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Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments [2004] GENDND 1306 (29 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments

Case No. D2004-0659

1. The Parties

The Complainant is Sharman License Holdings, Limited, Port Vila, Vanuatu, represented by Genga & Associates, P.C., United States of America.

The Respondents are Dustin Dorrance/Dave Shullick and Euclid Investments. Dustin Dorrance of Amherst, Ohio, United States of America; Dave Shullick of North Ridgeville, Ohio, United States of America; Euclid Investments of Nassau, U.S. Virgin Islands, United States of America.

2. The Domain Names and Registrar

The disputed domain names are <kazaa-lite-downloads.com>, <kazaa-media.net>, <kazaa-music.net> and <kazaa-software-download.com>. They are registered with Go Daddy Software.

3. Procedural History

The original Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2004. On August 19, 2004, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On August 20, 2004, Go Daddy Software transmitted by email to the Center its verification response, which pointed out that the Respondent to the original Complaint, Domains By Proxy, Inc was not the current registrant of the domain names.

On the August 25, 2004, the Center gave notice to the Complainant that the correct registrants of the disputed domain names were as follows:

<kazaa-music.net>, Dave Shullick;

<kazaa-software-download.com>, Euclid Investments;

<kazaa-media.net>, Dustin Dorrance;

<kazaa-lite-downloads.com>, Dustin Dorrance;

In response on August 30, 2004, the Complainant submitted an Amended Complaint to the Center. The Center verified that the Amended 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 Respondents of the Complaint and the proceedings commenced on September 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was October 5, 2004. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 7, 2004.

The Center appointed Clive Duncan Thorne as the sole panelist in this matter on October 15, 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.

No interlocutory orders have been issued by the Panel. The Panel considers the Complaint on the basis of the Amended Complaint and in respect of the Respondents the subject of the Amended Complaint. The language of the proceedings is English.

The Amended Complaint named three separate Respondents to the proceeding. The Panel finds that, given that the domain names were all registered with the same registrar, using the Domains by Proxy service, and were all directed to essentially identical websites, it is most likely that the domain names were controlled by a single party. Therefore it is appropriate to consolidate the case involving multiple Respondents and multiple domain names in a single case.

The Complainant submits that Domains by Proxy Inc, was originally used as the registrant of the sites at issue because the true owner of the sites wished to evade identification. The Complainant maintains however that all of the domain names are owned by, licensed through or connected with a network of sites owned and operated by a Mr. William Smith of Glendale, California, USA, either individually or through businesses he has created. The Complainant contends that Mr. Smith and his businesses; Almond Networks Inc., Active Publishing and mp2downloadhq.com should be deemed additional Respondents to the Complaint. The Panel takes the view neither Mr. Smith nor his three business entities are properly party to the amended Complaint. It decides this Complaint on the basis of the evidence relating to the three Respondents named in the amended Complaint only.

4. Factual Background

The Complainant adduces evidence of registered and unregistered trade mark rights. In particular, the Complaint 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-2-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 the 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 licence to certain software modules within the Kazaa Media Desktop application that were not purchased at the time.

The Complainant asserts that the Kazaa media desktop has been the most popular downloadable software application in Internet history with downloads of nearly 350 million 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 as Exhibit E to the Complaint.

The Complainant has also filed for registration of the trade mark “KAZAA” in a number of jurisdictions including 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 rejection was 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 Exhibit F are summaries of the status of the applications.

The Complainant submits that as 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.

5. Parties’ Contentions

A. Complainant

The Complainant submits that:-

A. The domain names in dispute are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. The Respondents have no rights or legitimate interests in respect of the domain names.

C. The domain names were registered and have been used in bad faith.

B. Respondents

The Respondents have not replied to the Complainant’s contentions.

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 in 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

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 Respondents the Panel is satisfied that the Complainant has rights in the trade mark “KAZAA”.

The issue which the Panel has to decide is whether the domain names in dispute are identical or confusingly similar to the trade mark “KAZAA”.

The Complainant submits that the domain names are identical or confusingly similar to the “KAZAA” mark. It relies on the fact that all the domain names in dispute include the mark “KAZAA”. The Complainant submits that each of the domain names includes the mark “KAZAA” to attract consumers to a site or sites that without authorisation from the Complainant, charge a fee to users to direct them to various sites that offer downloads of P2P software programme.

The Complainant submits that each of the disputed domain names utilises the “KAZAA” mark exactly.

The Panel has considered each of the disputed domain names separately. It is apparent that each of the domain names use the mark “KAZAA” in conjunction with a description thus the domain name <kazaa-music.net> uses a descriptive word “music”. The domain name <kazaa-software-download.com> uses the description “software-download”. The domain name <kazaa-media.net> uses the descriptive word “media” and the domain name <kazaa-lite-downloads.com> uses “lite-downloads” to qualify the name Kazaa.

