DECISION

Bama Rags v. John Zuccarini d/b/a Cupcake Patrol

Claim Number: FA0112000102943

PARTIES

Complainant is Bama Rags, Inc., Richmond, VA (“Complainant”) represented by Philip Goodpasture.  Respondent is John Zuccarini d/b/a Cupcake Patrol, Nassau, BF (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <davemattews.com>, registered with CSL Gmbh Joker.com.

PANEL

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

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on December 13, 2001; the Forum received a hard copy of the Complaint on December 17, 2001.

On December 18, 2001, CSL Gmbh Joker.com confirmed by e-mail to the Forum that the domain name <davemattews.com> is registered with CSL Gmbh Joker.com and that Respondent is the current registrant of the name.  CSL Gmbh Joker.com has verified that Respondent is bound by the CSL Gmbh Joker.com 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 December 18, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 7, 2002 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@davemattews.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 January 28, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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

The Dave Matthews Band is an extremely successful musical group that has been recording musical works and performing since 1991, and has achieved great renown and reputation around the world.  Complainant, has owned the rights to the Dave Matthews Band marks, since 1991, receiving United States federal trademark registrations for the Dave Matthews Band marks as early as 1994.  In this regard, Bama Rags has the exclusive right to provide live performances, produce, distribute, and sell CDs, audio tapes and other recordings, provide a website, and sell merchandise under the Dave Matthews Band marks.  On November 1, 1997, Bama Rags registered the domain name <davematthews.com> with Network Solutions.  This domain name directly takes users to the Band’s official web page.  The revenues from the sales of merchandise, CDs, audiotapes and other items by and through the official web page represent some of the most important sources of income for the Dave Matthews Band.

Dave Matthews is the lead singer, guitar player and co-founder of the Dave Matthews Band.  Fans of and articles about the Band associate Dave Matthews with the Band, and commonly refer to both Dave Matthews personally and the Band collectively as “Dave Matthews.”  Dave Matthews has executed an exclusive license to Complainant permitting Complainant to use and license the use of the name and likeness of Dave Matthews, which also permits Complainant to protect the Dave Matthews name and likeness from infringements such as Respondent’s.  Complainant has registered the domain names <davematthews.com>, <davematthews.net>, <davematthews.info>, and even the misspellings <davmattews.com>, and <davemattew.com>, among others.  Internet users entering any of these websites are automatically forwarded to the Band’s official website at <davematthewsband.com>. 

Respondent is not authorized in any way to use the Dave Matthews name or likeness.

The disputed domain name is a common misspellings of the name Dave Matthews, and is clearly “confusingly similar” to the Complainant’s domain name <davematthews.com>.  

Respondent is a typosquatter because his domain name is nothing more than typographical errors of the name “Dave Matthews” used solely to intercept Internet users who are attempting to visit the official Dave Matthews Band website.

Respondent should be considered as having no rights or legitimate interests in respect of the <davemattews.com> domain name that is the subject of this Complaint.

First, the Respondent’s name is not Dave Matthews or, for that matter, Dave Mattews.

Second, the Respondent has not acquired any trademark usage of the name Dave Matthews, the Dave Matthews Band, or any misspelling thereof.

Third, the Respondent is not using his websites for informational or news purposes; rather, his sole use is for commercial gain at the expense of the Dave Matthews Band marks, to misleadingly divert consumers or to tarnish the Dave Matthews Band marks.

Respondent’s registration and use of the <davemattews.com> domain name is in bad faith. 

B. Respondent

No Response was received.

FINDINGS

This Complaint is based on the Complainant’s ownership of the mark “Dave Matthews Band,” Complainant’s license to use the name “Dave Matthews” granted by the entertainer Dave Matthews, and the domain name <davematthews.com> owned and maintained by Complainant.  The United States Patent and Trademark Office has issued to the Complainant, Bama Rags, Inc., the following trademark registrations, among others, on the principal register for the mark “DAVE MATTHEWS BAND”: 

1.  Reg. No. 2,438,114 (issued March 27, 2001) for “cloth patches for clothing”;

2.  Reg. No. 2,265,024 (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”;

3.  Reg. No. 2,260,276 (issued July 13, 1999) for “clothing; specifically baseball caps, hats, T-shirts and sweat shirts”;

4. 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”;

5.  Reg. No. 1,992,803 (issued August 13, 1996) for “a series of musical sound recordings”; and

6.  Reg. No. 1,865,013 (issued November 29, 1994) for “entertainment services; namely, live performances by a musical group”.

Complainant has an exclusive license from Dave Matthews permitting Complainant to use and to license the use of the name and likeness of Dave Matthews, which also permits Complainant to protect the Dave Matthews name and likeness from infringements.  Complainant has used <davematthews.com> as a domain name to lead users to the official website of the Dave Matthews Band since 1997.  In addition, Complainant plans to file applications to register a trademark for the mark “DAVE MATTHEWS” for entertainment services; namely, live performances by a musician, and for a series of musical sound recordings.

On March 29, 2000, Respondent, doing business as “Cupcake Patrol,” registered with Network Solutions the domain name <davemattews.com> (using no “h” in “matthews”).  

A user typing in <davemattews.com> is automatically taken to the website at <amateurvideos.nl>, which advertises pornographic and obscene material.  Deleting this website automatically causes the user to be transferred to <bellybuttonpictures.com>. 

Respondent has a history of typosquatting.  On May 18, 1999, the Respondent, doing business as “Cupcake Confidential,” registered the domain name <davemathewsband.com> (using one “t”).  On November 28, 1999, Respondent registered the domain name <davemattewsband.com> (using no “h”).  Both of these domain names are common misspellings of the name Dave Matthews Band, and each is clearly “confusingly similar” to the Complainant’s domain name.   When an Internet user typed in <davemathewsband.com> (one “t”) or <davemattewsband.com> (no “h”), the user was taken to Respondent’s website, which eventually “framed” the official Dave Matthews Band website.  However, before seeing the official Dave Matthews Band website, the user had to fend off approximately ten advertisements and promotions for the websites of other businesses.  Complainant requested the Respondent cease and desist its infringement on Complainant’s rights.  Respondent refused and Complainant was forced to institute the Domain Name Dispute Resolution procedures and obtain Panel Decisions dated May 8, 2000, ordering Respondent to turn over the <davemathewsband.com> (no “t”) and <davemattewsband.com> (no “h”) domain names to Complainant.  See Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000); Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000).

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(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

Complainant has established that it has trademark rights in the name Dave Matthews.  See Estate of Tupac Shakur v. Shakur Info Page, AF-0346 (eResolution Sept. 28, 2000) (finding that a “person may acquire such a reputation in his or her own name as to give rise to trademark rights in that name at common law”); see also Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER).

Respondent’s domain name is merely a misspelling of Complainant’s Dave Matthews mark and is therefore confusingly similar under Policy ¶ 4(a)(i).  See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that the domain names, <davemathewsband.com> and <davemattewsband.com>, are common misspellings and therefore confusingly similar).

Rights 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(b)(i).  Respondent’s only use of the <davemattews.com> domain name has been to divert Internet users to a website consisting of pornography and a pop-up advertisement.  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); see also National Football League Prop., Inc., v. One Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the Respondent has no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where the Respondent linked these domain names to its pornographic website).

Respondent is not commonly known by the name “Dave Mattews.”  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.  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 <davemattews.com> be transferred from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: February 4, 2002

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