WIPO Arbitration and Mediation Center

1.1 The Complainant is CIMCITIES, LLC a Delaware limited liability company with a principal place of business at 530 Means Street, N.W., Suite 200, Atlanta, Georgia, United States of America 30318.

1.2 The Respondent is John Zuccarini d/b/a Cupcake Patrol whose address is listed at 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania, United States of America 19020.

2.1 The Domain Name is <accesatlanta.com>.

2.2 The Domain Name is registered with Network Solutions, Inc. at the time that this Complaint is filed.

3.1 Complaint filed by e-mail on April 3, 2001, with hard copy received on April 5, 2001, naming John Zuccarini d/b/a Cupcake Patrol as Respondent. Amendment (1) to Complaint was received by e-mail on April 12, 2001, and Amendment (2) to Complaint was received by e-mail on April 23, 2001.

3.2 The Complainant elected to have the dispute decided by a single-member Administrative Panel.

3.3 In accordance with Paragraph 3(b)(xiii), the Complainant agrees to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the domain name that is the subject of this Complaint, to the jurisdiction of the courts where the Respondent’s is located, as shown by the address given for the domain name holder in the concerned registrar’s Whois database at the time of the submission of the Complaint to the WIPO Center.

3.4 No legal proceedings have been initiated, as yet. (Rules, paragraph 3(b)(xi))

3.5 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500 has been sent with the initial Complaint on April 5, 2001.

3.6 The Complainant agreed that its claim and remedies concerning the registration of the domain name, the dispute, or the dispute’s resolution shall be solely against the domain name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned registrar, (c) the registry administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.

3.7 A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been sent or transmitted to the Respondent on April 24, 2001, by email and mail address as specified above pursuant to the Rules, paragraph 2(b).

3.8 A copy of this Complaint, has been sent or transmitted to the concerned registrar on April 24, 2001.

3.9 On April 24, 2001, Respondent received a Notification of Complaint and Commencement of Administrative Proceeding from the WIPO Arbitration and Mediation Center (Center) by postal service informing the Respondent that an administrative proceeding had been commenced by Complainant in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). The Center set May 13, 2001, as the date for the submission of a Response by Respondent.

3.10 The single panel member, Cecil O.D. Branson, Q.C. submitted a Statement of Acceptance and Declaration of Impartiality and Independence on May 17, 2001, and was duly appointed in accordance with paragraph 15 of the Rules. The Panel was required to forward its decision to the Center by May 31, 2001.

4.1 The Complainant, CIMCITIES, LLC, and/or its affiliated entities (including its predecessor in interest in the mark, Cox Interactive Media, Inc. ("CIM"), which is the sole member of CIMCITIES), has continuously and extensively used the ACCESS ATLANTA ® mark to identify, advertise and promote its <accessatlanta.com> website and computer services since August 26, 1990. The mark was federally registered on August 29, 1995, (U.S. Registration No. 1,915,614). The ACCESS ATLANTA ® mark, the registration therefor and the associated goodwill have been assigned from CIM to CIMCITIES. The Assignment was recorded with the Patent and Trademark Office on March 24, 2000.

4.2 Complainant CIMCITIES has invested a substantial amount of time and resources to promote and advertise its ACCESS ATLANTA ® mark, the ACCESS ATLANTA ® website, and its associated computer services regionally and nationally. As a result, Complainant CIMCITIES has developed valuable goodwill and a reputation in its ACCESS ATLANTA ® mark, which is associated with Complainant CIMCITIES and/or its related entities.

4.3 Complainant CIMCITIES’ ACCESS ATLANTA ® name provides online tools and features including a powerful local and national search engine, classified advertising, local email, a large directory of local websites, a searchable directory of local restaurants, automobile and real estate listings, local job listings, Atlanta movie listings and events calendar, local weather information, 24-hour local news and stock quotes.

4.4 Complainant CIMCITIES has built the highest-ranked network of city sites in the United States reaching 29 percent of the total adult population and 41 percent of adult Internet users. The network consists of 24 local sites across the country in the top 50 United States markets. Complainant CIMCITIES' <accessatlanta.com> website is a part of this network of city sites.

4.5 On May 6, 2000, Respondent, under the name "Cupcake Patrol," registered the Domain Name <accesatlanta.com>.

5.1 Complainant contends that the domain name <accesatlanta.com> is a confusingly similar misspelling of Complainant CIMCITIES’s ACCESS ATLANTA ® mark and Complainant CIMCITIES's <accessatlanta.com> domain name, pursuant to the Policy paragraph 4(a)(i).

