1. The Parties

The Complainant is Classmates Online, Inc., a Washington (USA) corporation with its principal place of business in Renton, Washington, United States of America, represented by William A. Drew of the law firm Elliott, Ostrander & Preston, PC, Portland, Oregon, United States of America.

Complainant identified John Zuccarini, "individually and [doing business as] RaveClub Berlin" as the Respondent.  The registrar shows that John Zuccarini is the owner of <classmats.com> (with Cupcake Patrol being listed as the organization), and RaveClub Berlin is the owner of <classmat.com>.  In the Response, RaveClub Berlin and Cupcake Patrol claim to be the registrants of the Disputed Domain Names and have come forward as the Respondents.  RaveClub Berlin and Cupcake Patrol appear to be unincorporated organizations controlled by Mr. Zuccarini.  In correspondence with the WIPO Arbitration and Mediation Center (the “Center”), Mr. Zuccarini asserted that his address is c/o Wilderness Quest of Nova Scotia Corp., San Jose, Costa Rica.  For purposes of this decision, the term Respondents refers collectively to John Zuccarini, RaveClub Berlin, and Cupcake Patrol.  Respondents are represented in this proceeding by Ari Goldberger of ESQwire.com Law Firm, Cherry Hill, New Jersey, United States of America. 

2. Domain Names and Registrar

The domain names at issue (Disputed Domain Names) are:

<classmat.com> and
<classmats.com>.

According to the "whois" database, the Disputed Domain Names were registered on June 5, 2001, and January 27, 2000, respectively.

The registrar is Computer Service Langenbach GmbH, doing business as joker.com, Düsseldorf, Germany.

3. Procedural History and Jurisdiction

The Center received the Complaint on July 9, 2002 (electronic copy), and July 10, 2002 (hard copy).  The Center verified that the Complaint satisfied the formal requirement of the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).  Complainant made the required payment to the Center. 

On July 11, 2002, the Center transmitted via email to the Registrar a request for registrar verification in connection with this case.  On July 12, 2002, the Registrar confirmed from the whois database the ownership stated above and the contact information.  There was additional correspondence between the Center and the Registrar on July 19, 2002, concerning Respondents' addresses.

Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, on July 12, 2002, the Center transmitted to the Respondent, via post/courier and e-mail, a Notification of Complaint and Commencement of the Administrative Proceeding.  The formal date of the commencement of this administrative proceeding was originally July 12, 2002.

The Center received a Response from Respondent on August 2, 2002 (email), and on August 5, 2002 (hardcopy). 

Complainant had requested that the matter be decided by a single-member panel.  Respondents requested a decision by a three-member panel.  See Policy, paragraph 5(b)(iv).  The Center invited Richard G. Lyon (Presiding Panelist), Cecil O.D. Branson, Q.C., and David E. Sorkin to serve as panelists.  Each of the panelists properly verified his independence.

On August 20, 2002, the Center notified the parties of the panel members' names and set a projected decision date of September 3, 2002.  After receiving the parties' requests to submit additional materials (see second following paragraph), the Panel notified the Center, which in turn notified the parties, that the Panel extended its projected decision date to September 10, 2002.

We find that the Panel was properly established, that the Respondents received timely notice of the Complaint, and that the Panel has jurisdiction over this dispute by reason of the Policy.^[1]

On August 23, 2002, by electronic mail sent simultaneously to the Center, the Panel members, Respondents, and Respondents' counsel, Respondent's counsel submitted two additional annexes to the Complaint and a "Reply Memorandum" together with a request under Rule 12 that the Panel consider these materials.  Two days later Respondents submitted to the Center their Petition to Consider Respondents Reply to Complainant's Reply. 

On September 6, 2002, the Panel issued its Procedural Order No. 1, annexed as a Schedule to this decision.^[2]  In that Order:

(a) We denied both requests to submit additional information.  Submissions beyond the Complaint and Response are discretionary with the Panel under Rule 12.  Panels ordinarily deny leave to submit materials beyond the complaint and response, as inconsistent with the intent of the Policy that a case be decided promptly.  We found nothing in Complainant's proposed supplemental materials that could not have been submitted with the Complaint or that address arguments that Complainant could not reasonably have anticipated.  Each side's proposed additional argument consisted entirely of repeating arguments that it made in its initial pleading.  In deciding this case we take no account of such proposed supplemental materials.  We here note our strong condemnation of Complainant's sending its request to submit additional material directly to the Panel members, an inexcusable violation of Rule 8.  That alone is reason to deny Complainant's request to submit, even if otherwise there were a reason under the Rules or the circumstances to allow it.

