DECISION

Wizards of the Coast, Inc. v. John Zuccarini

Claim Number: FA0203000106106

PARTIES

Complainant is Wizards of the Coast, Inc., Renton, WA (“Complainant”) represented by Brian E. Lewis.  Respondent is John Zuccarini, Nassau, BAHAMAS (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <magicthegathring.com>, registered with Joker.com.

PANEL

 On April 24, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 26, 2002; the Forum received a hard copy of the Complaint on March 26, 2002.

On March 27, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <magicthegathring.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 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 16, 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@magicthegathring.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.

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 registered a domain name <magicthegathring.com> that is virtually identical and confusingly similar to Complainant’s registered mark MAGIC: THE GATHERING.

2. Because Internet users are redirected to an adult website comprised of advertisement links to other pornographic websites, and since Respondent is not commonly known as <magicthegathring.com>, Respondent has no rights or legitimate interests in the disputed domain name.

3. Respondent has prevented Complainant from reflecting its mark in the corresponding domain name.  Furthermore, Respondent has engaged in a pattern of such conduct.  Finally, Respondent has intentionally attempted to attract Internet users, for commercial gain, to a pornographic advertisement website by creating a likelihood of confusion with Complainant’s registered mark as to the source, sponsorship, affiliation, or endorsement of the pornographic website connected with the disputed domain name.  Therefore Respondent has registered and used the disputed domain name in bad faith.

B. Respondent

No Response was submitted.

FINDINGS

Complainant uses MAGIC: THE GATHERING® in conjunction with a fantasy-based trading card game.  Complainant registered the mark with the United States Patent and Trademark Office on September 19, 1995 (Reg. No. 1,919,923), and is the owner of 63 trademark registrations worldwide.  As a result of Complainant’s strenuous efforts promoting its product, the game associated with the mark is currently available in nine languages and played by over six million people in fifty-two countries worldwide.  Additionally, there are over 100,000 official MAGIC: THE GATHERING tournaments held annually throughout the world, and sales of the trading card game have averaged in excess of $100 million per year since 1996.

Complainant’s target market is 12-18 year-old males.  Research conducted shows that 95% of this MAGIC: THE GATHERING target audience has regular Internet access.

Respondent registered the disputed domain name July 25, 2000.  Respondent uses the disputed domain name by linking it to a website that offers links to pornographic goods and services.

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 MAGIC: THE GATHERING mark.  The disputed domain name is confusingly similar to Complainant’s famous mark.

First, even though the disputed domain name does not incorporate Complainant’s mark spaces, the domain name does not distinguish itself from the mark.  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”); see also Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997) aff’d 152 F3d 920 (2nd Cir. 1998) cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical).

Second, the fact that the domain name in dispute does not incorporate the colon from Complainant’s mark does not defeat the confusing similarity between the disputed domain name and mark.  See 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 Adamovske Strojirny v. Tatu Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding confusing similarity between the <adast.com> domain name and Complainant’s three different marks, consisting of a combination of a symbol with the words “ADAST”, “ADAST dominant” and “ADAST maxima”).

Finally, the disputed domain name is a misspelling of Complainant’s mark.  The disputed domain name omits the letter “e” in “gathering,” and other than this minor change, the disputed domain name and Complainant’s mark are nearly identical.  Thus, they are confusingly similar.  See Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also 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 the Complainant’s STATE FARM mark).

Accordingly, the Panel finds that <magicthegathring.com> and MAGIC: THE GATHERING are confusingly similar and therefore, Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Since a Response was not filed, the Panel will presume that all allegations in the Complaint are 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 uses a misspelling of Complainant’s famous mark to divert Internet users to a website that offers pornographic advertisements.  Such activity is not considered a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i).  Nor is a misspelling of a famous mark considered 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 tarnish the Complainant’s mark); 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 is known as “John Zuccarini” and according to the Complaint, Respondent has been known as “Cupcake Party,” “Cupcake Patrol,” “Cupcake City,” “Cupcake Show,” “Cupcake Parade,” “Cupcake Confidential,” “Cupcake Messenger,” “Cupcake Real Video,” “The Cupcake Incident,” “The Cupcake Secret,” “The Country Walk,” “JZ Design,” and “RaveClub Berlin.”  However, Respondent has not been commonly known as <magicthegathring.com>, and since Respondent has not presented any evidence to the contrary, Respondent has failed to satisfy Policy ¶ 4(c)(ii).  See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

Consequently, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

By using a confusingly similar domain name that differs from the famous mark by merely omitting the letter “e,” Respondent has engaged in “typosquatting.”  It has consistently been held that the practice of “typosquatting” is recognized as a bad faith use of a domain name.  See e.g. Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant).

Respondent has prevented Complainant from reflecting its mark in the corresponding domain name.  Respondent has history of engaging in similar conduct.  See Encyclopaedia Britannica, Inc. v. Zuccarini & Cupcake Patrol, D2000-0330 (WIPO June 7, 2000) (finding “ample evidence” of bad faith registration and use and thus transferring <encyclopediabrittanica.com>, <brtanica.com>, <bitannica.com>, and <"britannca.com> from Respondent to Complainant); see also Knight-Ridder, Inc. v. Cupcake Patrol, FA 96551 (Nat. Arb. Forum Mar. 6, 2001) (finding that Respondent registered and is used <miamihearld.com> in bad faith); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that Respondent used the domain name in bad faith as part of a pattern of conduct involving multiple registrations of undeveloped domain names and therefore, transferring <hewlittpackard.com> from Respondent to Complainant); see also FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding that Respondent registered and used <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> in bad faith).  Therefore, Respondent has registered <magicthegathring.com> in bad faith pursuant to Policy ¶ 4(b)(ii).  See 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).

Respondent has linked a confusingly similar domain name to a website that offers pornographic goods and services.  Such use is considered to be in bad faith pursuant to Policy ¶ 4(b)(iv).  See Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain name confusingly similar to the Complainant’s mark and used a confusingly similar pornographic depiction of the Complainant’s registered trademark on its web site to cause confusion as to the source or affiliation of the site); see also 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).

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 <magicthegathring.com> domain name be transferred from Respondent to Complainant.

James P. Buchele, Panelist

Dated May 8, 2002

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page