WIPO Arbitration and Mediation Center

The Complainant is Saks & Company ("Saks"), a New York corporation which has its principal place of business at 750 Lakeshore Parkway, Birmingham, Alabama, United States.

The Respondent named in the Complaint is John Zuccarini of 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania, United States.

The disputed domain name is <saksfithavenue.com>. It is registered with Core Internet Council of Registrars, Geneva, Switzerland.

Saks’s original Complaint was received by the World Intellectual Property Organization Arbitration and Mediation Center ("the Center") on September 28, 2000. In order to correct an error with respect to the registrar of the disputed domain name in the original Complaint, Saks filed an amended Complaint, which was received by the Center on October 9, 2000.

On October 26, 2000, the Center obtained from the Core Internet Council of Registrars a confirmation that it is the Registrar of the disputed domain name; that the current registrant of this domain name is John Zuccarini of 957 Bristol Pike, Suite D-6, Andalusia, Pennsylvania, and that the status of the registration is "production."

After confirming that the Complaint met all requisite formal requirements, on November 9, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent by post/courier, facsimile, and electronic mail. On November 30, 2000, having received no response from the Respondent, the Center sent to both parties, by email, a Notification of Respondent Default.

On December 8, 2000, the Center notified both parties, by email, of the appointment of the undersigned as the single panelist for this case.

Saks alleges and has provided evidence of the following facts:

Saks is the owner and holder of numerous registrations to, the "Saks Fifth Avenue" trademark, which for decades has been used in connection with the sale of a wide range of department store goods and services. Through one of its subsidiaries, it operates an internet website for conducting electronic commerce, with the domain name <saksfifthavenue.com>.

Saks further alleges that the Respondent has no rights or legitimate interest in the contested domain name and has registered and used it in bad faith. However, Saks introduced no evidence about the Respondent or its website. (Footnote 1)

Saks contends that the disputed domain name, <saksfithavenue.com>, is an obvious imitation of its "Saks Fifth Avenue" mark and is designed to attract and take advantage of Saks Fifth Avenue actual and potential customers and of Saks’s goodwill and reputation. Saks seeks an order that the domain name <saksfithavenue.com> be transferred to it.

Because no response has been submitted by or on behalf of the Respondent,

its contentions are unknown.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Resolution Policy (" the Policy") places on the Complainant the burden of proving each of the following three elements: that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; that the Respondent has no rights or legitimate interests in respect of the domain name; and that the disputed domain name was registered and is being used in bad faith.

The first of these elements presents no difficulty in the present case. Saks has demonstrated its rights in the mark "Saks Fifth Avenue" and the disputed domain name, <saksfithavenue.com>, if not exactly identical to that mark, is certainly highly confusingly similar. The remaining two elements, however, present a serious hurdle for Saks.

The problem stems from Saks’s failure to adduce any concrete evidence about the Respondent and its website, which is exacerbated by the Respondent’s failure to respond. The resulting evidentiary gap presents the Panelist with a conundrum. On the one hand, under Rule 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), the panel in a UDRP proceeding must "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." The statements and documents submitted in this case simply do not permit the Panelist to make any findings regarding either the Respondent’s rights or interests, if any, in respect of the contested domain name or the state of mind with which the Respondent registered and has used that domain name. The Panelist does agree with Saks that the disputed domain name appears on its face to be a transparent imitation of Saks’s mark and, taking judicial notice of the fact that the mark is famous, is willing to infer that the imitation is knowing and deliberate. However, while such imitation certainly emits an aroma of illegitimacy, to conclude, as Saks urges, that the imitation in and of itself is sufficient to support findings in its favor on the second and third elements of its case would render those elements redundant surplusage - simply by proving the first elements, a Complainant could also be proving the second and third.

On the other hand, the Panelist is mindful of the fact that the Respondent has failed to respond, in spite of the fact that the Center notified it of the Complaint and its rights and obligations by Federal Express, fax, and email, using the contact information the Respondent provided with its registration of the domain name in question. In another legal setting, particularly in court, such default would require entry of a default judgment. In UDRP proceedings, however, judgment by default is not recognized. By the combined operation of Paragraphs 5(e) and 14(b) of the Rules, a Respondent’s failure to respond does not automatically subject it to an adverse decision; rather, the panel must "decide the dispute based on the complaint," and may only draw such inferences from the Respondent’s default "as it considers appropriate." Thus, the analysis returns to inferences and, once again, while failure to respond undoubtedly reflects very badly on the Respondent, the Panelist cannot infer from it all the facts necessary for a finding for Saks on the second and third elements. Given the absence of any other evidence in the record with which the failure to respond can be combined, to use failure to respond as the sole platform for adverse findings on the Respondent’s interest in and use of the disputed domain name would amount to entering default judgment under the guise of drawing inferences.

For these reasons, the Panelist reluctantly (Footnote 2) concludes that Saks has failed to discharge its burden of proof under Paragraph 4(a) of the Policy.

Having considered this case in accordance with Paragraph 15 of the Rules, the Panelist finds that the Complainant has failed to prove two essential elements of its case under Paragraph 4(a) of Policy. Therefore, its request that the domain name <saksfithavenue.com> be transferred from the Respondent to the Complainant is DENIED.

Natasha C. Lisman
Sole Panelist

Dated: January 12, 2001

Footnotes:

1. Such as a description of the content, if any, of the website, along the lines that can be found in Shields v. Zuccarini, 89 F. Supp.2d 634 (E.D. Pa. 2000); Electronic Boutique Holdings Corp. v. Zuccarini, 2000 WL 1622760.

2. Reluctantly because the Panelist is aware of the fact that the Respondent is in all likelihood the same John Zuccarini who is the subject of a

number of judicial and UDRP proceedings initiated by other complainants, has been described as "a notorious cybersquatter," and is reported to have admitted to having registered thousands of domain names, most of them misspellings of famous names. However, if reported decisions from these cases contain any factual findings that, under the doctrine of collateral estoppel, could properly be considered in this case, they were not submitted by Saks as part of its Complaint and, consequently, cannot be considered by the Panelist.