DECISION

Musicmatch, Inc. vs. KyongSook Park

Claim Number: FA0109000099700

PARTIES

The Complainant is Musicmatch, Inc., San Diego, CA, USA (the ¡°Complainant¡±) represented by Daniel P. Larsen, of Ater Wynne, LLP. The Respondent is KyongSook Park (the ¡°Respondent¡±)

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <musicmatch.net> registered with Hangang Systems, Inc. (the ¡°Domain Name¡±)

PANEL

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

Kyung-Han Sohn sits as Panelist.

PROCEDURAL HISTORY

The Complainant submitted a Complaint to the National Arbitration Forum (¡°the Forum¡±) electronically on September 11, 2001; the Forum received a hard copy of the Complaint on September 17, 2001.

On September 13, 2001, Hangang Systems, Inc. confirmed by e-mail to the Forum that, the Domain name <musicmatch.net> is registered with Hangang Systems and that the Respondent is the current registrant. Hangang Systems has verified that the Respondent is bound by the Hangang Systems 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 ¡°UDRP¡±).

On September 24, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the ¡°Commencement Notification¡±), setting a deadline of October 15, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent¡¯s registration as technical, administrative and billing contacts, and to postmaster@musicmatch.com by e-mail.

A timely response was received and determined to be complete on October 15, 2001.

On November 1, 2001, pursuant to the Complainant¡¯s request to have the dispute decided by a single-member Panel, the Forum appointed Kyung-Han Sohn as Panelist.

On November 2, 2001, this Panel issued an order that, pursuant to ICANN Rule 11, and in consideration of the fact that the Respondent¡¯s registration agreement is in Korean and of the circumstances of the administrative proceeding, the Complaint and required documents shall be submitted by the Complainant to the Forum in English and Korean and be transmitted to the Respondent and the Respondent may submit the Response in Korean or English and other communications to and from the Forum shall be in English.

RELIEF SOUGHT

The Complainant requests that the Domain Name be transferred from the Respondent to the Complainant.

PARTIES¡¯ CONTENTIONS

A. The Complainant Contents

1. Founded in February 1997, Musicmatch, Inc. (¡°Musicmatch¡±) is one of the leading developers of digital music software and has received awards for one of the world¡¯s most popular all-in-one music player and organizer called the Musicmatch Jukebox software (the ¡°Software¡±), which the company introduced in 1998. By logging onto <musicmatch.com> online, anyone can utilize the Software and currently, the Software is registered by more than 22 million people worldwide. As such, Musicmatch¡¯s website is ranked by BestTopSites.com/Hot100 as the ninth most visited music site on the Worldwide Web;

2. Musicmatch filed an application to federally register its trademark MUSICMATCH (the ¡°Trademark¡±) in the United States and the United States Patent and Trademark Office issued U.S. Reg. No. 2,380,285 on August 29, 2000 and U.S. Reg. No. 2,426,718 on February 6, 2001 for the Trademark in the United States.

3. The Respondent registered the Domain Name <musicmatch.net> with Hangang Systems, Inc. on July 19, 2001;

4. Using the Complainant¡¯s Trademark as his domain name, the Respondent directed users to a website with a link called ¡°Music 4 U.¡± Upon clicking on the link, visitors are then directed to ¡°Musicstudio¡± which is an online music player or offers for sale a music player. ¡°Musicstudio¡± is music software very similar to the Software. The Respondent using the Domain Name which is identical to the Trademark, attracted visitors to a product of a rival company with the Complainant;

5. The Respondent¡¯s registering and using <musicmatch.net> was disrupting the business of the Complainant by unfairly attracting and misleading the customers of the Complainant to the products of the Complainant¡¯s competing company. The Respondent¡¯s above actions have caused confusion for Internet users to mistakenly believe that the source of the product or business activities of the Respondent or ¡°Musicstudio¡± were identical to or affiliated with the Complainant¡¯s website or the Software;

6. The Respondent¡¯s bad faith is illustrated by the facts that the Respondent registered the Domain Name <musicmatch.net> which is identical to the Trademark on July 19, 2001 and the Respondent has refused to return the Domain Name to the Complainant.

B. The Respondent Contends

1. The Respondent was not aware of the existence of the Complainant at the time that he registered the Domain Name or prior to this Complaint;

2. The Respondent registered the Domain Name not with intentions of commercial gain but rather private objectives. As a web designer, the Respondent registered the Domain Name with the purpose of exhibiting the web-design works created by other web designers and has used the Domain Name accordingly and therefore, had no intent to disrupt the business of the Complainant;

3. The ¡°Musicstudio¡± music player which is linked to the Respondent¡¯s website is offered for free at another website and as an attempt to better the weak aspects of his homepage, the Respondent got the approval of the above website¡¯s operator to post the ¡°Musicstudio¡± music player on his site;

4. The Respondent does not have a contractual or close relationship with the ¡°Musicstudio¡¯s¡± manufacturer or service provider. This point can be verified by the messages written by other visitors on the visitor¡¯s book¡¯s message board on his homepage. If the Respondent did have a distinct relationship with the above music player¡¯s manufacturer or service provider or had commercial intent to advertise the above music player, then there would not have been reason to have placed the music player in a corner of the homepage¡¯s message board. As such, the Complainant¡¯s claim that the Respondent is advertising the above music player in competition with the Complainant or acting with commercial intent is false.