(b) We requested that Complainant provide additional evidence of the number of subscribers to its website, and such other matters as Complainant may deem relevant to the name recognition associated with the word classmates and worldwide knowledge of that website, in each case as of January 27, 2000, the date Respondents registered the first of the Disputed Domain Names. 

(c) We authorized Respondent to submit evidence it deemed relevant in reply to any additional evidence that Complainant submitted following the Procedural Order.

Complainant submitted an affidavit with exhibits (discussed in Sections 4, 5, and 7 below).  Respondents submitted nothing further.

Complainant's supplemental submission provided considerable detail supporting Complainant's initial affidavit evidence, quoted in Section 4, of its website's popularity among Internet users at the time Respondents registered the Disputed Domain Names.  Some of this material should have been included initially in support of the assertions in that affidavit.  In order that our Procedural Order not be misunderstood as precedent for future panels' increased use of their authority under Rule 12, we caution future complainants to take care to provide competent and sufficient evidence with their complaints.

4. Factual Background

Complainant owns the well-known website “www.classmates.com”, which it has operated since 1995 (Complaint, Annex 4).  Complainant uses this website for a business, operated entirely electronically, that permits high school and college classmates to register with the site and by this means locate and communicate with their classmates.  According the Complaint, supported by the sworn statement of Complainant's Intellectual Property Manager,

Classmates[.com] is one of the 10 largest advertisers on the Internet.  Its advertising reaches 60% of the U.S. Internet population each week.  For the past 20 months [from July 2002], it has achieved approximately seven billion ad impressions per month on 43 different websites.  For the past nine months, Classmates has consistently achieved a 50% unaided brand awareness rating, established by outside research companies.  (Complaint, ¶12 and Annexes 9 and 10)

Complainant's supplemental evidence demonstrated, inter alia, that in December 1999 and January 2000, when it registered the first of its service marks and prior to Respondents' registration of the first of the Disputed Domain Names, Classmates.com had 3.5 million registered users, attracted over 2 million hits per day, and gained an average of 13,744 new registrants and 352 paid subscribers per day^[3] (McGuane affidavit, paragraphs 6-9 and Exhibits 3-6).  NetRatings "ad relevance" charts indicate that Complainant was one of the heaviest advertisers on the Internet during that time, and Nielsen/NetRatings ranked its website 111 (January 2000) and 115 (December 1999) among all websites in number of hits, at times during those months more frequently visited than “google.com” or “nytimes.com” (id. paragraphs11-13, 15-16 and Exhibit 8).  .

Respondents have not disputed this evidence, although as noted in the following section they do dispute its relevance.  Respondents similarly do not deny having knowledge of Complainant's site prior to registering the Disputed Domain Names.  Given the renown of the “classmates.com” site, they could not credibly do so.

Complainant holds a service mark for "Classmates.com" that is registered with the United States Patent and Trademark Office (USPTO).  Complainant also has pending before the USPTO the five additional service mark applications, each of which incorporates the word classmates.  Complainant alleges (Complaint, paragraph 12(1)) that it has used the service mark classmates since as early as 1993.

Each Disputed Domain Name diverts a user to a pornography website entitled <Hanky- Panky-College.com> that is registered to a company in Amsterdam, Netherlands.  Once diverted, the user is "mousetrapped" -- unable to exit without clicking on a succession of advertisements. 

5. Parties' Contentions

The Complainant's contentions may be summarized as follows:

a) Complainant has rights to "Classmates.com" as a registered service mark, and common law rights to other variants of the word classmates by virtue of its use of these marks on its website and pending trademark registrations.  The success of Complainant's business has made Complainant's marks famous.  The Disputed Domain Names are confusingly similar to Complainant's "family" of service marks. 

b) Respondents have no right or legitimate interest in the Disputed Domain Names.  Respondents have never been known by the word classmates, and that word bears no relation to the pornography sites operated by Respondents.

c) Respondents are using the Disputed Domain Names in bad faith by typosquatting on Complainant's well-known marks and site.  By so doing, Respondents are intentionally attempting to attract Internet users to their websites for commercial gain by creating confusion based on common misspellings of Complainant's mark. 

d) Respondents have been the subject of numerous complaints under the Policy, lawsuits for violation of the Anticybersquatting Consumer Protective Act of 1999, and an action by the United States Federal Trade Commission, as a result of their repeated registering of domain names that are confusingly similar to famous or well known domain names or trademarks.

