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WIPO Arbitration and
Sharman License Holdings, Limited v. Kazagold
Case No. D2004-0396
1. The Parties
The Complainant is Sharman License Holdings, Limited, Port Vila, Vanuatu, represented by Genga & Associates, P.C., United States of America.
The Respondent is Kazagold, Woodinville, Washington, United States of America,
represented by Sonia Thompson, United States of America.
2. The Domain Names and Registrar
The disputed domain names <kazaa-gold.com> and <kazaagold.com> are both registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 29, 2004. On June 1, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On June 3, 2004, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 8, 2004 and June 12, 2004. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 21, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was July 11, 2004. The Response was filed with the Center on July 1, 2004.
The Center appointed Ross Carson as the sole panelist in this matter on July 14, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The unregistered trademark and service mark on which Complainant bases its complaint is KAZAA. Complainant owns the KAZAA mark through an acquisition of the mark by a related entity, Sharman Networks Limited (“SNL”), and has used it continually throughout the world since January 2002, to identify and market software that enables peer-to-peer (P2P) communications over the Internet. In January 2002, SNL purchased assets from the Dutch company Kazaa BV, including: (i) the user interface for the Kazaa Media Desktop (or “KMD”), the P2P application; (ii) the right to use the Kazaa mark when identifying and marketing KMD, (iii) the “www.kazaa.com” website and related websites (including “www.desktop.kazaa.com”), which are used in connection with the KMD application for advertising and other purposes; and (iv) a license to certain software modules within the KMD application that SNL did not purchase.
Based on data from “www.download.com” Kazaa Media Desktop is the most popular downloadable software application in Internet history; in December 2003, it passed 300 million total downloads and, as of today, has been downloaded nearly 350 million times. See Annex C to the Complaint. Millions of users make multiple millions of files available to each other with KMD, See Annex D to the Complaint.
Complainant owns the trade and service marks of SNL, including KAZAA. Sharman has released several versions of the software, with each launch supported by extensive advertising. It also has launched an Emerging Artists Channel through which it promoted the Kazaa software. Most recently, in late 2003, Complainant spent nearly $600,000 on a consumer ad campaign, the “Kazaa Revolution”, largely in print media and on merchandise, and has followed up that campaign with Internet advertising in early 2004 that will cost approximately another $100,000. Samples of the advertising are included in Annex E to the Complaint.
Complainant also has filed for registration of the KAZAA mark in the United States, Australia, the European Union and the Benelux countries. Annex F to the Complaint reflects the status of such applications from the websites of the respective trademark authorities.
The extensive use of Kazaa Media Desktop by Internet users and Complainant’s active and continued promotion of it and of the Kazaa brand, have established an association among hundreds of millions of consumers worldwide between the KAZAA mark and the source of the Kazaa P2P application.
The <kazaa.com> domain name was created on June 9, 2000, and acquired by the Complainant in January 2002. The Respondents domain name <kazaagold.com> was registered on July 16, 2002. The Respondents domain name <kazaa-gold.com> was registered on January 8, 2003.
5. Parties’ Contentions
The Complainant submits that each of the domain names in dispute registered by the Respondent are confusingly similar to the Complainant’s trademark and service mark KAZAA. The Complainant submits that the trademark and service mark is a strong mark being a fanciful term which has been extensively used to identify and market software that enables peer-to-peer communications over the internet. The Complainant states that the Respondent’s use the domain names in dispute to market the same products, namely, peer-to-peer or file-sharing software to Internet users.
No Rights Or Legitimate Interests
Complainant submits that the Respondent has no rights or legitimate interests in respect of the domain names in dispute.
Complainant submits that it knows of no evidence that, before any notice to the Respondent of the dispute, that Respondent used or demonstrably prepared to use the domain names or a name corresponding to any of the domain names in connection with a bona fide offering of goods or services. Specifically, Respondents did not and do not offer the Kazaa software, and have and have had no license from Complainant to do so. Instead, Respondent offers software dubbed “Kazaa Gold” that Complainant submits infringes both the KAZAA mark and copyright in Kazaa Media Desktop.
Complainant submits that it knows of no evidence the Respondent has been commonly known by the domain names in dispute. To the contrary, it is Complainant’s software that has been commonly and widely known by the trademark and service mark KAZAA.
Complainant further submits that the Respondent is not making a legitimate non-commercial or fair use of the domain names in dispute. Rather, they are using the “Kazaa” name in association with GOLD for commercial gain misleadingly to divert consumers to their sites, charging a fee for access to file-sharing software that is not Kazaa Media Desktop or any licensed variation or derivative thereof. Complainant, by contrast, offers its software for download at no charge, and its efficacy and ease of use has resulted in nearly 350 million downloads of the software to date. Respondent’s offering of infringing software that is not licensed by Complainant, and charging a fee therefore, tarnishes the KAZAA mark.
Registered And Used In Bad Faith
The Complainant submits that the domain names at issue have been registered and used in bad faith by the Respondent. They appear to have been registered for improper purposes, including disrupting Complainant’s business. The Complainant further submits that Respondent has intentionally attempted to attract, for commercial gain, Internet users to their websites, with the same homepage, by creating a likelihood of confusion with the Complainant’s “Kazaa”mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s sites or of the product Respondent’s offer on their sites.
In addition, the term “Kazaa” is a non-generic, invented word.
As such, it is not a term a domain name registrant would legitimately choose
unless it was seeking to create an impression of an association with Complainant.
Telstra Corporation Limited v. Nuclear Marshmallows, WIPO
Case No. D2000-0003, paragraph 7.2 (February 18, 2000); Union Electrica
Fenosa v. Sydey Hussain, WIPO Case No.