5.2 Complainant contends that Respondent has no rights or legitimate interest in the domain name <accesatlanta.com> pursuant to the Policy, paragraph 4(a)(ii).

5.3 Complainant contends that Respondent registered and used the domain name <accesatlanta.com> in bad faith in violation of the Policy, paragraph 4(a)(iii).

5.4 Respondent raises a preliminary matter by asking that the Administrative Panel rule that the jurisdiction and venue of any cause challenging a decision of this WIPO Panel is subject to the Courts of Justice located in Geneva, Switzerland.

5.5 The Respondent argues that it is clear in the instant case that its domain name(s) cannot be construed as identical or confusingly similar to those of the Complainant’s, nor can it be proven that these domain names dilute or tarnish the image of the Complainant’s mark.

5.6 The Respondent asserts a legitimate right protected by free speech, free enterprise, and property interest in the subject domain name.

5.7 The Respondent denies that it registered the domains in bad faith or intent.

5.8 The Panel has not received any other requests from Complainant or Respondent regarding further submissions, beyond the Amended Complaint, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

6.1 The Complaint was submitted on the basis of the provisions of a Registration Agreement in effect between the Respondent and Network Solutions, Inc. which incorporates by reference, the Uniform Domain Name Dispute Resolution Policy (the "Policy") in effect at the time of the dispute. The Policy requires that domain name registrants such as Respondent submit to a mandatory administrative proceeding regarding third-party allegations or abuse of domain name registration (Policy, paragraph 49(a)).

6.2 Such administrative proceedings are conducted by ICANN-approved dispute resolution service providers such as WIPO. The Policy provides an administrative means for resolving disputes concerning allegations of abuse of domain name registration, subject to referral of the dispute to a court of competent jurisdiction for independent resolution (Policy, paragraph 4(a)).

6.3 The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (See e.g. paragraph 2(a), Rules).

6.4 The Complainant has not, or sought to, reply to this issue raised by the Respondent.

6.5 This Panel does not believe that it is competent to rule on the question of what court or courts may accept a challenge of this decision. This is a matter solely for the jurisdiction of national courts.

6.6 Paragraph 4(i) of the Policy, as interpreted by this Panel limits remedies which it may order to those available to a Complainant, and in that case to those limited to requiring the cancellation of the Respondent’s domain name and the transfer of that domain name registration to the Complainant.

6.7 While the Panel agrees that in this matter United States law is applicable as both the Complainant and the Respondent are situated in the United States, it is not exclusive and there are essential differences between trademarks and domain names that must be borne in mind. There can be more than one registrant of the same trademark and its effect may be limited by the category of goods to which it relates, and the geographic boundaries of its territorial protection. There are no such limitations with domain names. Due to the latter’s technological limitations and boundless use, only one entity can be registered as a domain throughout the world. Thus, there is ample justification for different legal principles to apply to the Uniform Dispute Resolution Policy, its Rules, and the interpretation given to these by Administrative Panels operating thereunder. It is these Rules with which all applicants for the registration of domain names agree to be bound.

6.8 The universal nature of the Internet and its global impact from a legal perspective are too recent to accommodate harmonization, much less unification, of laws through treaties, model laws and the like. Unfortunately, there will always be some who seek to take unfair advantage of that which is difficult to regulate. It may well be that, in the future, some better mechanism may be agreed between sovereign powers to regulate the issuance and use of domain names. In the meantime, the Policy and Rules are the best we have. In any event, no one is precluded from seeking remedies available from national courts.

6.9 The domain name, <accesatlanta.com> is not identical to <accessatlanta.com>. However, it is argued on behalf of the Complainant that the domain name registered by the Respondent is confusingly similar due to the fact that only one letter has been dropped. What is meant by confusingly similar? Past Panel decisions under the Policy, with which this Panel agrees, held that, unlike trademark infringement or unfair competition cases, the test is confined to a consideration of the disputed domain name and the trademark. See AltaVista Company v. S.M.A., Inc. (WIPO Case No. D2000-0927); Gateway Inc. v. Pixelera.com, Inc. (formerly Gateway Media Productions, Inc.) (WIPO Case No. D2000-0109); and America Online, Inc. v. Anson Chan (WIPO Case No. D2001-0004).

