DECISION

Cabela's Incorporated v. John Zuccarini

Claim Number: FA0203000105895

PARTIES

Complainant is Cabela's Incorporated, Sidney, NE (“Complainant”) represented by David Hutton, Esq. Respondent is John Zuccarini, Andalusia, PA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <cabalas.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 March 15, 2002; the Forum received a hard copy of the Complaint on March 18, 2002.

On March 18, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <cabalas.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 March 19, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 8, 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@cabalas.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 April 16, 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

Respondent’s  <cabalas.com> domain name is confusingly similar to Complainant’s CABELA’S regsitered trademark.

Respondent does not have rights or legitimate interests in the disputed domain name.

Respondent regsitered and used the disputed domain name in bad faith.

B. Respondent

No Response was submitted.

FINDINGS

Complainant has rights to its CABELA’S mark due to its registration of the mark with the United States Patent and Trademark Office (USPTO) on January 25, 1983, Reg. No. 1,224,738.  Complainant also registered CABELAS.COM with the USPTO, Reg. No. 2,247,977.  Complainant has used the CABELA’S mark since 1961 in connection with its sale of hunting, fishing, and outdoor clothing equipment.  Complainant has invested substantial sums of money in developing and marketing CABELA’S.

Respondent registered the disputed domain name on January 10, 2000.  Respondent initially registered <cabelasucks.com>, and when Complainant requested that Respondent transfer that domain name, Respondent retaliated by registering <cabalas.com>.

Respondent has registered many  famous trademarks in the past, and it has established a  pattern of trademark infringment.   See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) and Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000).

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 rights to its CABELA’S mark due to its registration of the mark with the USPTO on January 25, 1983, Reg. No. 1,224,738. 

Respondent’s <cabalas.com> domain name is confusingly similar to Complainant’s CABELA’S registered trademark except for the alteration of an “a” to an “e”, the addition of a “.com,” and the elimination of an apostrophe.  See 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 Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

            The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent is presumed not to have any rights or legitimate interests in the disputed domain name because it never submitted a Response to this Complaint.  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 not made a bona fide offering of goods under Policy ¶ 4(c)(i) or a noncommercial or fair use under Policy ¶ 4(c)(iii) because it has failed to use or develop the disputed domain name.  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also BMW AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding no rights in the domain name where Respondent claimed to be using the domain name for a non-commercial purpose but had made no actual use of the domain name).

Respondent, known as John Zuccarini, is not commonly known as <cabalas.com> or CABELA’S.  As a result, it does not have any rights or legitimate interests under 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 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).

           The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

The Panel may find that Respondent’s long pattern of registering domain names confusingly similar to registered famous marks is evidence of its bad faith under Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).

Respondent’s use of the confusingly similar <cabalas.com> domain name creates a likelihood of confusion among Internet users as to the source, sponsorship, and affiliation of the disputed domain name.  This indicates Respondent’s bad faith use and registration under Policy ¶ 4(b)(iv).  See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

            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 shall be hereby granted.

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

Judge Harold Kalina (Ret.)

Dated:  April 22, 2002

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