defined in Policy ¶ 4(b)(ii).  See L.L. Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names).  Further, the Complainant has been the victim of the Respondent’s prior conduct.  See Target Brands, Inc. v. Zuccarini, FA 99683 (Nat. Arb. Forum Oct. 18, 2001) (awarding <marshalfield.com> to Complainant). 

Finally, Respondent’s use of <marshalfields.com> to divert viewers to another website, assumedly for commercial gain, by creating a likelihood of confusion is evidence of bad faith outlined in Policy ¶ (c)(iv). See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 name <marshalfields.com> be transferred from Respondent to Complainant.

 James P. Buchele, Panelist

Dated:  January 25, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/107.html