DECISION

 

Target Brands, Inc. v. John Zuccarini a/k/a Cupcake Patrol

Claim Number: FA0109000099683

 

PARTIES

Complainant is Target Brands, Inc., Minneapolis, MN (“Complainant”) represented by Ann Dunn Wessberg, of Faegre & Benson, LLP.  Respondent is John Zuccarini Cupcake Patrol, Nassau, N.P. (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <marshalfield.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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 7, 2001; the Forum received a hard copy of the Complaint on September 10, 2001.

 

On September 12, 2001, Joker.com confirmed by e-mail to the Forum that the domain name <marshalfield.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 September 17, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 9, 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@marshalfield.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 18, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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 the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

The <marshalfield.com> domain is confusingly similar to Complainant's mark.

 

Respondent does not have rights or legitimate interests in respect to the <marshalfield.com> domain name.

 

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

 

B. Respondent

Respondent did not submit a response.

 

FINDINGS

Since 1852, the mark MARSHALL FIELD'S has been used in relation the department stores Complainant operates.  Complainant's store is among one of the premier retailers in the United States.  Complainant is the owner of a federal trademark registration for the mark MARSHALL FIELD'S, as well as other marks that incorporate the FIELD name.

 

Complainant is the owner of <marshallfields.com>.  The website has been in operation since 1998 by Complainant's licensees or their respective predecessors in interest.  The website is used to inform the public, present and potential customers of the broad array of services Complainant's store has to offer.

Respondent registered the <marshalfield.com> domain name on May 9, 2000.  Respondent has registered various domain names infringing upon the trademarks of others.  Respondent has linked the <marshalfield.com> domain to a web site where various advertising windows pop-up identified with the following domain names: <psychicreading.org>, <medical-prescriptions.com>, <cupcakeparty.com>, <freecreditreport.com>, <governmentgrants.com>, <mp3123.com>, <emailprize.com>, <find-what-you-want.org>, and <qksrv.net>.  Many of these domain names that pop-up when one enters <marshalfield.com> are owned by the Respondent. 

 

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.

 

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

Complainant, through its extensive use and trademark registration has established rights in the MARSHALL FIELD'S mark.  Furthermore, the <marshalfield.com> domain name is confusingly similar to Complainant's mark because it is essentially the same minus two letters.  It has been held that the misspelling of famous marks does not create a distinct mark or defeat a claim of confusing similarity.  See 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); 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).

 

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

 

Rights or Legitimate Interests

Respondent has failed to come forward with a response and therefore it is presumed that Respondent has no rights or legitimate interest in the <marshalfield.com> domain name.  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).

 

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 is not using the domain name in connection with any bona fide offering of goods and services.  There is no web site associated with <marshalfield.com>, the user is immediately barraged with advertising windows featuring a variety of products.  The domain names that these advertising windows are associated with are owned by Respondent.  It has been found that using a domain to divert Internet users to an advertising website is not a bona fide offering of goods and services.  See 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 Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).

 

Furthermore, Respondent is not commonly known by <marshalfield.com> and therefore has no rights or legitimate interests in the disputed domain name.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).

 

Respondent is not making any legitimate noncommercial or fair use of the disputed domain name because he is only redirecting users to advertising websites.  See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).

 

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

 

Registration and Use in Bad Faith

Because of the famous and distinctive nature of Complainant's mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

 

Furthermore, Respondent's use of the disputed domain name, assumedly for commercial gain, to redirect Internet users to another website by creating a likelihood of confusion is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website); see also Drs. Foster & Smith, Inc. v. Jaspreet Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its website for commercial gain).

 

Respondent has engaged in a pattern of conduct of registering misspellings of famous trademarks which is evidence of bad faith.  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).

 

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 <marshalfield.com> be transferred from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

 

Dated: October 22, 2001