FINDINGS

The finding of the undersigned is as follows:

1. The Domain Name is identical to the U.S. registered Trademark of the Complainant;

2. The Respondent does not have rights or legitimate interests in respect of the Domain Name; and,

3. The Domain Name has been registered and used in bad faith.

REASONING

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

Paragraph 4(a) of the UDRP 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.

Identical and/or Confusingly Similar

Based on the evidence submitted by the Complainant, the Complainant¡¯s U.S. Trademark was registered for music preference and interest analysis, music recordings, computer software merchandise for storage of selection of music in Class 9, for music samples and online ordering of recordings in Class 35 and for information supply of record sales, reviews and concerts in Class 41 prior to the Respondent¡¯s registering the Domain Name. After the Complainant developed the Software in 1998, it began supplying it in the market and as such the Software became a leading all-in-one music player and organizer known worldwide. Accordingly, the Complainant¡¯s homepage is one of the most frequently visited music websites by Internet users and is so popular that it has been ranked ninth among such websites and as such the Complainant¡¯s trade name and Software are marks widely known within the music service area.

The Respondent¡¯s disputed domain name is identical not only with the trade name of the Complainant¡¯s company but also with the widely known U.S. registered Trademarks of the Complainant. See Viewsonic Corp. v. Informer Assoc. Inc., D2000-0852 (WIPO Sept. 6, 2000) (finding that the Domain Names <viewsonic.net> and <viewsonic.org> are identical to the Complainant¡¯s VIEWSONIC mark).

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests to the Domain Name because the Respondent¡¯s Domain Name is identical to the Complainant¡¯s Trademark which is known worldwide and its service being related to music software is the same as the Complainant¡¯s service. See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when the Respondent is using a domain name identical to the Complainant¡¯s mark and is offering similar services).

The Respondent has no rights or legitimate interests to the Domain Name because the Respondent is not commonly known by the Domain Name, nor has the

Respondent used the Domain Name fairly for noncommercial purposes by her having attracted Internet users to the products of the Complainant¡¯s competing company by using the Domain Name. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that the Respondent has no rights or legitimate interests in domain names because it is not commonly known by the Complainant¡¯s mark and the Respondent has not used the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also Broadcom Corp. v Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding that the Respondent has no rights or legitimate interests because the Respondent is not commonly known by the Domain Name or did not use the Domain Name in connection with legitimate or fair use).

And evidence presented fails to demonstrate that the Respondent, before any notice to it of this Complaint, had rights or legitimate interest to the Domain Name.

And upon the request of the Complainant to return the Domain Name, the Respondent closed the website of this Domain Name and no longer uses it.

In sum, it should be concluded that the Respondent does not have any rights or legitimate interests with respect to the Domain Name.

Registration and Use in Bad Faith

It is the opinion of the Panelist that the Respondent registered the Domain Name in bad faith for the following reasons:

1) Before the Respondent registered the Domain Name, the Complainant already registered the Trademark in the U.S. which is identical to the Domain Name, and also the Software is widely known within the music software industry. The Complainant, therefore, should be deemed as having legitimate rights with respect to the registration and use of the Domain Name. Nonetheless, the Respondent who has no relationship with the Complainant, has registered the Domain Name in her name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the ¡°domain names are so obviously connected with the Complainants that the use or registration by anyone other than the Complainants suggests ¡®opportunistic bad faith¡¯¡±).

2) The Respondent seems to have registered the Domain Name under her name while she was aware of the fact that such registration would be deceptive and cause confusion to the public. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant¡¯s famous mark when registering the Domain Name as well as aware of the deception and confusion that would inevitably follow if it used the Domain Names).

3) The Respondent attracted Internet users with a product in competition with the Software through the Domain Name. See Southern Exposure v. Southern Exposure, Inc., FA94864 (Nat. Arb. Forum Jul. 18, 2000) (finding that the Respondent acted in bad faith by attracting Internet users to a website competing with the Complainant¡¯s business). The Respondent claimed that having gotten the program of a company in competition with the Complainant which is offered for free at another website and posting it on the message board of her own homepage, she did not have the intention of advertising the product of the above company for commercial gain, but regardless of the intent of the Respondent, Internet users being drawn to the software of the above rival company, were confused to mistakenly believe that ¡°Musicstudio¡± of the rival company was identical to or affiliated with the Software, and therefore, it is highly probable that the business of the Complainant was disrupted.

4) Lastly, the fact that the Respondent is refusing to return the Domain Name to its legitimate right holder and continuing to passively hold onto the Domain Name after closing the website of the Domain Name shows that the Respondent registered the Domain Name with the intention to disrupt the business of the Complainant. See Alitalia-Linee Aeree Italiane S.p.A. v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the Domain Name in question and there are no other indications that the Respondent could have registered and used the Domain Name in question for any non-infringing purposes).

DECISION

Having fulfilled all three requirements of the paragraph 4(a) of the UDRP, it is the decision of the Panel that the relief sought be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the Domain Name, <musicmatch.net>, be transferred from the Respondent to the Complainant.

Kyung-Han Sohn, Panelist

Dated: November 15, 2001

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