D2000-0893 (October 4, 2000). Complainant submits it is clear Respondents
registered their domain names in bad faith.
The Respondent submitted that the remedies requested by the Complainant be dismissed based on the following grounds:
“Kazagold registered its domain names long before Kazaa ever came out with a similar type of product. In fact we believe Kazaa created a product referred to as “Kazaa Plus” in a direct attempt to hijack the demand for our products and services.
a. Our websites are not the same as Kazaa nor considered confusingly similar. Furthermore on “www.kazaagold.com” potential customers will find a clearly posted telephone number as well as mailing address while Kazaa offers no such contact information. Any potentially confused person could easily contact Kazagold for clarification.
b. Kazagold has spent a substantially more amount of money advertising our domain name and product that the $700,000 mentioned by the complainant in the original complaint. Kazagold has retained records of all such ad spending and is willing to submit such documents upon request.
c. We at Kazagold have spent the last three years developing our domain names <kazaagold.com> and <kazaa-gold.com>. Although we prefer to keep these domain names we are not opposed to selling the domain names to the Complainant.”
6. Discussion and Findings
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.”
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; 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.
A. Identical or Confusingly Similar
The trademark and service mark KAZAA is a created fanciful mark used to distinguish very widely used file sharing software. Based on Annex C to the Complaint Kazaa Media Desktop has been downloaded nearly 350 million times. The trademark and service mark KAZAA has been in use by the Complainant since January 2002, and prior thereto was in use by the Complainant’s predecessor from sometime in the year 2000. The domain names in dispute were not registered until July 2002 or 2003.
The Respondent submits that a clearly posted telephone number as well as a mailing address on the Kazaagold website will enable any potentially confused person to easily contact Kazaagold for clarification.
The Panel finds that the addition of the suffix “gold” to the Complainant’s
trademark and service mark KAZAA with and without a hyphen does not avoid a
finding that the domain names in dispute are confusingly similar to the Complainant’s
trademarks and service mark “Kazaa”. The suffix “gold”
merely suggests a select or best version of Complainant’s software identified
by the trademark and service mark KAZAA. The presence of a suffix does not prevent
a finding of confusingly similar, see Yahoo! Inc. v. Jorge O Kirovsky,
WIPO Case No. D2000-0428. Furthermore,
the addition of the generic top level domain name “.com” does not
avoid a finding of confusingly similar, see J. D. Edwards & Company v.
Nadeem Bedar, WIPO Case No.D2002-0693.
The Panel does not accept the Respondent’s submission that the addition
of a telephone number or address for the Respondent on the Respondent’s
website avoids a finding of confusingly similarity. Confusion will in most instances
have occurred prior to the Internet user arriving at the Respondent’s
websites identified by either of the domain names in dispute.
The Panel concludes that the Complainant has proven that each of the two domain names in dispute are confusingly similar to the Complainant’s trademarks and service mark KAZAA.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the domain name. Paragraph 4(c) of the Policy provides examples of circumstances that the Respondent can rely on to demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the domain name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has been commonly known by the domain name; and (iii) legitimate non-commercial or fair use of the domain name.
The Complainant acquired the KAZAA trademark and service marks in January of 2002. The Complainant also acquired the <kazaa.com> domain name in January 2002. The <kazaa.com> domain name was originally registered in 2000. The share software associated with the trademark and service mark KAZAA has been downloaded over 350 million times. The domain names in dispute were registered by the Respondent in July 2002 and January 2003. The Respondent also offers person to person shareware at the domain names identified by the domain names in dispute. The Panel does not accept the Respondent’s submission that Kazagold registered its domain names long before Complainant ever came out with person to person shareware in association with KAZAA as the Respondent did not submit any evidence to support such an allegation.
The Complainant denies that the Respondent is licensed or otherwise authorized to use the trademark or service mark KAZAA alone or in combination. The Respondent did not allege any such authorization. The Respondent did not file any evidence of use or preparation to use the domain names in dispute prior to the widespread use of the created trademark KAZAA in association with person to person software. The Respondent did not file any evidence of legitimate non-commercial or fair use of the domain names in dispute.
While the obligation to demonstrate that the Respondent has no rights or legitimate
interests squarely rest upon the Complainant, once prima facie evidence
has been adduced, it is a recognized principle, under certain circumstances,
that it may then be incumbent upon the Respondent to demonstrate otherwise,
and failing to do so may enable the Panel to draw a negative inference. See
Six Continents Hotels Inc. v. Patrick Ory, WIPO
Case No. D2003-0098, Fortuneo v. Johann Guinebert, WIPO
Case No, D2001-0781.
The Complainant has filed prima facie evidence from which the Panel concludes that the Respondent has no rights or legitimate interests in the domain names in dispute. The Respondent has failed to file evidence from which the Panel can infer that the Respondent has rights or legal interests in the domain names in dispute.
The Panel finds that Respondent has no rights or legitimate interests in the domain names in dispute.
C. Registered and Used in Bad Faith
The trademark and service mark KAZAA is a non-generic, invented word. The Complainant’s person to person shareware used in association with the trademark and service mark KAZAA has been downloaded over 350 million times. The Respondent registered the domain names in dispute in July 2002 and 2003, after the Complainant’s trademark and service mark KAZAA had become well known in association with person to person software. The domain names in dispute appear to identify a variation on the “Kazaa” person to person software.
The Panel finds that by using the domain names in dispute, the Respondent has
intentionally attempted to attract, for commercial gain, internet users to its
website by creating a likelihood of confusion with the Complainant’s trademark
and service mark KAZAA as to source, sponsorship, affiliation, or endorsement
of Respondent’s website or person to person shareware.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the domain names <kazaagold.com>
and <kazaa-gold.com> be transferred to the Complainant.
Dated: July 25, 2004