DECISION

Yahoo! Inc. v. John Zuccarini d/b/a RaveClub Berlin d/b/a Cupcake Patrol

Claim Number:  FA0308000183997

PARTIES

Complainant is Yahoo! Inc., Sunnyvale, CA (“Complainant”) represented by David M. Kelly, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P.  Respondent is John Zuccarini d/b/a RaveClub Berlin d/b/a Cupcake Patrol, Cherry Hill, NJ (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <yahooemal.com>, <yaholigons.com>, <yahomessenger.com>, <yahoofiance.com>, <yahoofinace.com>, <yahoofreeporn.com>, <yahoogams.com>, <yahooilgans.com>, <yahooligons.com>, <yohooligans.com>, and <yahoolagons.com>, registered with Computer Services Langenbach Gmbh d/b/a Joker.Com.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically and by hard copy June 2, 2003.  In its Complaint, Complainant named several domain name registrants as Respondent and requested transfer of fifty-nine domain names.

On June 3, 2003, Computer Services Langenbach Gmbh d/b/a Joker.Com ("Joker.Com") confirmed by e-mail to the Forum that the domain names <yahooemal.com>, <yaholigons.com>, <yahomessenger.com>, <yahoofiance.com>, <yahoofinace.com>, <yahoofreeporn.com>, <yahoogams.com>, <yahooilgans.com>, <yahooligons.com>, <yohooligans.com>, and <yahoolagons.com> are registered with Joker.Com and that the Respondent is the current registrant of the names.  Joker.Com 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").  (The status of the other disputed domain names, which are not here at issue, was also verified by the respective registrars.)

On June 16, 2003, the case was formally commenced and the Forum received an informal e-mailed Response from Respondent John Zuccarini, with an e-mail address of raveclub@berlin.com.  In Zuccarini’s e-mail, he asserted that he was not Peter Carrington, Party Night Inc., Phayze Inc., or Music Wave (other named registrants in the first Complaint).  Zuccarini did not deny using RaveClub Berlin or Cupcake Patrol as aliases.  When asked by the Forum’s case coordinator whether he wished for his e-mail to be treated as his formal Response, Zuccarini indicated that he did not so wish.

On July 17, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed all documentation submitted, the Panel determined that the Complainant submitted insufficient evidence to link all of the named registrants as required by Rule 3(c).  Accordingly, the case was stayed pending re-filing by the Complainant so as to comply with Rule 3(c).

Complainant submitted this Complaint to the Forum electronically August 14, 2003; the Forum received a hard copy of the Complaint August 15, 2003.

On August 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 10, 2003, by which Respondent could file a Response to the Complaint, was transmitted to all registrants via e-mail, post and fax, to all entities and persons listed on Respondent’s registrations as technical, administrative and billing contacts, and to postmaster@yahooemal.com, postmaster@yaholigons.com, postmaster@yahomessenger.com, postmaster@yahoofiance.com, postmaster@yahoofinace.com, postmaster@yahoofreeporn.com, postmaster@yahoogams.com, postmaster@yahooilgans.com, postmaster@yahooligons.com, postmaster@yohooligans.com, and postmaster@yahoolagons.com by e-mail.

Having received no further Response from any registrant, 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 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 formal Response from Respondent.

RELIEF SOUGHT

Complainant requests transfer of the domain names from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. John Zuccarini, Cupcake Patrol, and RaveClub Berlin are one in the same:  John Zuccarini.

2. The domain names registered by Respondent, <yahooemal.com>, <yaholigons.com>, <yahomessenger.com>, <yahoofiance.com>, <yahoofinace.com>, <yahoofreeporn.com>, <yahoogams.com>, <yahooilgans.com>, <yahooligons.com>, <yohooligans.com>, and <yahoolagons.com>, are confusingly similar to Complainant’s YAHOO! and YAHOOLIGANS! marks.

