DECISION

Worldwinner.com, Inc. v. The Cupcake Patrol a/k/a John Zuccarini a/k/a RaveClub Berlin

Claim Number:  FA0307000175289

PARTIES

Complainant is Worldwinner.com, Inc., Los Angeles, CA (“Complainant”) represented by Seán F. Heneghan.  Respondent is The Cupcake Patrol a/k/a John Zuccarini a/k/a RaveClub Berlin, Volcan, Chiriqui, PA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <worldwiner.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.Com (hereinafter, “Joker.Com”).

PANEL

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

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 29, 2003; the Forum received a hard copy of the Complaint on August 1, 2003.

On July 30, 2003, Joker.Com confirmed by e-mail to the Forum that the domain name <worldwiner.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 August 13, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 2, 2003 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@worldwiner.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 September 15, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <worldwiner.com> domain name is confusingly similar to Complainant’s registered WORLDWINNER trademark.

2. Respondent does not have any rights or legitimate interests in respect of the <worldwiner.com> domain name.

3. Respondent registered and used the <worldwiner.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds a registered trademark in WORLDWINNER, having registered this mark on the Principal Register of the United States Patent and Trademark Office as Registration No. 2,565,816 on April 30, 2002.  Complainant has used this mark continuously in commerce since at least June 2000 in association with its entertainment services, particularly online entertainment services.  Complainant’s mark is also registered in the European Union as Registration No. 1637719.

Complainant operates a website at <worldwinner.com>, in which it facilitates over two million structured online game tournaments per month and awards over $100,000 daily in cash prizes.  Since Complainant’s site was conceived in 1999, it has enrolled approximately five million registered members.

Respondent registered the disputed domain name on January 9, 2001, and has been using the name to redirect Internet users to pornographic websites as well as another website that offers services in competition with Complainant.  Visitors to Respondent’s domain name and associated website are also bombarded with pop-up advertisements by way of a technique called “mousetrapping,” which makes it very difficult for users to escape Respondent’s ads.

At the time Complainant initially filed its Complaint and served it upon Respondent, the WHOIS information for the <worldwiner.com> domain name listed “RaveClub Berlin” as the registrant of record.  Because Complainant was required to cure administrative deficiencies before its claim could be commenced by the Forum, several days passed and Respondent was able to change its contact information to list “John Zuccarini” and “The Cupcake Patrol” as the registrant of record.  Some of the domain name contact information remained unchanged.  The use of the domain name also remained unchanged.

Complainant provided substantial evidence that RaveClub Berlin and Respondent Zuccarini are one in the same, including a judgment and permanent injunction order entered by the U.S. District Court for the Eastern District of Pennsylvania, which lists both “Cupcake Patrol” and “RaveClub Berlin” as aliases of John Zuccarini.  See Fed. Trade Comm’n v. Zuccarini, No. 01-CV-4854 (E.D. Penn. Apr. 9, 2002) available at http://www.ftc.gov/os/2002/05/johnzuccarinijudandpi.pdf.  In light of Respondent’s failure to contest Complainant’s claim that RaveClub Berlin is merely an alter ego of Zuccarini, the Panel concludes that the two are one in the same.  Cf. British Broadcasting Corp. v. Data Art Corp., D2000-0683 (WIPO Sept. 20, 2000) (finding that, for the purposes of Policy ¶ 8(a) regarding the transfer of domain names, an administrative proceeding is considered to be “pending” following the filing of the Complaint.  Therefore, if a registrant of a domain name transfers the domain name after the Complaint is filed, neither the change of registrant nor change of registrar affects the administrative proceeding).

Complainant has provided evidence of numerous cases in which Respondent has been found to have engaged in abusive domain name registrations and has suggested that Respondent is a “serial ‘typo pirate.’”  Respondent currently holds registrations of domain names reflecting other popular marks, including <sakfifthavenue.com>, <dircettv.com>, <betycrocker.com>, <weigtwatchers.com>, <jetblueairway.com>, and <weternunion.com>.

