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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sharman License Holdings, Limited v. Robert Johnson
Case No. D2004-0691
1. The Parties
The Complainant is Sharman License Holdings, Limited, Port Vila Vanuatu, Vanuatu, represented by Genga & Associates, P.C., United States of America.
The Respondent is Robert Johnson c/o Network Solutions
LLC, Herndon, Virginia, United States of America.
2. The Domain Name and Registrar
The disputed domain name is <get-kazaa-lite.com>.
The Registrar with whom the domain name is registered is Network Solutions,
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2004. On August 31, 2004, the Center transmitted by email to Network Solutions LLC a request for Registrar verification in connection with the domain name in issue. On September 2, 2004, Network Solutions LLC transmitted by email to the Center its verification response confirming that the Registrant was the Respondent Robert Johnson attn. of “get-kazaa-lite.com”, c/o Network Solutions, PO Box 447 Herndon, Virginia. The Administrative Contact was also given as the said Robert Johnson. The Technical Contact was Network Solutions LLC. The Center verified that 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”).
Notification of the Complaint and commencement of the administrative proceedings was given to the Respondent on September 3, 2004, by email and by hard copy. In the event no Response was received by the Center. The Panel is however satisfied from the FedEx receipts enclosed with the papers that a hard copy of the Complaint was sent to the Respondent at the above addressed.
Notification of Respondent’s Default was given by email to the Respondent on September 24, 2004. No Response was subsequently received.
On October 4, 2004, the Administrative Panel was appointed consisting of Mr. Clive
Duncan Thorne, Sole Panelist. The Panel considers 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
in paragraph 7. No interlocutory proceedings have taken place and no interlocutory
orders have been issued by the Panel. The language of the proceedings is English.
4. Factual Background
The Complainant adduces evidence of registered and unregistered trade mark rights. In particular, the Complainant relies upon the mark “KAZAA”. The Complainant owns the “KAZAA” mark through an acquisition of the mark by a related entity, Sharman Networks Limited and has used it continually throughout the world since January 2002, to identify the market software that enables peer-to-peer (P2P) communications over the Internet.
In January 2002, Sharman Networks Limited purchased assets from the Dutch company Kazaa BV including (i) the user interface with Kazaa Media Desktop and (ii) the right to use the Kazaa mark when identifying marketing Kazaa Media Desktop (iii) “www.kazaa.com” website and related websites which are used in connection with the Kazaa Media Desktop application advertising and other purposes and (iv) a license to certain software modules within the Kazaa Media Desktop application that were not purchased at the time.
The Complainant assets that Kazaa Media Desktop has been the most popular downloadable software application in Internet history with downloads of nearly 350,000,000 as of April 2004.
The Complainant owns the trade mark and service marks of Sharman Networks Limited including the mark “KAZAA”. It has released several versions of the software with each launch supported by extensive advertising of the Kazaa Software. In late 2003, the Complainant spent nearly $600,000 on a consumer advertising campaign known as the “Kazaa Revolution”, largely in print media and on merchandise and has followed up that campaign with Internet advertising in early 2004, that would cost approximately another $100,000. The panel has seen samples of the advertising included at Annex E to the Complaint.
The Complainant has also filed for registration of the trade mark “KAZAA” in a number of jurisdictions including the United States, Australia, the European Community and the Benelux Countries. Registration of the mark has been granted in the Benelux Countries under registration no. 0747624. The application has been rejected for certain classes as a Community Trade Mark. This has been based upon potential confusion with a previously existing mark “CASA”. However, the registration is proceeding in relation to other classes following a decision of the Community Trade Mark Office. The Complainant’s application also remains pending in Australia and the United States. Listed at Annex F are summaries of the status of the applications.
The Complainant submits that as a result of the extreme and unprecedented popularity of Kazaa Media Desktop and the Complainant’s active and continued promotion of it and of the Kazaa brand, it has established a strong secondary meaning in the form of a ready association among hundreds of millions of consumers worldwide between the “KAZAA” mark and the source of a specific and powerful P2P application.
Having considered the evidence referred to above of both unregistered and registered
trade mark rights and taking into account the lack of any evidence to the contrary
from the Respondent the Panel is satisfied that the Complainant has rights in
the trade mark “KAZAA”.
5. Parties’ Contentions
The Complainant submits that:-
A. The domain name in dispute is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.
B. The Respondent has no rights or legitimate interests in respect of the domain name.
C. The domain name was registered and has been used in bad faith.
The Respondent did not reply to the Complainant’s
6. Discussions and Findings
In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within the Policy is present. These are as follows:-
(i) the domain name dispute is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name is registered and is being used by the Respondent in bad faith.
