WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Primedia Speciality Group Inc. v. John Zuccarini
Case No. D2002-1017
1. The Parties
Complainant Primedia Speciality Group Inc. (Primedia) is a corporation with an address at New York, NY 10151, United States of America.
Respondent is John Zuccarini (Zuccarini), an individual having an address at Andalusia, PA 19020, United States of America.
2. Domain Name and Registrar
The domain name in issue is <teenmagizine.com>.
The registrar is CSL Computer Service Langenbach GmbH dba Joker.com (CSL GmbH).
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received the complaint in this proceeding on October 31, 2002, via email, and on November 5, 2002, in hard copy form, together with the required fee.
On November 5, 2002, the Center received via email CSL GmbH’s confirmation inter alia that (1) the Uniform Domain Name Dispute Resolution Policy (the "Policy") is applicable to the domain name, and (2) Zuccarini is the owner, administrative contact, technical contact and billing contact. CSL GmbH’s records show the domain name was registered October 19, 1999.
The Center verified that the complaint satisfies the formal requirements 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").
On November 6, 2002, the Center transmitted to the parties Notification of Complaint and Commencement of Administrative Proceeding, together with copy of complaint. The Center advised the parties that the formal date of the commencement of this administrative proceeding is November 6, 2002, and the last day for sending Zuccarini’s response to Primedia and to the Center is November 26, 2002.
On November 25, 2002, in response to Zuccarini’s November 22, 2002 request to which Primedia did not object, the Center extended to December 16, 2002, the due date for Zuccarini’s response.
On December 17, 2002, the Center received Zuccarini’s response, together with Zuccarini’s election to have the proceeding decided by a three-member panel.
On December 23, 2002, the Center advised the parties that Messrs. Alan L. Limbury and Richard W. Page had been appointed as Panelists. On January 8, 2003, the Center advised the parties that, in addition to Messrs. Limbury and Page, Mr. David Plant had been appointed Presiding Panelist, and absent exceptional circumstances, the panel is required to forward its decision to the Center by January 22, 2003.
4. Factual Background; Parties’ Contentions
a. The Trademarks
The complaint is based on the trademark TEEN.
TEEN is the subject of three United States registrations (Exhibit A to the complaint), namely:
‘TEEN - Reg. No. 789, 364 - May 11, 1965 - First use November 1956
Teen - Reg. No. 2,173, 130 - July 14, 1998 - First use July 1997
TEEN - Reg. No. 2,173,134 - July 14, 1998 - First use July 1997.
The 1956 ‘Teen registration is for a periodical magazine. The 1997 registrations are for periodical magazines of interest to teenagers. Primedia avers it is the sole and exclusive owner of the registrations.
Primedia avers that it and its predecessors have published TEEN magazine since 1957. TEEN magazine is a "wholesome" magazine targeted to junior high and high school female readers between the ages of 12 and 17.
Primedia asserts it has spent tens of millions of dollars promoting the magazine. It has been read by "millions upon millions" of readers. Also, Primedia avers it has "extensively licensed the TEEN Magazine mark" for use on jewelry, keychains, hair accessories, fiction books, clothing, etc.
Primedia avers that since 1998, Primedia and its predecessors have published an online magazine, viz. TEEN mag.com, accessible on the Internet at "www.teenmag.com". The site is designed for teenage girls between 12 and 17, "with an emphasis on guidance in areas including social interaction, fashion, beauty, relationships and celebrity information."
b. The Complaint Re Respondent’s Activities
Primedia contends the domain in issue is identical or confusingly similar to Primedia’s registered mark TEEN. Primedia cites decisions in which "deliberate misspellings" of trademarked names have been deemed confusingly similar under the Policy, including Primedia v. Zuccarini, WIPO Case No. D2000-1186 (November 20, 2000). Primedia points to the panel’s reference in that decision to Zuccarini’s admission in a United States District Court that he "registered thousands of Internet domain names only because they were confusingly similar to others’ famous marks or personal names."
Primedia asserts Zuccarini has no rights or legitimate interests in the domain name in issue. Primedia avers –
(1) Zuccarini does not own a mark in any way related to the TEEN magazine marks,
(2) TEEN magazine is not Zuccarini’s personal name, and Zuccarini does not engage in any business under the TEEN magazine name,
(3) Zuccarini does not use the domain name in issue in connection with any bona fide offering of goods or services; rather Zuccarini uses the domain name to "misleadingly divert consumers to a sexually oriented adult content website at "www.hanky-panky-college.com" citing Exhibit D to the complaint, and
(4) Zuccarini is not a licensee of Primedia and has never been authorized to use the mark "TEEN Magazine" or to register the domain name.
