P. O. Box 50191
Minneapolis, Minnesota 55405 USA
www.arbitration-forum.com
BAMA RAGS, INC.
DECISION
COMPLAINANT, vs. Forum File No.: FA 0003000094380
JOHN ZUCCARINI, d/b/a CUPCAKE CONFIDENTIAL
RESPONDENT.
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: DAVEMATHEWSBAND.COM
Domain Name Registrar: Network Solutions, Inc.
Domain Name Registrant: Cupcake Confidential (DAVEMATHEWSBAND-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
"DAVEMATHEWS-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 "DAVEMATHEWS-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 Matthews 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 "davemathewsband.com"
(using only one "t"). In addition on November 28, 1999
Respondent registered with Network Solutions, Inc. the
domain name
"davemattewsband.com" (using no "h"). 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 "davemathewsband.com"
(one "t") or "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 "davemathewsband.com"
(and the domain name "davemattews.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 "davemathewsband.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, "davemathewsband.com"
is confusingly similar to Complainant’s trademarks
and domain
name "davematthewsband.com". Respondent by filing a domain
name with a "typographical error"
using only one letter
"t" in Matthews is capitalizing on this similarity at
the expense of Complainant.
-
Respondent has no rights or legitimate interests in
the domain name "davemathewsband.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, "davemathewsband.com"
BE TRANSFERRED FROM RESPONDENT JOHN ZUCCARINI, d/b/a
CUPCAKE CONFIDENTIAL
TO COMPLAINANT BAMA RAGS, INC.
Dated: May 8, 2000 by________________________________________
Judge Harold Kalina (Ret.)
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