6.10 The Respondent says that the domain name is not identical or confusingly similar to any trademark or service mark because a domain name is simply an Internet Protocol ("IP") address which is, in essence, a numerical code that can alternatively be used for the name to reach the same place on the Internet. Therefore, in the instant case, as in all cases of domain name misspellings, the Respondent purchased a particular numerical IP address that in no way can be confused with any of the Complainant’s domain IP addresses.

6.11 It is the view of this Panel that paragraph 4(c)(i) of the Policy addresses the domain name and not the IP number, which is a numerical code. Most users are not likely to have any idea of what their IP is, as it is inconsequential to them. What is important to users of the Internet, is the domain name. This is precisely why the Policy and the process with which we are engaged has been set up.

6.12 Another argument made by the Respondent is "[i]n legislating trademark infringement, [the United States] Congress has determined that is (sic) legislation will not apply to all commercial uses of a trademarked phrase in a domain name." (Footnote 1) Therefore, says the Respondent, the Complainant must show three elements, including "(1) a sufficiency of similarity of marks present to place in the minds of consumers the mental association, (2) that causes, (3) any actual harm to the senior mark’s economic value in identifying a given product. This threshold allows for a domain to be partly composed of a trademark phrase, yet no dilution of a trademarked phrase is caused by its use." The Respondent then gives the example of a trademarked term such as <hardrock.com> not being diluted by a domain entitled <therock.com>. The simple answer to this is that the example is not what the Respondent has been doing, in this case, and on a consistent basis, see Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party (WIPO Case No. D2000-0330), Diageo p.l.c. v. John Zuccarini (WIPO Case No. D2000-0541), Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini (WIPO Case No. D2000-0578), Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini (WIPO Case No. D2000-0928), Abercrombie & Fitch Stores, Inc. and A & F Trademark, Inc. v. John Zuccarini d/b/a Cupcake Patrol (WIPO Case No. D2000-1004), Saks & Company v. John Zuccarini (WIPO Case No. D2000-1285), and America Online, Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident (WIPO Case No. D2000-1495). In the Encyclopaedia Britannica case, there were four domain names at issue, two in Dow Jones, twenty-three in Yahoo, nine in Abercrombie & Fitch, ten in America Online, and only one in Saks & Company. There are others. The Respondent’s conduct has also been examined by a United States court in Shields v. Zuccarini, 54 U.S.P.Q. 2d 1166 (E.D.Pa. 2000). The Respondent has registered variations of other famous trademarks, trade names, and celebrity names such as "Disney", "Sony", "Blue Mountain Arts", "Hewlett-Packard", "National Car Rental", "Britney Spears", "Salma Hayek", "Oprah Winfrey", "Jennifer Lopez", "Star Wars", "Mayo Clinic", "Michael Jordan", "Ally McBeal", "Ricky Martin", "USA Today", "Taco Bell", "Austin Powers", "Microsoft", and "Playboy". Indeed, according to the opinion in the Shields case, the Respondent admitted that he had registered "thousands of other domain names, because [underlining added] they are confusingly similar to others' famous marks or personal names -- and thus are likely misspellings of these names -- in an effort to divert Internet traffic to his sites."

6.13 Finally, the Respondent refers, to specific language in the Complaint (paragraph 24) as "the best evidence in this case" of "the argument that Zuccarini’s domain names are confusing is flawed." He says:

In at least three paragraphs of the Complaint, the Complainant states that "The pop-up windows advertise products or services unrelated to CIMCITIES’ ACCESS ATLANTA website" (paragraph 24); "To the best of Complainant’s knowledge, at all times, Respondent’s <accesatlanta.com> website has included unrelated banner and pop-up advertisements for goods and services of third parties and at no time have any of the contents on the accessatlanta website referred to, provided links to, or highlighted anything that relates to Atlanta" (paragraph 27).

6.14 It should be noted that in attempting to quote from the Complaint the typist of the Response has misspelled <accesatlanta.com> as <accessatlanta.com>. Or perhaps it should be better said that the typist "confusingly" mis-typed <accessatlanta.com> for <accesatlanta.com> when, obviously, referring to the Respondent’s web site. The correct domain is used in the Complaint. It is just this form of confusion which the Respondent continually takes advantage of for his commercial well being.

6.15 In this case there is evidence specific to confusion on the part of visitors to the site. Complainant produced irate e-mails received by it from visitors to the Respondent’s <accesatlanta.com> web site who believed that Complainant was responsible for the barrage of pop-up advertisements therein. For example, one visitor wrote, "It has become a nightmare to access your web site. When I enter your URL address I get almost eleven instant links to sites I have no interest in. . . You used to be on my favorites but not anymore…And the worst is that I can not close the links they just keep popping up…I am out of here." There are others, found in Annex F to the Complaint.