The Respondents' contentions may be summarized as follows:

a) Complainant has no enforceable service marks, in either its registered mark or the unregistered marks now the subject of pending USPTO applications, because (a) all are variants of a common English word and thus not entitled to service mark protection, and (b) the pending applications have been "suspended" or subject to further office action by the USPTO.  Complainant has no enforceable rights in its registered mark, because it is generic ("describes the essential feature of Complainant's service") and is merely its address and thus not entitled to service mark protection under USPTO Guidelines.^[4]  Respondents identify eighteen pending United States trademark applications by parties unaffiliated with Complainant, and a Google® search yielding 671,000 web pages, in response to a search for the word classmates, in support of their assertion that classmates is generic and consequent argument that the Panel should accord Complainant no rights in the word.

b) Respondents have a right and legitimate interest in the Disputed Domain Names, because it is legitimate to register a domain name based on the misspelling of a generic common word.

c) Respondents did not act in bad faith – they simply registered misspellings of a common word.  Respondents did not register the Disputed Domain Names with the intent to sell them to the Complainant, to disrupt its business, to prevent it from registering its mark, or to confuse customers.  Complainant has not shown that Respondents registered the Disputed Domain Names expressly to disrupt Complainant's business, and such a showing is required by the Policy.

d) Respondents' conduct in other matters and the nature of their business are irrelevant to this proceeding.  Complainant is required to establish its case under the Policy based on the facts of this case, and has failed to do so.

6. Relevant Standards

The Complainant must prove the elements set out in paragraph 4(a) of the Policy.  These elements are as follows:

(i) Respondents' Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondents have no rights or legitimate interests in respect to the Disputed Domain Names; and

(iii) Respondents' Disputed Domain Names have been registered and are being used in bad faith.

Complainant bears the burden of proof on each of these elements. 

7. Discussion and Findings

Paragraph 4(a)(i) - Confusing Similarity with a Mark in which Complainant Has Rights

Respondent has admitted that the Disputed Domain Names are similar (indeed, intentionally similar) to Complainant's marks.  The issue we must decide, on the evidence before the Panel, is whether Complainant has "rights" in its marks that are sufficient to invoke the Policy.

In order for Respondent to succeed on this point the Panel must set aside, or disallow rights under, a mark that the USPTO has allowed.  A few arbitration panels that have taken this step have provided language that gives Respondents' argument surface credence.  The best case for Respondents is American Airlines Inc. v. WebWide Internet Communication GmbH, Case No. FA 0204000112518 (NAF, June 13, 2002) (STOP proceeding), in which the panel stated that "the jurisdiction provided by Rule 15 is adequate to permit an evaluation of such a simple mark as the mark 'American'" and held that the complainant had "no legitimate interest" in the mark despite its USPTO registration in the same class as respondent's proposed use.  Other panels have stated or implied that a UDRP panel is empowered to find that a respondent had overcome the presumption of validity that obtains from a valid registration.^[5] 

Nearly all of these cases from which Respondents cite language favorable to their cause are however distinguishable on their facts, ^[6] or because the panel found that the complainant had failed to prove the elements of paragraphs 4(a)(ii) or 4(a)(iii) of the Policy. ^[7]  There is authority that a panel absolutely lacks authority to ignore a valid USPTO registration.  Christie v. Porcaro, WIPO Case No.D2001-0653; Hola S. A. v. Idealab, WIPO Case No.D2002-0089 ("It is not for the Panel to decide whether registration of the marks should or should not have been granted.  The holding of a registered mark is sufficient for the purposes of the Policy.  Any claim that the registration should not have been granted or should be revoked falls to be decided by the Courts of the relevant country."). ^[8]  Even when finding no enforceable rights in a mark, panels in several of the cases cited by Respondents have been careful to point out that they are not invalidating USPTO action.  See, e.g., Interactive Television Corp. v. Noname.com,WIPO Case No. D2000-0358; Dial-a-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764. 

