DECISION

 

General Mills, Inc. v. John Zuccarini

Claim Number: FA0104000097050

 

PARTIES

The Complainant is General Mills, Inc., Minneapolis, MN, USA (“Complainant”) represented by Jill H. Bollettieri.  The Respondent is John Zuccarini, Bensalem, PA, USA (“Respondent”) represented by Christopher A. Grillo.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is "bettycroker.com", registered with CSL GMBH.

 

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 Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 10, 2001; the Forum received a hard copy of the Complaint on April 11, 2001.

 

On April 20, 2001, CSL GMBH confirmed by e-mail to the Forum that the domain name "bettycroker.com" is registered with CSL GMBH and that the Respondent is the current registrant of the name.  CSL GMBH has verified that Respondent is bound by the CSL GMBH 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 April 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 10, 2001 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@bettycroker.com by e-mail.

 

A timely response was received and determined to be complete on May 10, 2001.  Complainant made a timely additional submission on May 17, 2001.

 

On May 17, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

            1.         The domain name in issue is nearly identical and confusingly similar to Complainant’s long established and renowned marks.

 

            2.         Respondent has no rights or legitimate interest in the offending domain name.

 

            3.         Respondent has registered and is using the domain name in bad faith because the domain name is being used intentionally to attract for commercial gain users to Respondent’s website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation and endorsement of Respondent’s website.

 

B. Respondent

            1.         The domain name in issue is not confusingly similar to Complainant’s marks because it is spelled differently.

 

            2.         Respondent has rights and a legitimate interest in the domain name in issue because it is being used in connection with a proactive search-engine portal, i.e., a bona fide business.

 

            3.         Respondent has not registered and/or used the domain name in issue in bad faith because the websites connected to the domain name in issue do not contain anything related to Complainant’s products, nor has Respondent offered the domain name for sale.

 

FINDINGS

            1.         Complainant General Mills has used the BETTY CROCKER mark since the 1920s, and it has since become one of the world’s most distinctive and famous brands for food and household consumer goods.

 

            2.         Complainant has obtained 33 trademark registrations commencing on January 16, 1951, on the United States Patent and Trademark Office’s Principal Register for the mark BETTY CROCKER, with and without design elements.

 

            3.         Complainant has accumulated substantial public goodwill in its BETTY CROCKER marks.  As a result of Complainant’s substantial promotional and advertising expenditures and worldwide sales, the distinctive BETTY CROCKER mark has become well known and famous among consumers.  Complainant licenses its BETTY CROCKER marks, but only to carefully selected promotional partners and with rigorous monitoring procedures.

 

            4.         Complainant registered the domain name bettycrocker.com on October 10, 1996, and uses this domain name as the address for its official Betty Crocker® website.

 

            5.         Respondent John Zuccarini registered the domain name in issue, bettycroker.com through a German domain registrar, CSL GmbH (joker.com) on February 5, 2000.  Respondent’s registration and use of this domain name occurred many years after Complainant’s first registration and use of its BETTY CROCKER mark.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

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;

(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

      The Panel finds that the domain name in issue is substantially identical and confusingly similar to Complainant’s famous and distinctive marks.

 

      This is because it is a simple misspelling of Complainant’s marks (due to the deletion of the second “c”).  The domain name is phonetically similar to Complainant’s BETTY CROCKER marks.  As a result, consumers are very likely to be confused as to the origin of the domain name in issue and the sponsorship of Respondent’s website.  (See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names “tdwatergouse.com” and “tdwaterhouse.com” are virtually identical to Complainant’s TD WATERHOUSE name and mark); Victoria’s Secret et al. v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that misspelling words and adding letters on to words does not create a distinct mark but is nevertheless confusingly similar with the Complainant’s marks)).

 

      Respondent contends, however, that he registered an Internet Protocol (IP) address, i.e., a numerical code or address that cannot be confused with any of Complainant’s domain IP addresses.

