DECISION

Musicmatch, Inc. v Cupcake Patrol

Claim Number: FA0104000097115

PARTIES

Complainant is Musicmatch, Inc., San Diego, CA, USA (“Complainant”) represented by Daniel P. Larsen, of Ater Wynne LLP.  Respondent is Cupcake Patrol, Andalusia, PA, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <musimatch.com> registered with CORE.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding.  Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 27, 2001; the Forum received a hard copy of the Complaint on May 3, 2001.

On May 3, 2001, CORE confirmed by e-mail to the Forum that the domain name <musimatch.com> is registered with CORE and that 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On May 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 29, 2001 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@musimatch.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 June 1, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Carolyn Marks Johnson 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 Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts that Respondent’s domain name <musimatch.com> is identical to or confusingly similar to Complainant’s MUSICMATCH mark.  In addition, Complainant urges that Respondent has no rights to or legitimate interests in relation to the domain name at issue.  And finally, Complainant maintains that Respondent registered and used the domain name in bad faith.

B. Respondent

Respondent has not submitted a response in this matter.

FINDINGS

Founded in February 1997, Complainant is one of the leading developers of digital music software that lets users record, organize and play music from the Internet.  Complainant has received awards for one of the world’s most popular all-in-one utility player and organizer called the MUSICMATCH JUKEBOX software that the company introduced in 1998.  Complainant’s services are used by more than 13 million people worldwide, and may be accessed through the domain name <musicmatch.com>.

Complainant filed an application to federally register its trademark MUSICMATCH in the United States on or about February 2, 1998, and the United States Patent and Trademark Office granted registration on August 29, 2000.

Respondent registered its domain name <musimatch.com> on May 31, 2000.  Using <musimatch.com> Respondent directs users to several websites where visitors are “mousetrapped” in the site unable to exit without clicking through a succession of ads.  Apparently, Respondent receives between $0.10 and $0.25 from the advertisers for every click.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) 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.

Identical to and/or Confusingly Similar

Because Complainant had used the name MUSICMATCH in conjunction with product and services in 1998, it is the finding of the Panel that Complainant acquired common law rights to the mark prior to Respondent’s registration of the disputed domain name.  See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

The only difference between Complainant’s mark and Respondent’s domain name is the deletion of the letter “c.”  This minor difference does not diminish the confusing similarity between Respondent’s domain name and Complainant’s mark.  See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark).

Therefore, the Panel concludes that Complainant has met the burden set forth under Policy 4(a)(i) of showing that the domain name registered by Respondent is confusingly similar to a mark in which Complainant established rights.

Rights to or Legitimate Interests

Respondent has not made any legitimate use of the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(a)(i).  Respondent’s only use of the <musimatch.com> domain name has been to divert Internet users to a website consisting of multiple pop-up advertisements.  See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).

Respondent is not commonly known by the name “musimatch.”  See Policy 4(a)(ii).  There is no evidence in the record, and Respondent has not come forward to establish any, that Respondent is commonly known by the disputed domain name.  See Systima Ltd. v. Byrne, D2001-0300 (WIPO Apr. 23, 2001) (finding “[t]here is no indication from the evidence before this Administrative Panel that the Respondent has ever been known by the said domain name so as to claim rights or a legitimate interest in accordance with Paragraph 4(c)(ii) of the Policy”).

Lastly, Respondent is not making any legitimate noncommercial or fair use of the domain name.  Respondent’s sole use of the domain name is to trigger pop-up advertisements when unsuspecting Internet users misspell Complainant’s mark.  Respondent’s website is a commercial site and generates a profit from the advertisers who place banner advertisements on his site.  See Cabela’s Inc. v. Zuccarini, FA 95233 (Nat. Arb. Forum Aug. 28, 2000) (finding no legitmate noncommercial or fair use where Respondent profited from the unsolicited pop-up advertisements that users encounter upon mistakenly entering Respondent’s website).

Therefore, the Panel concludes that Complainant has established its burden set forth under Policy 4(a)(ii) of showing that it has rights in the mark contained within the disputed domain name and that Respondent has no such rights.

Registration and Use in Bad Faith

Respondent demonstrated bad faith use and registration by using a domain name confusingly similar to Complainant’s mark as a portal to pop-up advertisements.  See Spacey v. Zuccarini, FA 96937 (Nat. Arb. Forum May 8, 2001) (finding that “Respondent demonstrated bad faith use and registration by directing Internet traffic to pop-up advertisements”).

Additionally, the form of “typosquatting” engaged in here by Respondent has been recognized as a bad faith use of a domain name under the UDRP.  See L.L. Bean, Inc. v Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001) (finding that Respondent acted in bad faith by establishing a pattern of registering misspellings of famous trademarks and names).

Therefore, the Panel finds that the elements of Policy 4(a)(iii) have been satisfied; Respondent registered and used the domain name in issue in bad faith.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

Accordingly, it is Ordered that the domain name <musimatch.com> be transferred from Respondent to Complainant.

Honorable Carolyn Marks Johnson (Ret), Panelist

Dated: June 13, 2001.

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