While a descriptive term limits considerably a mark owner's ability to prevent others from comparable use of the term in a domain name, and the scope of its mark generally, it does not ipso facto render the mark unenforceable or unavailable for use under the Policy.  Given our narrowly circumscribed jurisdiction and the limited record available to us, we believe we may deny Complainant all enforceable rights, expressly including the ability to invoke the Policy, in a duly registered mark, if ever, only for the most compelling legal reasons or upon a factual showing far more convincing than the one offered by Respondents in this case.  Here Complainant has demonstrated, on uncontested evidence, widespread recognition (and identification with Complainant) by United States Internet users of its registered mark, similar marks for which USPTO applications are pending,^[9] and a heavily trafficked website.  Such recognition and identification were substantial at the time Respondents registered the Disputed Domain Names.   

The Panel finds that Complainant has rights in its registered classmates mark, and has satisfied paragraph 4(a)(i) of the Policy. 

Paragraph 4(a)(ii) -- Legitimate Interest

Respondent's sole claim of legitimate interest in the Disputed Domain Names, that it is legitimate to register a domain name based on the misspelling of a generic common word, falls with their failure on their argument that Complainant has no rights in its marks.  Respondents do not deny awareness, at the time of registration, of Complainant's marks or the popularity of its website; they base their claim of legitimate registration and use on the asserted lack of efficacy of the marks.  Respondents meet none of the safe harbors in paragraph 4(a)(ii) of the Policy.  They neither were known by nor operated any business using the Disputed Domain Names prior to Complainant's establishment of rights in the marks.  Respondents' use of the Disputed Domain Names is commercial, and typosquatting and mousetrapping are compelling evidence of illegitimate use.  E.g., Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423 (June 30, 2002).

Respondents offer no proof of any of the circumstances that have prevented other owners of marks with generic terms from proving a respondent's lack of legitimate interest, such as fair use prior to issuance of the mark,^[10] noncommercial use,^[11] or commercial use in legitimate fields unrelated to the mark owner's business but described by the common word.^[12]

Complainant has satisfied its burden on this issue.

Paragraph 4(a)(iii) -- Bad Faith

An objective determination of good faith registration and use may also limit a mark owner's right to prevent incorporation of a descriptive or generic word in another's domain name.^[13]  As with disproving a respondent's legitimate interest, the use of a descriptive word in the complainant's mark perforce makes it more difficult for the mark owner to carry its burden of persuasion to demonstrate bad faith. 

Complainant has met that burden in this case.  Typosquatting is presumptive -- well nigh conclusive -- evidence of registration and use in bad faith.^[14]  Respondents have offered no evidence in rebuttal; once again their denial of bad faith rests on either their own presumption that Complainant lacks rights in its marks or their argument that notwithstanding Complainant's marks Respondents may use a misspelling of a common word for a website whose business is unrelated to that word.  Respondents' use of the Disputed Domain Names is for commercial purposes, and by any objective standard Respondents' selection of the Disputed Domain Names was intended to attract Complainant's many users to those sites.  As a rote recital of the legal conclusions he seeks, Respondent Zuccarini's affidavit of the reasons for selecting these names, set out in the margin,^[15] adds nothing of evidentiary value. 

8. Decision

For the foregoing reasons, we find in favor of the Complainant regarding the Disputed Domain Names.  The Panel orders that the Disputed Domain Names be transferred to the Complainant.

1. The Panel denies Complainant's request, dated August 23, 2002, for leave to submit additional information.

2. The Panel denies Respondents' request, dated August 25, 2002, for leave to file additional information.

3. Pursuant to Rule 12, the Panel requests that Complainant submit evidence of (a) the number of subscribers to its <www.classmates.com> website, and (b) such other matters as Complainant may deem relevant to the name recognition associated with the word classmates and worldwide knowledge of that website, in each case as of January 27, 2000, the date Respondents registered the first of the domain names at issue in this proceeding.  The Panel wishes such evidence to be in a fuller form than asserted in paragraph 3 of Annex 9 to the Complaint and to include copies of any reports and other material documentation.

4. Complainant shall make its submission to the Center, with a copy to Respondents' counsel, in electronic form no later than September 11, 2002.  Respondents shall submit to the Center, with a copy to Complainant's counsel, in electronic form any evidence they consider relevant in response no later than September 16, 2002. 

5. The Panel expressly requests that the parties submit only evidentiary matter, without additional argument of counsel.

6. Any material other than that expressly requested by the Panel will be disregarded.  Inclusion in a submission of material other than that expressly requested by the Panel will be grounds for the Panel to disallow the entire submission.