The Panel proceeds to deal with each of these in turn:-
A. Identical or confusingly similar.
The Panel has already found that the Complainant has registered and unregistered rights in the mark “KAZAA”. The issue which the Panel has to decide is whether the domain name in dispute is identical or confusingly similar to the trade mark “KAZAA”.
The Complainant submits that the domain name is identical or confusingly similar to the “KAZAA” mark. It relies upon the fact that the domain name includes the mark “KAZAA” so as to attract consumers to a site or sites, that without authorisation from the Complainant, charge a fee to use as a free download of a P2P software programme dubbed “Kazaa-lite”. This is substantially similar to and allegedly infringes the copyright in Kazaa Media Desktop. It submits that this constitutes a trade mark infringement. It also submits that this will and does cause confusion in the market place in the source of the products and services offered on the Respondent’s sites and this also constitutes trade mark infringement.
In particular, the Complainant submits that the domain name in dispute utilises
the “KAZAA” mark “exactly”. The presence of a suffix
or other words in a domain name that otherwise uses the Complainant’s
mark verbatim constitutes confusing similarity. It relies upon a number of previously
panel decisions in support of this including for example, Sharman License
Holdings, Limited v. KazaaLite.com (WIPO
Case No. D2004-0402). It also submits in addition that the generic “.com”
top level domain does not affect the issue. It submits that it is beyond cavil
that the use of the Complainant’s mark is likely to cause confusion among
consumers as to the source of the Complainant’s perceived affiliation
with or sponsorship or approval of each of the infringing domain names at issue.
In the Panel’s view the domain name in dispute is confusingly similar to the trade mark “KAZAA”. The Panel relies on the fact that the word “lite” is descriptive and that otherwise the use in the domain name of the word “Kazaa” is identical to the mark which the Complainant has trade mark rights. It also accepts on the basis of a considerable body of authority that the issue of confusing similarity is not affected by the use of the generic “.com” of level domain.
The Panel therefore finds for the Complainant in relation to this element.
B. Rights or Legitimate Interests
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name the subject of the dispute for the following reasons:-
(i) The Complainant knows of no evidence that before any notice to the Respondent of the dispute, the Respondent had 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 and services.
(ii) The Complainant knows of no evidence that the Respondent has been commonly known by the domain names. Rather to the contrary it is the Complainant’s software that has been commonly and widely known by such name.
(iii) The Respondent does not make a legitimate non-commercial or fair use of the domain names. Rather he uses the name “Kazaa” for his own commercial gain diverting consumers misleadingly to the site in question and charging a fee for access to the file sharing software that is not Kazaa Media Desktop.
In the absence of any evidence from the Respondent, the Panel accepts the submissions of the Complainant. In particular, the Panel accepts the Complainant’s submission that there is no evidence that the Respondent has been commonly known by the domain names and that it is the Complainant’s software that it has been commonly and widely known by the domain name and that it is the Complainant’s software that has been commonly and widely known by the name “Kazaa” compelling. It therefore finds for the Complainant in respect of this element.
C. The domain name was registered and is being used in bad faith
The Complainant’s submission is that the domain name has been registered and used in bad faith because it appears it has been registered for improper purposes including disrupting the Complainant’s business. It submits that the name is designed to attract, for commercial gain, Internet users to its sites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the site of the products offered thereof. It relies upon the fact that the Complainant’s mark is extremely well-known and readily associated with P2P share ware such that the Respondent surely knew of the success and popularity of the Kazaa application when the domain name was registered. In this regard, the Panel notes that there was no evidence in the Complaint of the date when the domain name was registered nor is this apparent from the Registrar’s verification response.
In the absence of any submissions to the contrary
from the Respondent the Panel having found that the Complainant’s mark
is extremely well-known used and advertised feels able to accept the evidence
that the name will attract Internet use to the site by creating a likelihood
of confusion with the Complainant’s mark. It accepts the submission that
the Respondent “surely knew the success and popularity of the Kazaa application
when it registered the domain name in dispute”. It therefore follows that
the Respondent registered and used the domain name in bad faith. Accordingly,
the Panel finds for the Complainant in respect of this element.
For the foregoing reasons and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel finds for the Complainant and orders that the domain name <get-kazaa-lite.com> be transferred to the Complainant.
Clive Duncan Thorne
Dated: October18, 2004