Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Musicmatch, Inc., San Diego, CA, USA ("Complainant") represented by Daniel P Larsen, Ater Wynne LLP. The Respondent is John Zuccarini Cupcake Patrol, Andalusia, PA, USA ("Respondent").

The domain name at issue is "musicmatchjukebox.com" registered with CORE.

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.

Louis E. Condon as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 28, 2000; The Forum received a hard copy of the Complaint on October 2, 2000.

On October 2, 2000, CORE confirmed by e-mail to the Forum that the domain name "musicmatchjukebox.com" is registered with CORE and that the Respondent is the current registrant of the name. CORE has verified that Respondent is bound by the CORE registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANNís UDRP.

On October 12, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 1, 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@musicmatchjukebox.com 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 November 6, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Louis E. Condon 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 Forumís 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 domain name ëmusicmatchjukeboxí is identical to the popular trademark MUSICMATCH JUKEBOX used by the Complainant, as well as incorporates the registered trademark of MUSICMATCH."

"Using ëmusicmatchjukeboxí respondent directs users to several websites where visitors are ëmousetrappedí in the site and unable to exit without clicking through a succession of ads."

"Therefore, pursuant to ICANN Policy Section 4(b)(iv), respondent is using ëmusicmatchjukebox" to attract, for commercial gain, Internet users to respondentís websites by creating a likelihood of confusion with MUSICMATCH and MUSICMATCH JUKEBOX marks as to the source, sponsorship, affiliation, or endorsement of respondentís websites and of the products or services advertised on those websites."

"Respondent offers no goods or service in connection with his use of ëmusicmatchjukebox.í He merely provides the conduit for displaying advertisements, as well as the competitive product."

B. Respondent

No submission was received from the Respondent.

Founded in February 1997, the Complainant is a developer of digital music software that lets users record, organize, and play music from the Internet. Complainant focuses on digital music standards with an emphasis on the MP3 digital format.

On August 29, 2000, the U.S. Patent and Trademark Office granted the Complainant registration of the mark MUSICMATCH (Fed. Reg. No. 2,380,285). The Complainant also has been using the common law mark MUSICMATCH JUKKEBOX mark in connection with its business and on its website since 1998.

Respondent registered the infringing domain name on March 19, 2000. Using this domain name, the Respondent directs users to websites where visitors are "mousetrapped" in the site and unable to exit without clicking through a succession of advertisements. Apparently, Respondent receives between $0.10 and $0.25 from the advertisers for every click by the user.

The advertisements that the Respondent has linked to the domain name in question concern products and services that compete with the Complainantís business.

The Respondent is the owner of numerous domain names which infringe upon otherís established marks.

In submitting no response, the Panel presumes that the Respondent does not deny the claims of the Complainant set forth in documents provided to the Panelist. The Panel will make rational inferences from the Complainant, supported by ICANN Policy and precedent. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint").

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 domain name in question is identical to the Complainantís common law mark MUSICMATCH JUKEBOX. Adding the generic term "jukebox", which is descriptive of the Complainantís services, to the Complainantís registered mark does not circumvent the "identical or confusingly similar" test found in Policy � 4.a.(i). The domain name is nevertheless confusingly similar to the Complainantís mark. In addition, the domain name is identical to the Complainantís common law mark MUSICMATCH JUKEBOX which it uses extensively on its website. See Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake city, Cupcake Confidential, Cupcake-Party, Cupcake Parade, and John Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ëchatí and ëfinancialí to be confusingly similar to Complainantís marks and likely to mislead internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).

While the burden of proof is on the Complainant, � 4.c of the Policy advises a Respondent how to demonstrate its rights to and legitimate interests in the Domain Name. The paragraph sets out a non-exclusive list of circumstances which will establish the relevant rights and/or legitimate interests of the Respondent. The Respondent has not responded to the Complainantís allegations and thus, the Panel concludes that the Respondent has no rights or legitimate interests in the domain name at issue. See America Online, Inc. v. AOL Intíl, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests).

The Respondent has linked the infringing domain name to "click-through" advertisements, in which the Respondent profits every time the users click the window to close the advertisement. The advertisements linked to the infringing domain name are companies that compete with the Complainantís business. Internet users could mistakenly believe that the advertising company and the Complainantís company are affiliated, given the fact that the infringing domain name links users to a music related site. As such, the Panel concludes that the Respondent is using the domain name in order to attract users to Respondentís website, for commercial gain, by creating a likelihood of confusion with the Complainantís marks as to the source, sponsorship, affiliation, or endorsement of the Respondentís websites. Policy � 4.b.(iv). The Respondent has

also engaged in a pattern of conduct of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name. Policy paragraph 4.b.(ii). Thus, the Panel concludes that the Respondent has registered and used the domain name in bad faith. See Bama Rags, Inc. v. John Zuccarini, d/b/a/ Cupcake Confidential, FA 94380 and FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith based on registration and commercial use of "typo" versions of the trademark DAVE MATTHEWS BAND); Hewlett-Packard Company v. John Zuccarini, FA 94454 (Nat. Arb. Forum April 7, 2000) (finding bad faith based on registration and use of "typo" version of the trademark HEWLETT-PACKARD); Encyclopedia Britannica, Inc. vs. John Zuccarini, a/k/a The Cupcake Patrol, a/k/a The Country Walk, a/k/a Cupcake Party, D2000-0330 (WIPO June 7, 2000) (finding bad faith based on registration and use of "typo" versions of the trademarks BRITANNICA and ENCYCLOPEDIA BRITANNICA).

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 "musicmatchjukebox.com" be transferred from the Respondent to the Complainant.