6.16 Numerous Panels have concluded that the test of confusing similarity under the Policy, unlike trademark infringement or unfair competition cases, is confined to a consideration of the disputed name and the trademark. See AltaVista Company v. S.M.A., Inc. (WIPO Case No. D2000-0927); Gateway Inc. v. Pixelera.com, Inc. (formerly Gateway Media Productions, Inc.) (WIPO Case No. D2000-0109); and America Online, Inc. v. Anson Chan (WIPO Case No. D2001-0004). Also "essential" or "virtual" identity is sufficient for the purposes of the Policy. See The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co.Inc. (WIPO Case No. D2000-0113); Nokia Corp. v. Nokiagirls.com (WIPO Case No. D2000-0102); and America Online, Inc. v. Anson Chan (WIPO Case No. D2001-0004).

6.17 This Panel finds that pursuant to the Policy paragraph 4(c)(i), the domain name <accesatlanta.com> is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

6.18 Respondent is not a licensee of Complainant CIMCITIES nor is it authorized to use Complainant CIMCITIES’s ACCESS ATLANTA ® mark. Respondent registered the <accesatlanta.com> domain name without the authorization, knowledge or consent of Complainant CIMCITIES.

6.19 Respondent, Zuccarini, claims to have a legitimate right protected by free speech, free enterprise and property interest in the subject domain names. He claims to have become entitled to this right when he purchased the subject domain names through a legitimate registration process on the Internet. He also claims a legitimate business interest in these domain name(s). This, he says, while misunderstood by most, is explained by virtue of his business operation being in essence a proactive search engine portal for various advertising and freeware web site sponsors. Applied to this specific case, Respondent says he "receives no income or economic benefit whatsoever for any web traffic visiting the subject domains and therefore does not cipher[sic] any revenues from the Complainant". Instead, Respondent says he obtains legitimate business revenues from the various advertisements offered on his domains only after the visitor has decided to visit one of those websites, e.g. click-through. No visitor is forced to click into one of the advertiser’s sites, to register with or to purchase any product or service from these providers.

6.20 The Respondent says that practice of misspelling and "typo squatting" services a unique market on the Internet where a large number of "web surfers" specifically type misspelling of words and phrases in order to search for unusual information, advertising and products.

6.21 Complainant CIMCITIES’s trademark application for its ACCESS ATLANTA ® service mark, filed January 19, 1994, put Respondent on constructive notice of Complainant CIMCITIES’s rights in the mark before Respondent registered the domain name on May 11, 1999. Complainant also says that because Respondent has never made use of, nor preparations to use, the domain name in connection with a bona fide offering of goods or service before or after it became aware of the dispute, it cannot meet the requirements of Paragraph 4(c)(i) of the Policy for establishing rights or legitimate interests in the domain name, and that the Respondent is unable to show any of the factors set forth in the Policy’s Section 4(c) to establish rights or legitimate interests in the domain name. It follows that Respondent has no rights or legitimate interests in the domain name. The Policy allows three methods for Respondent to demonstrate that it has rights or legitimate interest in the domain names:

(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.

6.22 It has been held by other Panels that where there is no evidence that the Respondent has been commonly known by the domain name, this may create an inference under 4(c)(ii), and a use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and ‘Madonna.com’ (WIPO Case No.D2000-0847); and America Online, Inc. v. Anson Chan (WIPO Case No. D2001-0004).

6.23 While the onus of proof in establishing the absence of a legitimate right or interest, and registration and use in bad faith is on the Complainant under paragraph 4(a) of the Policy, the burden of proof is a shifting one. See John Swire & Sons Ltd. v. David Huang (WIPO Case No. D2000-1106).

6.24 This Panel finds that in this case the Complainant has shown sufficient, prima facie proof to shift the onus on to the Respondent, who has not satisfied his burden.

6.25 This Panel finds that in this case the Respondent has no rights or legitimate interests in respect of the domain name.