Primedia contends the domain name in issue has been registered and used in bad faith. Primedia avers Zuccarini registered the domain name "with knowledge of Complainant’s TEEN Magazine, precisely because it is identical or confusingly similar to Complainant’s trademark, in order to divert Internet users to his pornographic web site for commercial gain." Primedia notes Zuccarini is a "notorious cybersquatter who has already been found to have registered a huge number of domain names in bad faith." Primedia cites Shields v. Zuccarini, 254 F.3d 476, 483 (3d Cir. 2001) (e.g. "Zuccarini admits that he registers domain names ... because they are likely misspellings of famous marks or personal names"), Electronique Boutique HoldingCorp. v. Zuccarini, 2000 U.S.Dist. LEXIS 15719 (ED Pa Oct. 30. 2000 (e.g. Zuccarini "has victimized a wide variety of people and entities"), and Federal Trade Commission v. Zuccarini, 2002 U.S.Dist. LEXIS 13324 (ED Pa April 10, 2002). In addition, Primedia cites more than 20 WIPO decisions involving Zuccarini and misspelled trademarks.
Primedia avers it will suffer "substantial damage" as a result of the linkage of the confusingly similar domain name in issue to a pornographic website. Primedia cites eight WIPO decisions to the effect that association of a domain name with a pornographic website is evidence of bad faith.
Primedia requests that the domain name be transferred to Primedia.
c. The Response
Zuccarini asserts there is "absolutely no basis" to entitle Primedia to the domain name in issue, and the complaint should be dismissed.
Zuccarini argues Primedia only has trademarks for the word TEEN, and Primedia alleges no trademark rights for "Teen Magazine". Zuccarini concludes Primedia’s mark is neither identical nor confusingly similar to the domain name in issue. Zuccarini claims Primedia uses the term TEEN in "its most generic and descriptive sense." Zuccarini states there are numerous third party generic uses of "teen magazine" on the Internet (i.e. more than 1.1 million hits from a Google.com search on "teen magazine", and more than 46 million for "teen") – assertedly conclusive evidence that "teen magazine" is a generic term for a "teen magazine." Thus, Zuccarini asserts Primedia has no enforceable rights to the term "teen magazine."
Zuccarini agrees decisions have gone against Zuccarini in connection with misspelled trademarks. Zuccarini distinguishes those cases from this case as "misspelling of what is principally a common descriptive term, not of an inherently distinctive trademark." Zuccarini refers to a ruling in his favor re the misspelling of "the common term ‘herald’," Knight-Ridder, Inc. v. John Zuccarini a/k/a Cupcake Patrol, No. 96551 (NAF March 6, 2001).
Zuccarini claims he has rights to the domain name in dispute because "teenmagizine.com is composed of a descriptive term incorporating only the common dictionary word ‘teen’ and a misspelling of the word magazine." Zuccarini asserts it is well established under the Policy that "anyone is entitled to register a common word, and that the first to register such word has a legitimate interest in it." Zuccarini asserts the result should be no different for a misspelling of a common term.
Zuccarini contends there is no evidence of registration or use in bad faith. Zuccarini asserts Primedia must prove either (1) the disputed domain name was registered specifically to sell to Primedia or (2) the value of the disputed domain name derives exclusively from the fame of Primedia’s mark. Zuccarini says there is no evidence to support either basis for finding bad faith registration and use. Zuccarini claims he registered the domain name because it is the misspelling of a common term ("teen magazine").
(ii) Identity or Confusing Similarity
Zuccarini iterates that Primedia has no trademark rights in the generic term "Teen Magazine". Zuccarini asserts the complaint must be dismissed because Primedia cannot demonstrate a "protectible legal interest in the term" [i.e. Teen Magazine], citing various authorities. Accordingly, Zuccarini asserts the complaint must be dismissed.
Zuccarini iterates that the mark "Teen" and the domain name in dispute are neither identical nor confusingly similar, asserting in light of the third party uses "there is no reason why consumers would be likely to confuse this descriptive domain name with Complainant’s single word mark Teen." Zuccarini contends also that, even if Primedia had a trademark in "teen magazine", it could only challenge an identical domain name, citing Dial-A-Mattress v. Ultimate Search, WIPO Case No. D2001-0764 (September 26, 2001).