7. The projected decision date is extended to September 25, 2002.

FOR THE PANEL:

^[1] Although in his correspondence with the Center Respondent Zuccarini threatens the Center and the World Intellectual Property Organization with a lawsuit, in part "[for] denying me a fair and proper hearing," neither he in his correspondence nor his counsel in the Response contests the Panel's jurisdiction under the Policy.

^[2] In response to Complainant's request, the Center extended the deadlines for submissions to September 13, 2002,  for Complainant and September 18, 2002, for Respondent, with a projected decision date of September 27, 2002.

^[3] A "registered user," as distinguished from a "visitor," actually submits information into Complainant's online database.  A "paid member" pays a fee to use the database to contact his or her classmates.

^[4] "If the proposed mark is used in a way that would be perceived as nothing more than an address at which the applicant can be contacted, registration must be refused. Examples of a domain name used only as an Internet address include a domain name used in close proximity to language referring to the domain name as an address, or a domain name displayed merely as part of the information on how to contact the applicant." United States Patent & Trademark Office, Examination Guide No. 2-99: Marks Composed, in Whole or in Part, of Domain Names (1999). 

^[5]Interactive Television Corp. v. Noname.com (WIPO Case No. D2000-0358); Dial-a-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764; Successful Money Management Seminars Inc. v. Direct Mail Express, Case No FA0101000096457 (NAF 2001); Knight-Ridder, Inc. v. John Zuccarini Cupcake Patrol, Case No. FA101000096551 (NAF 2001). 

^[6] The complainant held no registered mark in EMONEY Group, Inc. v. Eom, Sang Sik, Case No. FA0012000096337 (NAF 2001);Canned Foods, Inc. v. Ult.Search Inc., Case No. FA0012000096320 (NAF 2001); Dial-a-Mattress Operating Corp. v. Ultimate Search, WIPO Case No. D2001-0764; Business Architecture Group, Inc. v. Reflex Publishing, Case No. FA0104000007051 (NAF 2001); Perricone v. Hirst, Case No. FA0007000095104 (NAF 2000) (intent to use application only); McCune v. BuyDomains.com, Case No. AF-0854 (eResolution 2001); Knight-Ridder, Inc. v. John Zuccarini Cupcake Patrol, supra (as to "herald" mark).

^[7]Perricone v. Hirst, supra (no bad faith); General Machine Products Co., Inc. v. Prime Domains, Case No. FA0001000092531 (NAF) (no proof of lack of legitimate interest); Ultrafem, Inc. v. Royal, Case No. FA0106000097682 (NAF 2001) (bona fide use by respondent); Energy Source Inc. v. Your Energy Source, Case No. FA0101000096364 (NAF 2001) (no bad faith; legitimate use); SOCCERPLEX, Inc. v. NBA Inc., Case No. FA0003000094361 (NAF 2000) (no bad faith); Car Toys, Inc. v. Informa Unlimited, Inc., Case No. FA0002000093682 (NAF 2002) (no showing of lack of legitimate use or bad faith); CRS Technology Corp. v. Condenet, Inc., Case No FA0002000093547 (NAF 2000) (no confusion; no bad faith); Successful Money Management Seminars Inc. v. Direct Mail Express, supra (legitimate use; no bad faith).

^[8] Respondents are well aware of this line of cases.  See, e.g.,  Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

^[9] Since the registered mark suffices for purposes of paragraph 4(a)(i), there is no need to decide – and we expressly refrain from deciding -- whether Complainant's other marks, for which service mark applications are pending in the PTO, generate rights sufficient to invoke the Policy or satisfy paragraph 4(a)(i).

^[10]E.g., EMONEY Group, Inc. v. Eom, Sang Sik, supra note 7.

^[11]E.g., Primedia Special Interest Publications, Inc. v. Treadway,WIPO Case No. D2000-0752.

^[12]E.g., PRL USA Holdings, Inc. v. Collazo, WIPO Case No. D2002-0108.

^[13]See, e.g., cases cited at note 7, supra.

^[14]E.g., Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423 (June 30, 2002); Go Daddy Software, Inc. v. Hadani, WIPO Case No. D2002-0568

^[15] The affidavit reads in its entirety:

1. I registered the [Disputed Domain Names] because they are both misspellings of the common dictionary word CLASSMATE. 

2. I did not register the [Disputed Domain Names] for the purpose of selling them to Complainant or any party, to disrupt Complainant's business, to prevent it from incorporating its trademark, or to confuse consumers seeking to find Complainant's web site."