6.26 Confusion may also be a factor in determining bad faith. The Respondent referred to a number of United States judicial decisions, including Interstellar Starship Services v. Epix Incorporated, 125 F.Supp.2d 1269, 2001, WL 10885 (D.Or. 2001), and Hasbro v. Clue Computing, Inc., 66 F.Supp. 117 (D. Mass. 1999). From these, he argues that the material time of confusion should be after the web site has been entered, which is where the visitor learns for the first time of the commercial use to which the site is being put. Accordingly, he argues that there will be no confusion if the goods marketed are not in anyway related to those whose source is the holder of the mark. While this may well be so in judicial opinions which conduct a thorough traditional trademark analysis, it is not likely to be the case with regard to domain name disputes conducted under the Policy and Rules. Such cases have addressed a number of factors beyond the mere name in question when addressing the confusion factor in the context of bad faith. United States courts often identify eight factors to be taken into account when determining whether a defendant’s use of a plaintiff’s trademark creates a likelihood of confusion. Known as the "Sleekcraft factors", they include: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9^th Cir. 1979). It can be seen that the "Sleekcraft factors" apply to related goods and are not wholly applicable to ICANN domain name disputes.

6.27 Under the Policy, "confusion" is addressed only in the context of the domain name alone. This is done in paragraph 4(a)(i). The use made of the domain name, in the Policy, is only referred to in sub-paragraph(iii). In any event, the opinions in Interstellar Starship Services v. Epix Incorporated and Hasbro v. Clue Computing, Inc., as above, "recognize[d] a brand of confusion called ‘initial interest’ confusion although the consumer quickly becomes aware of the source’s actual identity and no purchase is made as a result of the confusion". This is the confusion of which the Respondent takes advantage, to his commercial benefit.

6.28 As noted above, the Respondent in this case has been carrying on similar conduct to that in question in this case for some length of time and with regard to a substantial number of domain name cases in which he has been found to have acted in bad faith under the Policy. This, in this Panel’s opinion, is evidence of bad faith. However, even without such evidence, this Panel would make such a finding on the basis that this Respondent’s conduct, as demonstrated in this case, is such as has been found to constitute bad faith in other cases, including National Football League Properties, Inc. and Chargers Football Company v. One Sex Entertainment Co., a/k/a chargergirls.net (WIPO Case No. D2000-0118); Autosales Inc. dba Summit Racing Equipment v. John Zuccarini d/b/a Cupcake Patrol (WIPO Case No. D2001-0230); Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party (WIPO Case No. D2000-0330); Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake City, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini (WIPO Case No. D2000-0777); Blackboard Inc. v. Cupcake Patrol (WIPO Case No. D2000-0811); Yahoo!, Inc. v. Cupcake Patrol and John Zuccarini (WIPO Case No. D2000-0928); Budget Rent a Car Corporation v. Cupcake City (WIPO Case No. D2000-1020); America Online, Inc. v. John Zuccarini, also known as Cupcake Message, Cupcake Messenger, The Cupcake Secret, Cupcake Patrol, Cupcake City, and The Cupcake Incident (WIPO Case No. D2000-1495).

6.29 In the Autosales Inc. case, supra, the Panel used language, which this Panel adopts as applicable:

Respondent is trading on the value established by Complainant in its marks to attract users who misspell or mistype Complainant's mark when entering the URL, which includes Complainant's, domain name. Clearly, Respondent is deriving economic benefit from this practice, either by attracting users to Respondent's website, where goods and services are offered, or by the receipt of compensation from the owners of other websites for delivering users to those sites. This constitutes bad faith registration and use as defined by the paragraph 4(b)(iv) of the Policy: "[T]he following circumstances …. shall be evidence of the registration and use of a domain name in bad faith . . . by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or a product or service on your website or location." While a user who arrives at the site may promptly conclude that it is not what he or she was originally looking for, Respondent has already succeeded in its purpose of using the service mark to attract the user with a view to commercial gain.

6.30 In light of the circumstances to which this Panel has referred, it finds that the domain name <accesatlanta.com> has been registered and is being used in bad faith.

7.1 This Panel denies the request of the Respondent to rule on the question of what court or courts may accept a challenge of this decision, on the ground that this Panel has no jurisdiction to make such an order.

7.2 For the reasons expressed above, this Panel finds that the Complainant has satisfied the applicable standard of proof, which is a preponderance of the evidence in relation to each of the three elements of paragraph 4(a) of the Policy.

7.3 The ruling of this Panel is that the registration of the domain name <accesatlanta.com> be transferred to the Complainant.

Cecil O.D. Branson
Sole Panelist

Dated: May 31, 2001

Footnotes:

1. The first italicized phrase has been added by the Panel, unlike the second one. (back to text)