Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Cabela's Incorporated, Sidney, NE, USA ("Complainant"). The Respondent is Cupcake Patrol, Andalusia, PA, USA ("Respondent").

The domain name at issue is "CABELASSUCKS.COM", registered with Core Internet Council of Registrars ("Core").

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

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/29/2000; The Forum received a hard copy of the Complaint on 07/13/2000.

On 07/19/2000, Core confirmed by e-mail to The Forum that the domain name "CABELASSUCKS.COM" is registered with Core and that the Respondent is the current registrant of the name.

On 07/24/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/14/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by e-mail. It was also emailed to postmaster@cabelassucks.com.

On 08/16/2000, 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 08/17/2000, pursuant to Complainantís request to have the dispute decided by a Single Member panel, The Forum appointed Honorable Carolyn Marks Johnson 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 Uniform 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 Forumís Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

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

A. Complainant

Complainant contends that Respondent adopted a name that is confusingly similar to Complainantís registered mark. Complainant asserts that Respondent has no legitimate rights in the domain name and has registered and used the domain name in bad faith.

Complainant contends that Respondentís website that corresponds to the domain name in question is offered for no legitimate purpose other than to harass Internet users. Complainant maintains that Respondent attempted to deceive customers into believing that the said domain name was owned, operated, and maintained by Complainant.

B. Respondent

The Respondent has failed to submit a response in this matter.

ICANN Uniform Rule 14(b) provides that, absent exceptional circumstances, the Panel shall draw inferences, as it deems appropriate, from the failure of a party to comply with a provision or requirement of the Uniform Rules. As a result, all reasonable inferences asserted in the Complaint will be deemed true.

Complainant is the owner of the trademark "Cabelaís" pursuant to the U.S. Trademark Registration Numbers 1,151981 and 1,224,738. Complainant has been utilizing this mark since at least 1961. Complainant uses this mark in connection with the sale of hunting, fishing, and outdoor clothing and equipment. Complainantís mark is distinctive and famous.

Complainant uses the domain name <cabelas.com> for on-line sales of merchandise and services. Complainant is the owner of the trademark CABELAS.COM pursuant to the U.S. Trademark Registration No. 2,247,977 and Complainant has used this mark since at least 1996.

Respondent has made no use of the website that corresponds with the domain name in question.

Respondent has no affiliation or relationship with the Complainant.

Respondent did not accept correspondence from Complainant by certified mail, overnight mail, or facsimile. The only method of communication between Respondent and Complainant was via e-mail. In correspondence with the Complainant, Respondent indicated that he registered the domain name in reference to the vocal toning and spiritual music website <cabala.com>.

Respondent registered the domain name in retaliation after Complainant requested John Zuccarini, who is affiliated with the Respondent, to transfer to Complainant another domain name he had registered, <cabela.com>.

Respondent has engaged in a similar pattern of conduct of registering domain names that infringe on other companiesí trademarks.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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.

Complainant has rights in the registered trademarks, "Cabelaís" and "Cabelas.com". The addition of a common or generic term following a trademark does not create a new or different mark in which the Respondent has rights. See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term "direct" on to the Complainantís marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the Complainant, and thus the Respondentís domain names are confusingly similar).

Courts and other UDRP Panels have recognized that the intentional registration of a domain name while knowing that the second-level domain contains anotherís valuable trademark weighs in favor of a likelihood of confusion. See Minnesota Min. and Mfg. Co. v. Taylor, 21 F.Supp.2d 1003, 1005 (D.Minn. 1998); Intermatic Inc. v. Toeppen, 947 F.Supp. 1227, 1235-1236 (N.D.Ill. 1996).

Courts and UDRP Panels have also addressed the issue of appending the term "-sucks" to anotherís trademark. See Lucent Technologies, Inc. v. Lucentsucks.com, 95 F.Supp.2d 528 (E.D. Va. 2000); Bally Total Fitness v. Faber, 29 F.Supp.2d 1161 (C.D. Cal. 1998); Wal-mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000). The Panel does not infer that "-sucks" domain names are immune from scrutiny as being confusingly similar to trademarks to which they are appended. Each case must be considered in light of the facts presented. The Panel in Wal-mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico identified that the confusingly similar test may be held to a different standard when used with Internet search engines. See Wal-mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000).

By using Complainantís marks in its domain names, Respondent makes it likely that Internet users entering "Cabelaís" into a search engine will find "CABELASSUCKS.COM" in addition to the Complainantís site <cabelas.com>. Respondentís domain name is sufficiently similar to Complainantís marks that the search engine results will confusingly list the Respondentís domain name when searching for Complainantís mark. See id.

The Panel concludes that the Respondentís domain name is confusingly similar to the Complainantís marks.

Respondent has failed to offer any evidence of rights or legitimate interests in the domain name in question.

Respondent has made no use of the domain name in question and has not used the domain name in connection with any bona fide offering of goods or services. Policy  4.c.(i). Respondent is not making a legitimate noncommercial or fair use of the domain name. Policy  4.c.(iii). The Panel notes that use of a "-sucks" domain name may be justified by fair use or legitimate noncommercial use considerations for free expression forums. However, this is not the situation in this case. The Panel does not construe that the Respondent registered the domain name in order to express opinions or to seek opinions of others. The Complaint indicates that Respondent registered this domain name in retaliation against Complainant.

In correspondence with Complainant, Respondent indicated that he registered the domain name in connection with the domain name <cabala.com>, a website devoted to vocal toning and spiritual music. Given Respondentís failure to respond in this ICANN dispute and failure to use the domain name for such purposes, the Panel finds this unpersuasive.

Respondent is not commonly known by the domain name in question. Policy  4.c.(ii). Complainant has been using its mark for almost forty years. Respondent is not known by Complainantís mark, but rather is known by many the pseudonyms including, Country Walk, John Zuccarini, and Cupcake Party.

The Panel determines that Respondent has no rights or legitimate interests in the domain name in question.

Complainant contends that Respondent registered and used the domain name in bad faith.

Because Respondentís conduct does not fall within the ëparticularí circumstances set out in  4.b. does not mean that the domain names at issue were not registered in and are not being used in bad faith. See Educational Testing Service v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy "[I]ndicates that its listing of bad faith factors is without limitation").

Respondent registered the domain name in response to Complainantís request that John Zuccarini transfer the domain name <cabela.com> to Complainant. Respondent registered this domain name in bad faith to retaliate against Complainant.

Respondent has engaged in a pattern of conduct of registering domain names that infringe upon otherís trademarks. For example, Respondent registered <hewlittpackard.com>, which is confusingly similar to the trademark owned by Hewlett Packard. Respondent also registered the domain name <e-cardssucks.com> in response to a recent lawsuit awarding "e-cards.com" a four million-dollar award. These are only a few of many domain names that Respondent owns that infringe upon otherís famous marks. The Panel concludes that Respondent has registered the domain name in question in order to prevent Complainant from reflecting its registered mark in a corresponding domain name. Policy  4.b.(ii). See Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party, D2000-0330 (WIPO June 7, 2000).

Respondent has made no use of the domain name in question. Passive holding of a domain name with knowledge that the domain name infringes on another partyís trademark rights is evidence of using in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) ("[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith").

The Panel determines that Respondent registered and is using the domain name in question in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "CABELASSUCKS.COM", be transferred from Respondent to Complainant.

Honorable Carolyn Marks Johnson