Loreena McKennitt and Quinlan Road Ltd. v. John Zuccarini The Cupcake Patrol

Case No. D2003-0928

The Complainants are Loreena McKennitt and Quinlan Road Ltd. of Stratford, Ontario, Canada represented by Bereskin & Parr of Toronto, Ontario, Canada.

The Respondent is John Zuccarini The Cupcake Patrol of Chiriqui, Panama and Nassau, Bahamas.

The disputed domain names <loreenamckennit.com> and <lorenamckennitt.com> are registered with CSL Computer Service Langenbach GmbH dba Joker.com.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 21, 2003. On November 25, 2003, the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain names at issue. On November 26, 2003, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 2, 2003. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the 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").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2003.

In December 11, 2003, the Complainant submitted a supplemental filing to the Complaint, consisting of two news archives referring to a judicial process that involved the Respondent.

The Respondent did not submit a response. Accordingly, the Center notified the Respondent’s default on January 8, 2004.

The Center appointed Mr. Antonio Millé as the sole panelist in this matter on January 26, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The trademark upon which the Complaint is based is the common law trademark LOREENA MCKENNITT.

In a number of previous decisions, different Panels of the Center have considered that the personal name of a professional active in arts, literature, or sports, that operates as an identification of the product or service, constitute a common law trademark when a sufficient degree of notoriety exists. In the decision in the case Rosa Montero Gallo v. Galileo Asesores S. L., WIPO Case No. D2000-1649, the Panel extensively set out the arguments in support of such doctrine, presenting also a summary of the UDRP and national cases enforcing this doctrine.

In consequence, the personal name of the prominent musical performer Ms. Loreena McKennitt, constitutes a common law trade mark in the sense required by the Policy and whose owner has rights to claim against the abuses perpetrated by registrants of domain names that prejudice her famous personal name and trade mark.

The Complainants contend that :

(a) "The Complaint relies on the common law trade mark rights Loreena McKennitt asserts in her famous personal name pursuant to the Uniform Dispute Resolution Policy paragraph 4(a)(i), and on the precedents established" by different cases that mention on the basis that Ms. McKennitt "is a celebrity, recognized and acclaimed in Canada, the United States and internationally as a musical artist in the Celtic and World Music genres".

(b) "The LOREENA MCKENNITT name and trade mark has been used by the Complainants since at least as early as 1985, in Canada and internationally, in association with CD music recordings, live performances and other merchandise. This use was made well in advance of the Respondent's registration of the contested domain name on July 3, 2000".

(c) "The Respondent "has not been licensed or authorized by the Complainants to use the LOREENA MCKENNITT name or Trade Marks in any manner, nor any spelling variations thereof. To the Complainants' knowledge, the Respondent has not used the LOREENA MCKENNITT Trade Marks, or any variation thereof, in connection with any legitimate bona fide offering of wares or services; has acquired no public reputation in association with these marks; and has not become commonly known by the name LOREENA MCKENNITT".

(d) "As of the date of this Complaint, the contested domain names no longer appear to resolve to an active website .. this use of the contested domain names by the Respondent failed to demonstrate he had any legitimate interest in the contested domain names .. the Respondent appears to have had no interest in the contested domain name other than as a means of increasing traffic to the adult websites by taking advantage of users who misspell the URL for Ms. McKennitt's official site at "http://www.loreenamckennitt.com" or search for online information using misspellings of Ms. McKennitt's name".

(e) "The Respondent's pattern of using and registering domain names that reflect the famous names or trade marks of others, without legitimate interest and in bad faith, has been well documented .. it can be deduced that the Respondent has no legitimate interest in the domain names that are the subject of this Complaint".

(f) "The Respondent has demonstrated a pattern of behavior of registering for commercial gain the famous names and trade marks of celebrities and well-known organizations as domain names, and has had numerous decisions issued against him in U.S. federal courts and proceedings under the Policy in this regard .. Absent a legitimate explanation as to why so many of these famous names and trade marks were chosen by the Respondent as domain names for such a purpose, this pattern of behavior is very clear evidence of bad faith use and registration under article 4(b)(ii) and (iv) of the Policy".

(g) "That "the Respondent had deliberately registered the contested domain names for the purpose of attracting Internet users to the "Hanky Panky College!" adult website for commercial gain and advertising revenue, by creating this likelihood of confusion with the LOREENA MCKENNITT trade marks, and as to Ms. McKennitt’s sponsorship, affiliation or endorsement of the <loreenamckennit.com> and <lorenamckennitt.com> websites. In light of the Respondent's well-documented pattern of similar behaviour in respect of numerous other domain names reflecting third party trade marks or famous names, these facts are evidence of the Respondent's bad faith in registering and using the contested domain names, under paragraph 4(b)(ii) of the Policy".

The Respondent did not reply to the Complainant’s contentions.

The Panelist decided to admit and consider the Supplemental Filing from the Complainant, when rendering the decision.

