Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Metallica , San Francisco, CA, USA ("Complainant"). The Respondent is Josh Schneider Epigraph Entertainment, Inc., Chicago, IL, USA ("Respondent").

The domain name at issue is "metallica.org" registered with Network Solutions.

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 18, 2000; The Forum received a hard copy of the Complaint on September 18, 2000.

On 9/21/00, Network Solutions confirmed by e-mail to the Forum that the domain name "metallica.org" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 22, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@metallica.org by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 16, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

The Complainant contends that the domain name is identical to the Complainant’s registered trademark and that the Respondent has no legitimate interests in the domain name. The Complainant also contends that the Respondent registered and uses the domain name "metallica.org" in bad faith in order to attract unsuspecting consumers and fans of the Complainant to Respondent’s <guitar.com> website.

The Complainant contends that the Respondent’s conduct violates trademark laws, ICANN UDRP, and the Network Solutions domain name dispute agreement.

B. Respondent

The Respondent has failed to deny or admit the contentions detailed in the Complaint. The Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, para. 14(a)), and certain factual conclusions may be drawn by the Panel on the basis of Complainant’s undisputed representations (id., para. 15(a)).

In 1981, a musical group consisting of Lars Ulrich, Dave Mustaine, James Hetfield and Cliff Burton was formed. In 1982 the musical group started using the name METALLICA in live musical performances since 1982, the Complainant has conducted over 1,000 concerts under the METALLICA mark throughout the United States and world. In 1984, the band released its first album under the mark. Since then, the back has released a total of nine albums, one extended play recording, one box set, and eleven single recordings under the METALLICA mark. In addition, the Complainant has released six music videos and one DVD recording. The Complainant has received numerous awards for its musical services and its music has been featured in many magazines, TV programs, commercials, and motion pictures.

The Complainant has obtained numerous federal trademark registrations for its METALLICA mark in connection with a wide variety of goods and services. The Complainant uses its marks in connection with entertainment services in the nature of live musical performances, musical sound recordings, pre-recorded videotapes and laserdiscs, merchandise (i.e. clothing, posters, tour books, decals, ornamental buttons and patches, concert programs, stickers, pins, backpacks, handbags, wallets, rugs, door mats), Internet services, and fan club.

Respondent registered the domain name "metallica.org" on December 15, 1998. Respondent has linked the domain name in question to the website located at <guitar.com>, a commercial website that is owned and operated by Epigraph Entertainment, Inc. ("Epigraph") Respondent is the President and CEO of Epigraph. The Complainant has not authorized the Respondent or Epigraph to use the Complainant’s mark. The <guitar.com> website is an online resource for guitarists and guitar music enthusiasts.

Respondent has registered numerous other domain names which infringe upon famous marks and linked then to his website in order to increase visitor traffic to the site. For example, the Respondent owns <viasports.com>, <guitarschool.net>, <guitarcenter.com>, <bladetrader.com>, and <targetpractice.com>. The Respondent also owns <chicagostockexchange.com> but has not linked this domain name to his <guitar.com> website.

Counsel for the Complainant sent a letter to the Respondent requesting that the Respondent cease and desist use of the infringing domain name. Respondent’s request to this letter was a set of demands, for instance, having dinner with the Complainant, conducting an interview and online chat session with the Complainant, and having the Complainant call two of the Respondent’s friends and leave messages on their voicemail. Complainant declined the Respondent’s offer.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent 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.

The "metallica.org" domain name is identical to the Complainant’s registered trademarks. For purposes of this action, the ".org" suffix at the end of the domain name is not considered. Thus, the domain name and Complainant’s METALLICA marks are identical. See CBS Radio Inc. v. Oldies Radio, D2000-1033 (WIPO Oct. 5, 2000) (finding that Respondent’s domain name wgrr.com is legally identical to Complainant’s mark WGRR).

The Complainant contends that it is the exclusive owner of the distinctive mark contained in the infringing domain name and as a result, the Respondent has no legitimate interests in the domain name. The Respondent has not denied this.

The only use to which the Respondent has put the domain name is for a link to its commercial site. Thus, the Respondent is not engaging in a noncommercial endeavor with the domain name. Thus, Policy ¶ 4.c.(iii) cannot be satisfied as evidence of rights in the domain name.

Also, the Respondent is not commonly known by the term METALLICA; thus, Policy ¶ 4.c.(ii) cannot be used as evidence of rights in the infringing domain name.

The Respondent is using the domain name to link users to its website. This is not a bona fide use of a domain name. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name <fossilwatch.com> where he linked it to his site selling various watch brands). Thus, Policy ¶ 4.c.(i) cannot be revealed as evidence of rights in the domain name.

Based on the above, in connection with the Respondent’s failure to offer evidence of a legitimate interest in the domain name, the Panel concludes that the Complainant has met the elements of Policy ¶ 4.a.(ii), showing that the Respondent has no rights or legitimate interests in the domain name.

The Respondent registered and is using the "metallica.org" domain name to attract Internet users to his website, <guitar.com>, for commercial gain, by creating a likelihood of confusion with the Complainant’s marks. Policy ¶ 4.b.(iv). See America Online, Inc. v. Tencent Communications Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent). This likelihood of consumer confusion is compounded by the obvious relationship between the content of the <guitar.com> website the Complainant’s musical and entertainment services.

The Respondent’s use of the infringing domain name prevents the Complainant from using its valuable trademark in the domain name. Moreover, surveying the other domain names that the Respondent owns indicates that the Respondent has engaged in a pattern of conduct of registering domain names that infringe upon other’s famous marks. Policy ¶ 4.b.(ii) states that the Respondent has registered and used the domain name in bad faith if it has prevented the Complainant from using its mark in a domain name, provided there is a pattern of conduct. The Panel concludes that the Complainant has proven that the Respondent has violated Policy ¶ 4.b.(ii). See General Electric Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent engaged in a pattern of conduct, by registering over fifty domain names such as <amazondirect.com> and <lycosdirect.com>, and intended to prevent holders from using their marks in corresponding domain names).

The Respondent also registered and used the domain name in order to extract valuable concessions from the Complainant. Policy ¶ 4.b.(i) states that registering a domain name in order to extract valuable consideration from Complainant or Complainant’s competitors in excess of the out of pocket expenses associated with the domain name is evidence of bad faith. Policy ¶ 4.b.(i) was broadly constructed as to provide for relief when the infringing domain name holder seeks transfer of the domain name for something valuable other than money. The Respondent offered to transfer the domain name in exchange for a meeting with the Complainant, phone calls from the Complainant, and an interview with the Complainant. Given the Complainant’s fame, these encounters with the Complainant would be of great value—certainly a value in excess of the minimal costs associated with registering and maintaining the domain name "metallica.org". Thus, the Panel concludes that the Respondent has met the requirements of Policy ¶ 4.b.(i).

Based on the above, the Panel concludes that the Respondent registered and used the domain name in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "METALLICA.ORG", be transferred from the Respondent to the Complainant.