P. O. Box 50191
Minneapolis, Minnesota 55405 USA



COMPLAINANT, vs. Forum File No.: FA 0003000094380



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:



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.


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:

    1. 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";

    2. Reg. No. 2260276 (issued July 13, 1999) for "clothing specifically baseball caps, hats, T-shirts and sweat shirts";

    3. 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";

    4. Reg. No. 1,992,803 (issued August 13, 1996) for "a series of musical sound recordings";

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

    6. 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."

  1. 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".

  2. 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.

  3. 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.

  4. 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.

  5. Respondent has registered domain names of celebrity’s names with similar "typographical errors", i.e. Ricky Martin, Jennifer Love Hewit, and Marilyn Monroe.

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

  7. 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.

  8. 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.

  9. Complainant’s prayer for relief in this filing is that the domain name "davemathewsband.com" be transferred to Complainant.



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:

  1. 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.

  2. Respondent has no rights or legitimate interests in the domain name "davemathewsband.com".

  3. 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.


Based upon the above findings and conclusions, and pursuant to Rule 4(i), it is decided as follows:




Dated: May 8, 2000 by________________________________________

Judge Harold Kalina (Ret.)