DECISION

Fox Racing, Inc. v. John Zuccarini a/k/a Cupcake Patrol

Claim Number: FA0205000114302

PARTIES

Complainant is Fox Racing, Inc., Morgan Hill, CA, USA (“Complainant”) represented by Eliane Setton, of Gray Cary Ware & Freidenrich LLP.  Respondent is John Zuccarini a/k/a Cupcake Patrol, Nassau, BAHAMAS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <foxraceing.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.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 16, 2002; the Forum received a hard copy of the Complaint on May 20, 2002.

On May 21, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <foxraceing.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 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 13, 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@foxraceing.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 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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

The <foxraceing.com> domain name is confusingly similar to Complainant’s FOX and FOX RACING marks.

Respondent has no rights or legitimate interests in the <foxraceing.com> domain name.

Respondent registered the <foxraceing.com> domain name in bad faith.

B. Respondent

Respondent has failed to submit a Response in this proceeding.

FINDINGS

Complainant owns registered trademarks for FOX with the United States Patent and Trademark Office (“USPTO”).  Complainant also has pending trademark applications for FOX RACING with the USPTO (Reg. Nos. 76,331,234, 76,331,560, and 76,331,236).  Complainant uses its FOX and FOX RACING marks in connection with clothing geared to the motocross and sportswear fields.

Complainant has extensively used the FOX and FOX RACING marks to promote its products.  In 2001, Complainant spent over seven million dollars on worldwide advertising and promotion.  Consequently, Complainant’s FOX and FOX RACING marks have gained brand recognition status.

Complainant also has a website at <foxracing.com>, which serves as a vehicle for providing company and sponsorship information as well as a means for online ordering of Complainant’s goods.

Respondent registered <foxraceing.com> on May 17, 2000.  Respondent links the <foxraceing.com> domain name to a pornographic website, located at <amaturevideos.nl>.  Respondent has also linked several “pop-up” advertisements to the domain name. 

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 its rights to the FOX mark through registration with the USPTO and continuous use.  Complainant has also established its rights to the FOX RACING mark through pending trademark applications with the USPTO and continuous use.  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications).

First, Respondent’s <foxraceing.com> domain name is confusingly similar to Complainant’s FOX mark because the domain name merely adds the misspelled descriptive word “raceing.”  The word “racing,” which is the proper spelling of “raceing,” has an obvious connection to Complainant’s business in the motocross field.  The addition of a generic word to Complainant’s mark that has an obvious connection with Complainant’s business does not defeat a confusing similarity claim.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Second, Respondent’s <foxraceing.com> domain name is confusingly similar to Complainant’s FOX RACING mark because the domain name consists of a common misspelling of Complainant’s mark.  The only difference in Respondent’s domain name as compared to Complainant’s mark is the misspelled “raceing.”  This is a common misspelling of  “racing” and is intended to take advantage of a typographical error.  Therefore, Respondent’s domain name is not distinct and is confusingly similar to Complainant’s mark.  See 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); 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 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).

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

Rights or Legitimate Interests

In light of Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name and Respondent’s failure to respond, the Panel may presume Respondent has no such rights or legitimate interests in the disputed domain name.  See 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).  Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant.  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 uses the <foxraceing.com> domain name to re-direct unsuspecting Internet users who misspell “racing” to a pornographic website.  Respondent’s use is an attempt to commercially benefit from the common typographical error of Complainant’s FOX RACING mark.  Such use does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor does it constitute 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 tarnish the Complainant’s mark); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website); see also Encyclopaedia Brittanica, 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).

Complainant never licensed or authorized Respondent to use its FOX or FOX RACING mark.  Respondent is not commonly known as FOX RACEING or <foxraceing.com>.  Respondent is known by this Panel as John Zuccarini or alternatively Cupcake Patrol.  Therefore, Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Am. Airlines, Inc. v. Zuccarini, FA 95695 (Nat. Arb. Forum Nov. 6, 2000) (finding no rights or legitimate interest in the misspelled domain name <amaricanairlines.com> because Respondent was not authorized to use Complainant's mark).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name, thus, Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

Respondent, an infamous cybersquatter, has an extensive history of registering domain names of well-known marks and using them to direct Internet traffic to pornographic websites for commercial gain.  In fact, Respondent has registered over 3,000 domain names, hundreds of which are misspellings of famous marks and names like the current <foxraceing.com> domain name.  It is clear from Respondent’s past conduct that registering the misspelling of Complainant’s FOX RACING mark as a domain name was done in bad faith.  See 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); see also Gamesville.com, Inc. v. Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent has engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).

Respondent uses the <foxraceing.com> domain name to re-direct Internet traffic to a pornographic website.  In doing so, Respondent commercially benefits from each hit the website receives because of the “pop-up” advertisements linked to the pornographic website.  Respondent’s activity constitutes a bad faith use of the domain name pursuant to Policy ¶ 4(b)(iv).  See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements).

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 <foxraceing.com> domain name be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

                                                            Dated:  July 8, 2002

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