The Policy sets out in Paragraph 4(a) the cumulative elements that shall be proved by the Complainant in order to succeed in an administrative proceeding for abusive Domain Name registration. Each of these elements is discussed below:

The practice of "typosquatting" consists in the elimination, change of place or addition of letters or words, to take advantage of the typing errors made by Internet users, with the purpose of directing those users to locations in the Web different to the ones that they were trying to reach..

The disputed domain names <loreenamckennit.com> and <lorenamckennitt.com> have the same series of letters as the common law trade mark LOREENA MCKENNITT, suppressing in the first case the final "T" of "Kennitt" and in the second case one of the "E’s" in "Loreena". These are typical "typosquatting" traps and undoubtedly confusingly similar to the Complainant’s trade mark.

Therefore, the requirement of Paragraph 4(a)(i) is met.

The rights or legitimate interests in respect of the domain name element is aimed to preserve the rights of the registrants of domain names identical or similar to a trade mark that have chosen these domain names with regard to some circumstance related to his or her person or business, and even for legitimate non commercial reasons that justify the registration of a domain name confusingly similar to someone else’s trade mark.

Neither "Loreena" or "Lorena" nor "McKennitt" or McKennit" are part of the personal or corporate name of the individual or entity registering the disputed Domain Names. The Respondent has not answered the Complaint and therefore, it has not given any basis to a right or legitimate interest in respect of the use of those expressions as part of a Domain Name. The conclusion about the lack of rights or legitimate interest that comes from these facts is confirmed by the absence of allegation by the Respondent of the existence of any of the circumstances listed in paragraph 4(c) of the Policy to demonstrate his rights or legitimate interest to use the Domain Names.

In the present case, the Respondent’s behavior shows that the interest leading the Respondent to choose the contested domain names was to direct Internet users who make typing errors while trying to reach the Complainant’s Web site towards other Web sites (pornographic in most of the cases, as per the strong evidence collected by the Panel) with the purpose of obtaining economic profit from these involuntary visits. In no way is this interest legitimate nor based in a right belonging to the Respondent.

On this basis, the Panelist concludes that the Respondent has no rights or legitimate interests in the contested Domain Names. Therefore, the requirement of Paragraph 4(a)(ii) is met.

The Complainant in the Complaint alleged the existence of the circumstances set out in paragraphs 4(b)(iv) of the Policy regarding the registration and use of the domain name in bad faith.

Typosquatting is a typical expression of the conduct of those that "intentionally attempted to attract, for commercial gain, Internet users to a web site 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 this web site or location or of a product or service on such web site or location" (Policy, 4(b)(iv) .

The large and unpleasant record of the Respondent shows that typosquatting is for him an organized and deliberate practice, that he considers as a legitimate and fair way to do business. All the antecedents of the Case lead the Panel to be convinced that the Respondent registered and used the disputed domain names with the sole purpose of misleading and misdirecting Internet users by means of the typosquatting trick. This conviction is reinforced by the fact alleged by the Complainant and not refuted by the Respondent, that the Internet users entering the disputed domain names before this dispute were redirected to other Web sites ("www.amateurvideos.nl" and then "www.hanky-panky-college.com") being overflowing with a series of popup advertisements and messages offering access to adult websites displaying sexually explicit material. It should also be remembered that as per published researches performed about the Respondent’s "typosquatting business" activities, he registered thousands of domain names, 90% of which redirect the Internet user to pornographic Web sites.

In light of the circumstances, and with the Respondent remaining silent about any legitimate reasons that could drive the Respondent to register and use "loreenamckennit" and "lorenamckennitt" as Domain Names, the Panel can not find any justification other than bad faith for the registration and use of Domain Names that clearly and univocally evoke the Complainant’s trademark. Pleading guilty in a judicial process to 49 counts of using domain names to direct minors to sexually explicit content, the Respondent confirms this bad faith behavior.

Previous decision of other panels considered also the typosquatting practice as a manifestation of bad faith:

"Respondent’s use of these domain names to divert users to unrelated advertisements is classic bad faith. As one recent court has stated, "[t]aking advantage of consumers’ known disposition to misspell domain names, Zuccarini has diverted Internet traffic to his web sites, thereby earning substantial revenue from advertisers. "Encyclopaedia Britannica, Inc. v. Zuccarini, WIPO Case No. D2000-0330(June 7, 2000) (finding bad faith under the U.S. Anticybersquatting Consumer Protection Act, Section 43(d) of the Lanham Act)".

The use of false contact information (it is of public knowledge that the Respondent was recently arrested by the Police while living in a domicile other than the registered address provided in the domain name’s Whois records) serves as a further ratification of bad faith conduct. This circumstance was taken into account in previous decisions of the Center:

"The Respondent’s bad faith is further demonstrated by the false contact information he provided to the registrar with which the domain names are registered". See Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (June 19, 2000) § 6A (finding bad faith, in part, because respondent provided false contact details to Register.com, Inc.).Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

Because of all of this, the Panel arrives at the conclusion that the Respondent has registered and used the <loreenamckennit.com> and <lorenamckennitt.com> Domain Names in bad faith. Therefore, paragraph 4(a)(iii) is met.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <loreenamckennit.com> and <lorenamckennitt.com> be transferred to the Complainant.