3. Respondent has no rights to or legitimate interests in the <yahooemal.com>, <yaholigons.com>, <yahomessenger.com>, <yahoofiance.com>, <yahoofinace.com>, <yahoofreeporn.com>, <yahoogams.com>, <yahooilgans.com>, <yahooligons.com>, <yohooligans.com>, and <yahoolagons.com> domain names.

4. Respondent registered and used the <yahooemal.com>, <yaholigons.com>, <yahomessenger.com>, <yahoofiance.com>, <yahoofinace.com>, <yahoofreeporn.com>, <yahoogams.com>, <yahooilgans.com>, <yahooligons.com>, <yohooligans.com>, and <yahoolagons.com> domain names in bad faith.

B.  Respondent did not submit a formal Response in this proceeding.

FINDINGS

Complainant Yahoo! is a global Internet communications, media, and commerce company that delivers Yahoo!-branded search, directory, information, communication, and shopping services, as well as other online activities and features, to millions of Internet users daily. 

Complainant holds a service mark and trademark in YAHOO! and conducts business at the domain name <yahoo.com>.  Complainant has used the YAHOO! mark since as early as 1994 and registered it on the Principal Register of the United States Patent and Trademark Office at least by 1997.  Complainant also holds rights in the YAHOOLIGANS! mark, which was registered as early as 1997.

Complainant asserts that RaveClub Berlin and Cupcake Patrol are aliases of John Zuccarini.  In the case of the domain names <yahooilgans.com>, <yahooligons.com>, and <yohooligans.com>, Zuccarini registered the domain names, using his own name, but listing his company as “Cupcake Patrol.”  As to <yahoolagons.com>, Zuccarini listed himself as the sole registrant.  The remaining domain names were registered under the name RaveClub Berlin, with a company name of either RaveClub Berlin or RaveClub.  Each of the RaveClub Berlin domain names lists raveclub@berlin.com as its administrative, billing, and technical contact.  Zuccarini, having denied using the aliases Peter Carrington, Party Night Inc., Phayze Inc., and Music Wave, has not denied that RaveClub Berlin and RaveClub are his aliases.

In support of its assertion that all named registrants are the same individual, Complainant notes that all disputed domain names redirect users to the same web pages, that all use the same name-server, and that all were registered with Joker.Com.  Complainant also points to a Judgment and Permanent Injunction Order entered in the United States District Court for the Eastern District of Pennsylvania, in which RaveClub Berlin and Cupcake Patrol are identified as d/b/a names 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 Zuccarini’s conspicuous failure to contest Complainant’s assertion that all registrants here named are one in the same person, the Panel will accept Complainant’s allegation to that effect as true.  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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Accordingly, the Panel finds, for the purposes of this proceeding, that the named registrants/Respondent are one in the same, and that Complainant has satisfied ICANN Rule 3(c).

Respondent registered all of the disputed domain names between March 2000 and May 2002.  Since that time, all have been used to redirect Internet users to <hanky-panky-college.com>, a pornographic website.  Visitors to Respondent’s domain names are also confronted with a pop-up window that offers Internet search services in competition with Complainant, at <yes-yes-yes.com>.  Complainant’s evidence demonstrates that the <yes-yes-yes.com> domain name is registered to John Zuccarini.

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 formal 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 will draw such inferences as the Panel 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 to and/or Confusingly Similar

Complainant has sufficiently demonstrated its rights in the YAHOO! and YAHOOLIGANS! marks through evidence of continuous use in commerce and registration.

Complainant provides an e-mail service as well as features related to gaming and finance.  The <yahooemal.com>, <yahoofiance.com>, <yahoofinace.com>, and <yahoogams.com> are confusingly similar to Complainant’s YAHOO! mark as each fully incorporates the term YAHOO (exclamation points cannot be registered in a domain name) and adds a misspelled term that describes a service or feature provided by Complainant.  See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the <wrightandlato.com> domain name is identical to Complainant’s WRIGHT & LATO mark, because the ampersand symbol (&) is not reproducible in a URL); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

Similarly, the <yahomessenger.com> domain name is confusingly similar to Complainant’s YAHOO! mark as it adds the word “messenger,” which describes a service offered by Complainant, to a misspelled variation of Complainant’s mark.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Space Imaging LLC v. Brownwell, supra.

