P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com
BAMA RAGS, INC.
COMPLAINANT,
vs.
JOHN ZUCCARINI
RESPONDENT.
DECISION
Forum File No.: FA 0003000094381
The above entitled matter came on
for an administrative hearing on May 8, 2000 before the undersigned
on the
Complaint of Bama Rags, Inc., hereafter "Complainant",
against John Zuccarini, d/b/a Cupcake Confidential, hereafter "Respondent".
Complainant was represented by: Philip Goodpasture, Esq., Christian
& Barton, L.L.P., 909 East Main Street,
Richmond, Virginia. There
was no representation on behalf of Respondent: Upon the written submitted
record,
the following DECISION is made:
PROCEDURAL FINDINGS
Domain Names: DAVEMATTEWSBAND.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Cupcake Confidential (DAVEMATTEWSBAND-DOM)
Date of Domain Name Registration: May 18, 1999
Date of Complaint Filed: March 31, 2000
Date of Commencement of the Administrative Proceeding
in Accordance with Rule 2(a) and Rule 4(c): April 5, 2000
Due Date for a Response: April 5, 2000. Respondent did
not submit a Response to the Complaint.
After reviewing the Complaint, and determining it to
be in administrative compliance, the National Arbitration Forum (The
Forum) forwarded the Complaint to the Respondent on April 5, 2000 in
compliance with Rule 2(a), and the administrative
proceeding was commenced
pursuant to Rule 4(c). In compliance with Rule 4(d), The Forum immediately
notified
Network Solutions, Inc., the Internet Corporation for Assigned
Names and Numbers (ICANN), and the Complainant that the
administrative
proceeding had commenced. Respondent did not submit a response to The
Forum within twenty (20)
days pursuant to Rule 5(a).
On May 18, 1999, Respondent registered the domain name
"DAVEMATTEWS-BAND.COM" with Network Solutions, Inc., the entity
that is the Registrar of the domain names. On February 25, 2000, Network
Solutions, Inc. verified that Respondent
is the Registrant for the domain
name "DAVEMATTEWS-BAND.COM", and that further by registering
its domain names
with Network Solutions, Inc., Respondent agreed to
resolve any Name Dispute Resolution Policy, and the Uniform Domain
Name
Dispute Resolution Policy.
FINDINGS OF FACT
- The Dave Matthews Band is a musical group with world wide renown,
and has owned the rights to the "Dave Matthew Band"
since
early 1994. The United States Patent and Trademark Office has issued
Complainant the following
registrations on the principal register
for the mark "DAVE MATTHEWS BAND" as follows:
- Reg. No. 2265024 (issued July 27, 1999) for "computer services,
namely, providing a database and facilities for interactive
discussion
groups featuring information in the fields of music and entertainment
via a global computer
network";
- Reg. No. 2260276 (issued July 13, 1999) for "clothing specifically
baseball caps, hats, T-shirts and sweat shirts";
- Reg. No. 2,218,268 (issued January 19, 1999) for "posters,
stickers, song books, order forms, sound recording labels
and
catalogs in the field of musical entertainment and related items";
- Reg. No. 1,992,803 (issued August 13, 1996) for "a series
of musical sound recordings";
- Reg. No. 1,865,013 (issued November 29, 1994) for "entertainment
services; namely, live performances by a musical
group";
and
- Bama Rags is the owner of a U.S. federal trademark application
to register "cloth patches for clothing." Bama Rags
filed this application on July 29, 1999, and the serial number
is 75761682.
These trademarks shall be referred to in this Complaint
as the "DBM Trademarks."
- Complainant has the exclusive right to provide live performances,
produce, distribute, and sell CD’s, audio tapes
and other related
recordings, provide a web site, and sell merchandise under the "DBM
Trademarks".
- On October 14, 1999 Complainant registered the domain name "davematthews-band.com"
with Networks Solutions, Inc. This
domain name serves as the web
address for the Band’s official web page.
- On May 18, 1999 Respondent registered with Network Solutions,
Inc. the domain name "davemattewsband.com" (using no
"h").
In addition on November 28, 1999 Respondent registered with Network
Solutions, Inc. the domain
name "davemathewsband.com"
(using one "t"). Both of these domain names are common
misspellings of the
name DAVE MATTHEWS, and each is clearly "confusingly
similar" to the Complainant’s domain name.
- The two domain names are confusingly similar to Complainant’s
domain name. When an internet user types in "davemattewsband.com"
(no "h"), he will be taken to Respondent’s web site,
which in turn "frames" the official Dave
Matthews Band
web site. However, before seeing the underlying site, the user must
fend off approximately
ten (10) advertisements and promotions for
other business/web sites. Most of the advertised web sites are domain
names registered in the Respondent’s name or in the name of
his businesses, including "Cupcake
Confidential". A user
after fending off the advertisements in the form of "pop-up
boxes" will, eventually
be able to view all of the material
on the Dave Matthews Band web site.
- Respondent has registered domain names of celebrity’s names
with similar "typographical errors", i.e. Ricky Martin,
Jennifer Love Hewit, and Marilyn Monroe.
- Respondent has not acquired any trademark usage of the name Dave
Matthews, the Dave Matthews Band, or any misspelling
thereof.
- Respondent is not using his web sites for informational or news
purposes; rather, his sole use appears to be for commercial
gain
at the expense of the Dave Matthews Band trademarks.
- Respondent by using the domain name "davemattewsband.com"
is causing confusion among internet users. Respondent is
obtaining
commercial gain at the expense of Complainant and is disrupting
the business of Complainant.
- Complainant’s prayer for relief in this filing is that the
domain name "davemattewsband.com" be transferred to
Complainant.
CONCLUSION
The undersigned certifies that he has acted independently
and has no known conflict of interest to serve as the Arbitrator
in
this proceeding. Having been duly selected, and being impartial, the
undersigned makes the following conclusions:
- The domain name registered by Respondent, "davemattewsband.com"
is confusingly similar to Complainant’s trademarks
and domain
name "davematthewsband.com". Respondent by filing a domain
name with a "typographical error"
using no "h"
in Matthews is capitalizing on this similarity at the expense of
Complainant.
- Respondent has no rights or legitimate interests in the domain
name "davemattewsband.com".
- It is clear from the evidence produced by the Complainant that
the Respondent is intentionally attempting to attract,
for commercial
gain, internet users to Respondent’s, or other, on line-locations.
Respondent’s
actions have created a likelihood of confusion
with the Complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of his web site, product or service
of his web site. A user is led to believe
that the David Matthews
Band sponsors, or is affiliated with Respondent’s domain name,
and is
one and the same (until after a user has suffered going through
ten or more "pop-up boxes"). The Respondent benefits,
at the expense of Complainant, from internet users who landed on
Respondent’s web site thinking
they have made connection with
Complainant. The evidence produced is overwhelming in support of
a finding
that Respondent registered the domain name at issue in
this matter in bad faith, and continues to use it in bad faith.
DECISION
Based upon the above findings and conclusions, and pursuant
to Rule 4(i), it is decided as follows:
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME, "davemattewsband.com"
BE TRANSFERRED FROM RESPONDENT JOHN ZUCCARINI TO COMPLAINANT
BAMA RAGS,
INC.
Dated: May 8, 2000 by__________________________________________
Judge Harold Kalina (Ret.)
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