DECISION

Zone Labs, Inc. v. John Zuccarini d/b/a The Cupcake Patrol

Claim Number: FA0308000190613

PARTIES

Complainant is Zone Labs, Inc., San Francisco, CA (“Complainant”) represented by Michelle R. Harbottle of Gray Cary Ware & Freidenrich LLP. Respondent is John Zuccarini d/b/a The Cupcake Patrol, Volcan, Panama (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <zonelarm.com> registered with Computer Services Langenbach Gmbh d/b/a 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 A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 26, 2003; the Forum received a hard copy of the Complaint on August 28, 2003.

On August 27, 2003, Computer Services Langenbach Gmbh d/b/a Joker.com confirmed by e-mail to the Forum that the domain name <zonelarm.com> is registered with Computer Services Langenbach Gmbh d/b/a Joker.com and that Respondent is the current registrant of the name. Computer Services Langenbach Gmbh d/b/a Joker.com has verified that Respondent is bound by the Computer Services Langenbach Gmbh d/b/a 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 September 5, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 25, 2003 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@zonelarm.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 October 9, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 makes the following assertions:

1. Respondent’s <zonelarm.com> domain name is confusingly similar to Complainant’s ZONEALARM mark.

2. Respondent does not have any rights or legitimate interests in the <zonelarm.com> domain name.

3. Respondent registered and used the <zonelarm.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant provides evidence of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the ZONEALARM mark (Reg. No. 2,510,036 registered on November 20, 2001) related to downloadable computer software for providing security for computers connected to the Internet. Complainant’s certificate of registration lists a first use in commerce of July 13, 1999 and a trademark application filing date of January 11, 2001.

Complainant’s products are advertised and promoted extensively in newspapers, magazines and in other advertising media through the use of the ZONEALARM mark. Last year, Complainant spent over $3,800,000 on worldwide advertising and promotion. Complainant operates a website at <zonealarm.com> where Internet users find information about and technical support for Complainant’s products.

Respondent registered the <zonelarm.com> domain name on August 15, 2001. Respondent is using the disputed domain name to redirect Internet users to a website that displays pornographic material. When seeking to leave Respondent’s website, Internet users receive pop-up advertisements for a variety of 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 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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 rights in the ZONEALARM mark through registration with the USPTO that relate back to Complainant’s filing of its trademark registration application on January 11, 2001. See FDNY Fire Safety Educ. Fund, Inc. v. Miller, FA 145235 (Nat. Arb. Forum March 26, 2003) (finding that Complainant’s rights in the FDNY mark relate back to the date that its successful trademark registration was filed with the U.S. Patent and Trademark Office); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

Complainant argues that Respondent’s <zonelarm.com> domain name is confusingly similar to Complainant’s ZONEALARM mark because the disputed domain name appropriates Complainant’s mark with the exception that the first letter “a” is omitted. The omission of this letter fails to ameliorate the confusing similarity between the domain name and the mark because the domain name capitalizes on a probable typographical error when an Internet user attempts to type a domain name into the URL. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); 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 Complainant’s STATE FARM mark).

Accordingly, the Panel finds that Complainant has demonstrated Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not come forward to challenge the allegations included in the Complaint. Thus, the Panel accepts all of Complainant’s reasonable allegations and inferences as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Moreover, based on Respondent’s failure to answer the Complaint, the Panel presumes Respondent lacks any rights to or legitimate interests in the disputed domain name with regard to Policy ¶ 4(a)(ii). 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); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <zonelarm.com> domain name to redirect Internet traffic to a website that provides pornographic material, along with pop-up advertisements offering a variety of goods and services. Respondent’s use of the disputed domain name establishes neither 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 Paws, Inc. v. Zuccarini a/k/a Country Walk, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Am. Eagle Outfitters, Inc. v. Zuccarini a/k/a Country Walk, FA 155178 (Nat. Arb. Forum June 10, 2003) (finding that Respondent’s use of a domain name that was a misspelling of Complainant’s mark to redirect Internet users to an adult-oriented website was not a bona fide offering of goods or services) see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum April 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

Furthermore, Complainant has not authorized or licensed Respondent in any way to use or exploit the ZONEALARM mark. The Panel finds that Respondent has not established that it is commonly known by ZONELARM or <zonelarm.com> because there is no evidence in the record that suggests Respondent is commonly known by the mark and the mark fails to spell correctly a cognizable phrase. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that Respondent was not “commonly known by” the name GIRLS GON WILD or <girlsgonwild.com>).

The Panel finds that Complainant has demonstrated Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s link of a domain name--confusingly similar to Complainant’s mark--to a website offering pornographic material and pop-up advertisements indicates that Respondent is profiting commercially from its use of the disputed domain name. Accordingly, the Panel finds that Respondent registered and subsequently used the <zonelarm.com> domain name with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Party Night Inc. & Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent attracted users to advertisements).

Furthermore, Respondent’s registration and use of a domain name that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also 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).

The Panel finds that Complainant has demonstrated Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

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

James A. Carmody, Esq., Panelist

Dated:  October 15, 2003

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