The <yahoofreeporn.com> domain name includes Complainant’s entire YAHOO! mark (minus the “!”) and adds the phrase “freeporn.”  Respondent appropriates Complainant’s entire mark and uses the domain name to host pornographic materials, thus rendering the domain name to be confusingly similar to the YAHOO! mark.  See Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).

The remaining domain names, <yaholigons.com>, <yahoogams.com>, <yahooilgans.com>, <yahooligons.com>, <yohooligans.com>, and <yahoolagons.com>, all reflect probable Internet user misspellings of Complainant’s YAHOOLIGANS! mark.  Given the similarity of the spelling of each to the others, it appears Respondent registered them specifically because they are confusingly similar to Complainant’s YAHOOLIGANS! mark.  Minor variations in the spelling of a protected mark will not defeat a claim of confusing similarity under the Policy.  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark); see also 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 YAHOO! Inc. v. Murray, D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com> is confusingly similar to Complainant’s YAHOO mark); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy).

The Panel finds that Complainant satisfied Policy ¶ 4(a)(i) as to each of the disputed domain names.

Rights to or Legitimate Interests

Complainant established that it has rights to and legitimate interests in the marks contained within the disputed domain names.  Complainant asserts that it has not authorized Respondent to use, in any way, its YAHOO! or YAHOOLIGANS! marks; and Respondent has not provided any evidence that it holds trademark or service mark rights as to any of the disputed domain names.  Furthermore, nothing in Complainant’s evidence or Respondent’s informal submission suggests that Respondent could be commonly known by any of the disputed domain names.  Accordingly, the Panel finds that Respondent has no rights in any of the disputed domain names pursuant to 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 a domain name when Respondent is not known by the mark); see also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent’s use of the disputed domain names to redirect Internet users to pornographic websites, where the names were selected specifically for the purpose of trading on the goodwill of Complainant’s marks, cannot qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use of the names under the Policy.  See Isleworth Land Co. v. Lost In Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that Respondent’s use of its domain name to link unsuspecting Internet traffic to an adult-orientated website, containing images of scantily clad women in provocative poses, did not constitute a connection with a bona fide offering of goods or services or a noncommercial or fair use); see also Paws, Inc. v. Zuccarini a/k/a Country Walk, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”).

Similarly, Respondent’s efforts to redirect users seeking Complainant’s search engine website to its own <yes-yes-yes.com> search engine does not demonstrate a bona fide offering of goods or services or a legitimate noncommercial or fair use.  See Yahoo! Inc. v. Web Master a/k/a MedGo, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services).

The Panel finds that Respondent has no rights or legitimate interests with respect to the disputed domain names and that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered eleven domain names reflecting misspellings of Complainant’s YAHOO! and YAHOOLIGANS! marks. This constitutes a pattern of abusive registration that can have no legitimate purpose.  Rather, Respondent is opportunistically attempting to trade on the goodwill built up in Complainant’s marks.  This behavior demonstrates bad faith registration under the Policy.  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 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).

Furthermore, Respondent’s use of the domain names for pornographic websites and to offer search services in competition with Complainant demonstrate bad faith use as contemplated by the Policy.  See 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 Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO March 4, 2003) (“whatever 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 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) (“it 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 Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name to a website that offers a number of web services).

Complainant has 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 <yahooemal.com>, <yaholigons.com>, <yahomessenger.com>, <yahoofiance.com>, <yahoofinace.com>, <yahoofreeporn.com>, <yahoogams.com>, <yahooilgans.com>, <yahooligons.com>, <yohooligans.com>, and <yahoolagons.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: October 20, 2003.

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