(iii) Rights and Legitimate Interests
Zuccarini sets out the three illustrative circumstances in Policy, Paragraph 4(c), which demonstrate registrant’s rights or legitimate interests. Citing again the Knight-Ridder decision involving "herald", Zuccarini asserts he has a legitimate interest in the domain name in issue which he argues is the misspelling of a generic common word. Zuccarini refers to the many uses of "teen magazine" and "teen" on the Internet.
In addition, Zuccarini cites decisions for the proposition that "mere ownership of a common term domain should, in and of itself, establish the owner’s rights and legitimate interest." Zuccarini asserts the "rule is no different when it applies to the misspelling of a common word."
(iv) Registration and Use in Bad Faith
Zuccarini contends Primedia has not demonstrated the domain name in issue was registered and is being used in bad faith. Zuccarini sets out the four illustrative examples of Policy, Paragraph 4(b) that may evidence bad faith, and argues that there is no evidence that Zuccarini fits any of the four.
Zuccarini asserts "direct proof" is required to show a "descriptive term domain name was registered or acquired solely for the purpose of profiting from Complainant’s trademark rights," citing Ultrafem, Inc. v. Warren R. Royal, No. 97682 (NAF August 2, 2001).
Zuccarini contends that Primedia has provided no evidence that Zuccarini intended to "attract its users," and asserts Primedia must offer evidence that demonstrates Zuccarini "has specifically intended to confuse consumers seeking out complainant." Zuccarini cites three decisions in support of this proposition.
Zuccarini argues other cases involving Zuccarini cannot compensate for Primedia’s "utter failure to demonstrate any bad faith ... in connection with the domain name at issue here," citing EPLAN Software v. Chad Folkening et al, WIPO Case No. D2000-0806 (September 28, 2000).
Zuccarini requests the panel dismiss the complaint.
5. Discussion and Findings
a. The Policy and the Rules
Paragraph 4(a) of the Policy directs that Primedia must prove, with respect to the domain name in issue, each of the following:
(1) The domain name is identical or confusingly similar to a mark in which Primedia has rights, and
(2) Zuccarini 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.
b. The Mark
Primedia has enforceable rights in the mark TEEN. "‘Teen" has been the subject of a United States registration since 1965. Other variants have been registered since July 1998. All registrations precede the October 19, 1999, registration of the domain name. It is undisputed that millions of readers have been familiar with TEEN Magazine. It is also undisputed that TEEN Magazine is a "wholesome" magazine directed to a female audience in the 12 -17 age range.
The domain name <teenmagizine.com> is not identical to the mark TEEN. However, the domain name is confusingly similar to the mark TEEN. Zuccarini is estopped to contend otherwise, in light of the references to his admissions in opinions of United States Courts, supra. It is inconceivable that Zuccarini did not have TEEN Magazine in mind when he registered the domain name in issue. As found in Primedia v. Zuccarini, WIPO Case No. D2000-1186 (November 20, 2000), on facts strikingly similar to those here (e.g. the mark was SEVENTEEN, and one of the domain names was <seventeenmagizine.com>, registered October 25, 1999), "the disputed domain names gain their very importance and apparent value by reason of their confusing similarity to Complainant’s mark [there, "Seventeen"]." In a footnote to this finding, the panel noted:
"Respondent [Zuccarini] would likely be estopped from denying the confusingly similar nature of the disputed domain names. During Respondent’s deposition and at the preliminary injunction hearing in the course of Respondent’s Shields litigation, Respondent admitted that he had registered thousands of Internet domain names only because they were confusingly similar to others’ famous marks or personal names."
In light of the record here and elsewhere, it is inconceivable that Zuccarini merely registered a combination of two common, generic terms, with one term misspelled. The only fair inference is that, consistent with his well-known practice, Zuccarini registered this domain name solely to cause confusion with respect to consumers who would search for a TEEN Magazine site on the Web.