 

      Professor McCarthy provides us with a simple answer to this contention.  In 4 McCarthy, Trademarks and Unfair Competition (4th Ed., Updated 6/2000) section 25:73, p. 25-151, footnote 10, he says:

 

The question might be asked that since companies do not expect telephone numbers to always be the company name alphanumeric on the phone dial pad, why does a company expect its domain name to be the same as its corporate name or main trademark?  For example, the hypothetical Jupiter Inc.’s phone number does not spell out the word ‘jupiter’ on the telephone alphanumeric pad, so why does it desire ‘jupiter’ for a domain name?  The answer is that there is as yet nothing equivalent to a telephone directory for the Internet.  For telephone numbers, it is the availability of directories that facilitate the translation from name to number.

 

      Respondent also argues that a trademark dilution analysis such as that made in Ringling Bros-Barnum & Bailey Combined Shows, Inc. v. Utah Div. Of Travel Devel. (4th Cir. 1999) 170 F.3d 449, should be utilized here.  This would require proof of actual dilution.

 

      Proof of actual dilution, however, is not required by the “Policy.”  We must look, not to traditional trademark law, but to the three elements required by the “Policy.”

 

      Complainant prevails on this issue.

 

Rights or Legitimate Interests

      Paragraph 4(c) of the Policy states the circumstances, without limitation, which will demonstrate a Respondent’s rights or legitimate interest in a domain name.  They are as follows:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

      The Panel has determined that Respondent has not met any of these criteria.

 

      Respondent does not claim that he is known by the name “Betty Crocker,” or even “Betty Croker.”  He has no relationship with Complainant and is not authorized to use Complainant’s marks.  He has not made any legitimate noncommercial or fair use of the domain name.  Rather, his use of the domain name has been to divert Internet users from Complainant’s website to his own website consisting of pop-up advertisement windows.  Thus, Responsent’s use is in fact a commercial use that generates a profit from the advertisers who place their advertisements on his “Cupcake Party” website.

 

      Respondent argues, however, that he operates a legitimate business, i.e., a proactive search-engine portal for his website advertising sponsors, and that there is nothing wrong with its registration and use of unused domain names.  The Panel, however, has concluded that, under the “Policy,” Respondent may not utilize close derivations of famous and distinctive trademarks and, thus, profit from Internet users’ misspelling the Internet destinations they desire.  (See Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights under the Policy where the domain name misleadingly diverted Internet users to other sites).

 

Registration and Use in Bad Faith

      The Panel has determined that Respondent registered the disputed domain name in bad faith because he is using it intentionally to attract, for commercial gain, Internet users to his website.  He has created a likelihood of confusion with Complainant’s famous and distinctive marks as to the source, sponsorship, affiliation and endorsement of Respondent’s website.  (Policy, paragraph 4(b)(iv).  See 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); ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the Respondent linked the domain name to another website <iwin.com>, presumably the Respondent received a portion of the revenue of the advertising revenue from site by directing Internet traffic to the site, thus using a domain name to attract Internet users, for commercial gain).

 

      Respondent argues, however, that he did not register and is not using the domain name in issue in bad faith because the websites connected to the domain name do not contain anything even remotely related to Complainant’s products.  Respondent further contends he has acted in good faith because he has never offered the domain name for sale.

 

      The fallacy in Respondent’s contention is that while under traditional trademark law the similarity or nonsimilarity of the products may be considered, this is not a factor under the “Policy.”  Indeed, the recently enacted Anticybersquatting Consumer Protection Act (15 U.S.C. Section 1125(d)) protects “distinctive” and  “famous” marks “without regard to the goods or services of the parties.”  (15 U.S.C. Section 1125(d)(1)(A).)

 

      That Respondent did not offer to sell the domain name in issue is commendable, but it is irrelevant to the Panel’s decision.

 

      The Panel is not so presumptuous as to determine venue in a possible court action, for that determination will be for the Court.

 

      Finally, this matter is decided on its merits without regard to other dispositions affecting Respondent.

 

DECISION

      Based on the above findings, conclusions and determinations, it is decided that the domain name “bettycroker.com” registered by Respondent John Zuccarini shall be, and the same is, transferred to Complainant General Mills, Inc.

 

 

Honorable Irving H. Perluss

Retired Judge

Arbitrator

 

Dated:  May 30, 2001

 

 

 

 

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