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Generic Top Level Domain Name (gTLD) Decisions |
The J. Jill Group, Inc. v. John Zuccarini
d/b/a RaveClub Berlin
Claim Number: FA0205000112627
PARTIES
Complainant
is The J. Jill Group, Inc., Quincy,
MA (“Complainant”) represented by Hal L.
Poret, of Foley, Hoag & Eliot
LLP. Respondent is John Zuccarini d/b/a RaveClub Berlin,
Cherry Hill, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <jjilll.com>, registered with Joker.com.
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.
James
P. Buchele as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 2, 2002; the Forum received
a hard copy of the Complaint
on May 6, 2002.
On
May 3, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <jjilll.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
May 6, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 28,
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@jjilll.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
June 27, 2002 pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele 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
1. Respondent’s <jjilll.com> domain
name is confusingly similar to Complainant’s registered J. JILL mark.
2. Respondent has no rights or legitimate
interests in the <jjilll.com> domain name.
3. Respondent registered and used the
disputed domain name in bad faith.
B. Respondent did not submit a Response.
FINDINGS
Complainant is the owner of numerous registered
trademarks containing the J. JILL mark, including: U.S. Reg. No. 1204106 issued
on
August 3, 1982 reflecting a first use date of January 1, 1954, Singapore
Reg. No. T98/06509G registered on February 18, 1998, and
Israel Reg. No. 119493
issued September 7, 1999, among others. In addition to the foregoing
trademarks, Complainant is the registered
owner of the following Internet
domains, among others: <jjill.com> registered on June 2, 1997,
<jjill.net> registered
on April 7, 1999, <jjill.org> registered on
April 7, 1999 and <jjills.com> registered on October 31, 2001.
Respondent registered the <jjilll.com>
domain name on September 1, 2000. Respondent is currently using the
contested domain name to direct Internet users to <amaturevideos.nl>,
a
commercial Internet site that features pornographic material. The web page
consists of eighteen pornographic images form various
adult websites along with
brief descriptions of the contents of such websites. Complainant’s
investigation revealed that Respondent
is a well-known trafficker of domain
names who specializes in the misspelling of well-known marks and directing
Internet users to
pornographic sites. Respondent has been found to be in
violation of the UDRP on numerous occasions.
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.
Complainant
has established its rights in the J. JILL mark through registration with the
United States Patent and Trademark Office
(“USPTO”) and other jurisdictions.
Respondent’s <jjilll.com>
domain name is confusingly similar to Complainant’s mark. Respondent’s
introduction of a third ‘l’ to Complainant’s registered mark
does not detract
from the overall impression of the domain name. Also, by capitalizing on a
misspelling of a famous mark Respondent
fails to create a distinct domain name,
but nevertheless renders it confusingly similar to Complainant’s mark. See
Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the
deliberate introduction of errors or changes, such as the addition of a fourth
“w” or the omission of periods or other such generic typos do not change the
Respondent’s infringement on a core trademark held by
Complainant); see also
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 it confusingly similar to Complainant’s marks).
Furthermore, Respondent’s disputed domain
name is confusingly similar to Complainant’s J. JILL mark because the deletion
of a space
is inconsequential to a Policy ¶ 4(a)(i) analysis. See Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible
in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Because Respondent has not submitted a
Response in this matter, the Panel may presume it has no rights or legitimate
interests in
respect of 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).
Respondent has used the disputed domain
name to redirect Internet users to a pornographic website. Respondent
registered a confusingly
similar domain name and is taking advantage of the
goodwill established by Complainant in its mark. Such use is not a bona fide
offering
of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate
noncommercial or fair use pursuant to 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 to tarnish the Complainant’s mark); see
also Brown & Bigelow, Inc. v.
Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on
another's well-known mark to provide a link to a pornographic
site is not a
legitimate or fair use).
Respondent is not commonly known by
“jjilll” or <jjilll.com> pursuant to Policy ¶ 4(c)(ii). Respondent
is only known to this Panel as John Zuccarini d/b/a RaveClub Berlin. 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 Great S.
Wood Pres., Inc. v. TFA Assocs.,
FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not
commonly known by the domain name <greatsouthernwood.com>
where
Respondent linked the domain name to <bestoftheweb.com>).
The Panel finds
that Respondent has no rights or legitimate interests in respect of the
disputed domain name and, thus, Policy ¶ 4(a)(ii)
has been satisfied.
Because of the famous and distinct nature
of Complainant’s mark and Complainant’s J. JILL listing on the Principal
Register of the
USPTO, Respondent is thought to have been on notice as to the
existence of Complainant’s mark at the time Respondent registered the
infringing <jjilll.com> domain name. Thus, Respondent’s
registration despite this notice is evidence of bad faith registration. See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov.
9, 2000) (finding that Respondent’s registration and use of an identical and/or
confusingly similar domain
name was in bad faith where Complainant’s BEANIE
BABIES mark was famous and Respondent should have been aware of it); see
also Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given
the world-wide
prominence of the mark, and thus, Respondent registered the domain name in bad
faith).
Respondent registered <jjilll.com>,
a domain name that incorporates Complainant’s mark, in order to trade on
Complainant’s goodwill and create confusion as to the source
or sponsorship of
its website. Such behavior demonstrates bad faith registration and use within
the meaning of Policy ¶ 4(b)(iv).
Respondent’s sole purpose in registering
Complainant’s established mark was to maximize the amount of Internet traffic
it could divert
to Respondent’s website. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum
Mar. 21, 2000) (finding bad faith where Respondent registered and used an
infringing domain name to attract
users to a website sponsored by Respondent); see
also Oxygen Media, LLC v. Primary
Source, D2000-0362 (WIPO June 19, 2000) (finding bad faith where Respondent
threatened to develop the domain name in question into a pornography
site).
Complainant has provided evidence that
Respondent has a history of registering infringing domain names that
incorporate the trademarks
and service marks of others. Because Respondent has
not refuted this claim, the Panel may accept the assertion 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”).
Respondent’s actions reflect a pattern of
behavior known as typosquatting, which constitutes bad faith under the Policy. See
Armstrong Holdings, Inc. v. JAZ Assoc.,
FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated
the Policy by registering multiple domain names which
infringe upon others’
famous and registered trademarks); see also Budget Rent-a-Car Corp. v. Cupcake City, D2000-1020 (WIPO Oct. 19,
2000) (finding a pattern of conduct in registering domain names that infringe
upon others’ marks where
the Respondent has registered over 1,300 domain
names).
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 should be
hereby
GRANTED.
Accordingly, it is Ordered that the <jjilll.com>
domain name be TRANSFERRED from
Respondent to Complainant.
James P. Buchele, Panelist
Dated: July 1, 2002
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