Even without this Zuccarini history, abundant decisions have found confusing similarity when another term, misspelled or not, has been added to a mark to form a domain name. On this score, the reasoning in the earlier Primedia decision, WIPO Case No. D2000-1186, is especially apposite. See also, for example, Yahoo! Inc. v. David Ashby, WIPO Case No. D2000-0241 (June 14, 2000), Yahoo! Inc. v. Eitan Zviely, et al, WIPO Case No. D2000-0273 (June 14, 2000), PACCAR, Inc. v. Enyart Associates et al, WIPO Case No. D2000-0289 (May 26, 2000), Ermenegildo Zegna Corporation v.EstcoEnterprises Ltd., WIPO Case No. D2000-0395 (July 27, 2000), Chanel, Inc.v. EstcoTechnology Group, WIPO Case No. D2000-0413 (September 18, 2000), United States Olympic Committee(USOC) v. Tri B-U-N Eco. Project, WIPO Case No. D2000-0435 (July 13, 2000), Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464 (July 27, 2000), National Collegiate Athletic Association v. Rodd Garner and IntheZone.ws, WIPO Case No. D2000-0940 (November 7, 2000), and Christie’s Inc. v. Tiffany’s Jewelry Auction Inc., WIPO Case No. D2001-0075 (March 6, 2001).
Primedia has carried its burden on this element.
c. Rights and Legitimate Interests
For magazines, TEEN is not a common, generic term. It is a registered trademark known to millions. <teenmagizine.com> does not merely incorporate the innocent misspelling of a common dictionary word in combination with an allegedly generic term. Rather, Zuccarini’s registration of this domain name, with the Primedia trademark TEEN and its misspelling of "magazine", is an integral part of his massive cybersquatting (in this case, typosquatting) campaign.
The Knight-Ridder decision does not avail Zuccarini here. It appears that Knight-Ridder owned United States trademark registrations in the mark "The Miami Herald". In the portion of the decision on which Zuccarini appears to rely, the panel found that Knight-Ridder owned trademark rights in "The Herald", but at the same time stated:
"Complainant does not allege that HERALD is a common law trademark. ... Complainant does not claim any registered status for HERALD, nor does it claim that such mark has achieved secondary meaning ... the mark HERALD is descriptive, not distinctive (even among newspapers ...), and, as Respondent correctly argues, generic and cannot trump a domain name which is not even spelled the same way."
The domain name in issue with regard to the so-called HERALD mark was <hearld.com>. In a split decision, the majority of the panel ruled that domain name was not identical or confusingly similar to HERALD, Zuccarini had rights and legitimate interests with respect to that domain name, and it was not necessary to rule on the issue of bad faith with respect to that domain name. The minority panel member found (1) the identity/confusing similarity test was met for <hearld.com>, (2) the illegitimacy test was satisfied for that domain name, and (3) Zuccarini had registered and was using <hearld.com> in bad faith.
Here, of course, Primedia has registered trademark rights in TEEN, going back more than 35 years. The addition of "magizine" to that mark to form a domain name, in light of the authorities we cite in subsection b. above, does not undercut a finding of confusing similarity. Here, as a consequence, Primedia’s rights are paramount to Zuccarini’s much later registration of the domain name in dispute. And here, we have found bad faith registration and use, infra, whereas the majority in Knight-Ridder passed on that issue with regard to HERALD.
Primedia has carried its burden on this element.
d. Bad Faith Registration and Use
Here, it is plain that Zuccarini intended to capitalize on the good will associated with TEEN Magazine, and the mark TEEN, when he registered <teenmagizine.com>. While "magazine" alone may be generic, Zuccarini did not register only that term, or a misspelling of it. Rather, Zuccarini registered the full title of Primedia’s magazine "TEEN Magazine" – enhancing the prospects of confusion with Primedia’s mark. Misspelling "magazine" (i.e. magizine) in association with the mark TEEN in a domain name is not warranted. Indeed, given Zuccarini’s admitted intent in United States Court proceedings, and given the overwhelming evidence of Zuccarini’s cybersquatting, it is only fair to infer that Zuccarini registered the domain name in dispute here in bad faith.
Also, Zuccarini’s use of the domain name to misdirect consumers to his pornographic website is in bad faith. The content of Zuccarini’s website is the antithesis of the content and reputation of TEEN Magazine.
Zuccarini’s conduct in this case is no different in quality from that in over 50 ICANN cases in which he has been found to have violated the Policy.
Primedia has carried its burden on this element.
In light of the foregoing reasons and findings by the panel, the panel directs that the domain name <teenmagizine.com> be transferred to Primedia.
Alan L. Limbury
Richard W. Page
Dated: January 21, 2003
1. Shields v. Zuccarini, 2000 WL 1056400, at *3 (ED Pa June 5, 2000).
2. Zuccarini reproduces some pages from Google.com queries at Exhibit 1.
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