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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 demonstrated its rights in the WORLDWINNER mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office and in the European Union.  Although the registration was pending at the time Respondent registered the disputed domain name, the application had already been filed (as of October 25, 1999), and the mark had already been in substantial use online.

The Policy’s protections are not limited to registered trademarks and service marks; rather, marks recognized at common law and other unregistered marks are also protected.  See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN Policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

The <worldwiner.com> domain name, varying by only one letter from Complainant’s WORLDWINNER mark, is confusingly similar to said mark because the minor misspelling does not distinguish the name from the mark.  See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)  (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar).

Complainant has successfully established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name.  In light of Respondent’s failure to contest Complainant’s claims, the Panel may accept Complainant’s assertion as true and draw reasonable inferences from Complainant’s uncontested submission.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Furthermore, Respondent has demonstrated that it lacks rights and legitimate interests with respect to the domain name, as its only use of the name has been to redirect Internet users, ostensibly seeking Complainant’s website, to a competing site and to unrelated pornographic websites.  In the many cases cited by Complainant as evidence of Respondent’s recurrent pattern of abusive domain name registration, Panels have routinely held that such redirection of users does not demonstrate a right or legitimate interest in a domain name by a registrant.  See e.g. Bayerische Motoren Werke AG v. RaveClub Berlin, D2003-0385 (WIPO July 3, 2003); Hewlett-Packard Co. v. Raveclub Berlin a/k/a Raveclub, FA 146572 (Nat. Arb. Forum Mar. 27, 2003); Gen. Elec. Co. v. RaveClub Berlin, FA 135018 (Nat. Arb. Forum Jan 13, 2003); Am. Suzuki Motor Corp. v. RaveClub Berlin, FA 124497 (Nat. Arb. Forum Oct. 18, 2002).  This Panel concurs.

Finding no evidence that Respondent is commonly known as the disputed domain name pursuant to Policy ¶ 4(c)(ii) and no evidence of Respondent’s rights or interests in the name under Policy ¶¶ 4(c)(i)&(ii), the Panel finds that Policy ¶ 4(a)(ii) has been established.

Registration and Use in Bad Faith

Respondent, a frequent registrant of domain names that are confusingly similar to others’ marks, has attempted to usurp Complainant’s goodwill by registering a domain name confusingly similar to Complainant’s WORLDWINNER mark.  The domain name, reflecting a probable Internet user misspelling of Complainant’s mark and domain name, demonstrates Respondent’s continued pattern of typosquatting.  Such behavior has often been held to satisfy the bad faith registration and use element of Policy ¶ 4(a)(iii).  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6, 2003) (“[I]n typosquatting cases, such as this one, it would be difficult for Respondent to prove to the Panel that it did not have actual knowledge of Complainant’s distinctive MEDLINE mark when it registered the infringing <wwwmedline.com> domain name”).

It has also been well-established that the infringing use of another’s trademark to direct unsuspecting users to pornographic websites satisfies the bad faith registration and use requirement of the Policy.  See Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith”); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites).

Complainant has also complained of Respondent’s use of “mousetrapping” (the use of embedded code in ads and web pages that causes new pop-up ads to open when an existing ad or window is closed, thereby creating an almost unavoidable perpetuation of advertisements).  Unlike the traditional mousetrap, virtual mousetraps serve no useful purpose other than to generate advertising revenue for website operators by tricking Internet users into clicking on ads in which they have no interest. 

While online advertisements may be necessary to keeping the Internet “free,” mousetraps operate deceptively, wasting users’ time and causing advertisers to pay click-through fees for referred consumers who have no intention of purchasing their products or services.  To the extent that Policy ¶ 4(b)(iv) defines, as bad faith registration and use, the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with the Complainant’s mark, so too must the practice of mousetrapping evidence bad faith registration and use of a domain name identical or confusingly similar to another’s mark.  See Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (“[I]t is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”); see also Kidman v. Zuccarini d/b/a Cupcake Party, D2000-1415 (WIPO Jan. 23, 2001) (finding that Respondent’s use of mousetrapping techniques demonstrated bad faith).

Complainant has satisfactorily established Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <worldwiner.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  September 22, 2003

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