There are no submissions to the contrary from the Respondents and in these circumstances the Panel is prepared to accept and find that the four domain names in dispute are confusingly similar to a trade mark or service mark i.e. the mark “KAZAA” in which the Complainant has rights. The addition of descriptive word that describes Complainant’s business to Complainant’s trade mark renders the domain names confusingly similar.

B. Rights or Legitimate Interests

According to the Complainant the WHOIS database of the Registrar indicates the Respondents to be private registrants who registered the domains through Domains by Proxy Inc, and the administrative and technical contacts for the domains were listed as “Private”. Copies of the printout of the database searches which were conducted to support the original Complaint were annexed as Annex A to the original Complaint. Since the filing of the original Complaint the correct registrants of the domain names have been revealed to the Complainant as above.

In support of its submissions in relation to rights or legitimate interests in respect of the domain name, the Complainant contends that it knows of no evidence that the Respondents or those on his behalf they are actively using or demonstrably prepared to use the domain names or a corresponding domain name in connection with a bona fide offering of goods or services. In particular Respondents did not or do not offer the Kazaa Software and have had no licence from the Complainant to do so. Instead the Complainant asserts that the Respondents use the mark “KAZAA” to lure users into purchasing a list of sites from which to download P2P applications and in particular use the domain name <kaza-lite-downloads.com> to make available for direct download a programme dubbed “Kazaa Lite” that infringes both the KAZAA mark and the copyright in Kazaa Media Desktop.

The Complainant also submits that it knows of no evidence to the effect that the Respondents or anyone on their behalf have been commonly known by the domain names. The fact that it is the Complainant’s software that has been commonly and widely known by the name “Kazaa” coupled with the fact that the domain names were not registered until well after the popularity of Kazaa Media Desktop had been established is evidence that the Respondents are using the domain names incorporating Kazaa without any rights or legitimate interests.

In the absence of any submissions to the contrary from the Respondents the Panel accepts these submissions and finds that the Respondents have no rights or legitimate interests in respect of the domain names in dispute.

C. The domain name was registered and is being used in bad faith

The Complainant submits:-

“(i) The domain names have been registered and used in bad faith by the Respondents. They appear to have been registered for improper purposes including disrupting the Complainant’s business. They are designed to attract for commercial gain Internet users to the sites at issue by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the sites or of the products offered on those sites. The Complainant asserts that the Respondents surely knew of the success and popularity of the Kazaa application when they registered the domain names in dispute.

(ii) That they registered domain names through a proxy service to conceal their identities and that the use of the mark in the domain names would attract Internet users aware of the Kazaa software. In support of this submission the Complainant asserts that the term “Kazaa” is a non-generic invented word.

(iii) The dispute has a long history that demonstrates bad faith. All of the sites at issue appeared to affiliate with the site at “www.mp3downloadhq.com”. Each site when the user chooses to subscribe to the service, directs the user to a menu of subscription choices which, when clicked, all go to an iBill payment page that reads “iBill is the designated Payment Processor for mp3downloadhq.com, brought to you by activpublishing”. In addition, the various sites have links for contacts, privacy policy and/or terms of use which connect to pages reflecting mp3downloadhq.com as their source. Copies of the payment pages for each of the domain names are exhibited at Exhibit G to the Complaint.”

The Complainant relies upon a letter dated August 19, 2003, exhibited at Exhibit H, which is a demand letter sent to Mr. William Smith requesting that he cease offering Kazaa Lite and using the Kazaa name and marks to attract Internet users to his Website. A response was received by email on October 9, 2003, from lawyers acting for Mr. Smith confirming that there was no longer any presence on the site of the Kazaa Lite programme. Assurances were given that all infringing content would be removed from the site.

However it would appear that in March, April and May 2004, as can be seen from Exhibit A, new sites with the domain names at issue were established and that these sites were connected with mp3downloadhq.com as their contacts.

In the Panel’s view the links between the Respondents in the current Complaint, Mr. Smith and his business entities including Active Publishing and Almond Networks are not clear. This may be due, as the Complainant asserts, that there have been attempts by the relevant parties to “render themselves anonymous”. What is however clear in the Panel’s view is that there is no evidence of a justifiable reason for the use of the mark “KAZAA” in the domain names in dispute and that when they were registered in March, April and May 2004 (as can be seen from Exhibit A) the Respondents must have been aware and had constructive notice of the Complainant’s rights in the mark “KAZAA”.

No evidence to the contrary has been adduced by the Respondents and in these circumstances the Panel finds that the domain names were registered and are being used in bad faith.

7. Decision

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 names < kazaa-music.net>, <kazaa-software-download.com>, <kazaa-media.net> and <kazaa-lite-downloads.com> be transferred to the Complainant.

Clive Duncan Thorne
Sole Panelist

Dated: October 29, 2004