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Napster, Inc. v. John Gary [2005] GENDND 1795 (11 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Napster, Inc. v. John Gary

Case No. D2005-0913

1. The Parties

Complainant is Napster, Inc., Los Angeles, California, United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP, United States of America.

Respondent is John Gary, Vancouver, British Columbia, Canada.

2. The Domain Names and Registrar

The disputed domain names <napster4porn.info> and <sexnapster.info> are registered with Domainsite.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2005. On August 26, 2005, the Center transmitted by email to Domainsite.com a request for registrar verification in connection with the domain names at issue. On August 28, 2005, Domainsite.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 31, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was September 20, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 22, 2005.

The Center appointed Knud Wallberg as the sole panelist in this matter on September 27, 2005. 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

Complainant offers a subscription service to enable customers to sample and download digital music from the Complainant’s online collection of music.

NAPSTER is a registered trade mark of Complainant. The mark is registered in the United States of America for different goods and services including for services in international classes 38 and 42.

5. Parties’ Contentions

A. Complainant

On January 28, 2004 and September 14, 2004, Respondent registered <napster4porn.info> and <sexnapster.info> respectively. On April 21, 2005, Complainant sent a cease and desist letter to Respondent. Respondent did not reply to Complainant’s letter.

Prior to Repondent’s receipt of the letter, users who visited the Web sites located at <napster4porn.info> and <sexnapster.info> were immediately presented with numerous pornographic images. Though Respondent did not reply to Complainant’s letter, Respondent changed the content of the Web sites to a search page featuring numerous commercial links. Presumably, Respondent receives a commission for customers that are referred to the Web sites via Respondent’s Web sites. In fact, several of the links take users to music download services that directly compete with Complainant.

Identical or Confusingly Similar

To prevail under the Policy, a complainant must first show that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

Respondent has registered two domain names comprised of Napster’s NAPSTER mark, the phrases “SEX” and “4PORN” and the extension “.info.” The addition of “.info” is not sufficient to avoid a finding of confusing similarity. Moreover, the phrases “SEX” and “4PORN” are descriptive and generic and do not serve to distinguish Respondent’s domain names from Complainant’s mark.

Many UDRP panels have found that the mere addition of a generic term to a trademark is insufficient to prevent the domain name from being confusingly similar to the trademark. Respondent’s use of Complainant’s NAPSTER mark will likely confuse users who will believe that Respondent’s Web sites are somehow sponsored, approved by or affiliated with Complainant.

Rights or Legitimate Interests in respect of the Domain Names

Respondent has no rights or legitimate interests in the domain names as defined in paragraph 4(c) of the Policy. Respondent does not have permission to use Complainant’s mark. Complainant’s trademarks are among its most valuable corporate assets. Complainant has not licensed its NAPSTER mark to Respondent and would not license the mark for use in conjunction with the offering of pornographic content.

Respondent has not used and is not using the domain names in connection with a bona fide offering of goods or services as defined in paragraph 4(c)(i) of the Policy.

Respondent has not presented any legitimate reason for his use of Complainant’s mark in his domain names.

Respondent has not provided any evidence that he has been “commonly known by the domain names,” as an individual, business, or otherwise as described in paragraph 4(c)(ii) of the Policy. The Whois information for the domain names did not identify Respondent as “Napster.” The Web sites never purported to be owned or operated by an individual or entity named “Napster.”

Respondent is not “making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” according to paragraph 4(c)(iii) of the Policy. As described in detail below, Respondent’s use of the domain names is commercial, intended to divert customers and tarnish Complainant’s mark.

The Domain Names were Registered and are being Used in Bad Faith

Respondent registered and used <napster4porn.info> and <sexnapster.info> in bad faith by intentionally attempting to attract, for commercial gain, Internet users to his Web sites, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s Web sites as prohibited by paragraph 4(b)(iv) of the Policy. Respondent’s bad faith intent was borne out by the fact that he chose domain names incorporating Complainant’s famous mark and pointed them to commercial Web sites.

Bad faith may be found where the Respondent “knew or should have known” of the registration of a trademark prior to registering the domain names. Reference was made to several decisions under the Policy supporting this view.

Respondent knew or should have known about Complainant’s mark when he registered <napster4porn.info> and <sexnapster.info>. The NAPSTER mark was first used in 1999. Respondent did not register its domain names until January and September of 2004. Complainant’s world-wide presence and Respondent’s admissions leave no doubt that Respondent knew or should have known of Complainant’s NAPSTER mark prior to his registration of <napster4porn.info> and <sexnapster.info>.

Respondent registered <napster4porn.info> and <sexnapster.info> to draw Internet users to pornographic Web sites for commercial gain. Respondent’s site offered access to free and paid membership pornographic Web sites. The only reason for Respondent to register <napster4porn.info> and <sexnapster.info> is to use Complainant’s famous mark to draw users to Respondent’s sites.

Although Complainant does not offer or participate in the creation of pornographic content, Respondent’s use of Complainant’s mark may cause the public to believe that Complainant sponsors, approves or is affiliated with Respondent.

Respondent may claim that Internet users would not be confused as to Complainant’s sponsorship of the pornographic Web sites once they view the sites. Even if some users were not confused, Respondent’s registration of <napster4porn.info> and <sexnapster.info> would be in bad faith.

Applying this analysis, the mere fact that users may visit <napster4porn.info> and <sexnapster.info> to see if it is sponsored by or affiliated with Complainant constitutes bad faith because Respondent receives increased Web traffic through its use of Complainant’s mark.

Respondent’s current non-use of the domain names does not change the fact that he registered and used the domain names in bad faith. At any time Respondent could again point the domain names to a pornographic or other commercial site. Because he is using Complainant’s NAPSTER mark without permission, there is no good faith use that Respondent could make with the <napster4porn.info> and <sexnapster.info> domain names.

Respondent’s address “144 Floppy Drive” is not a valid address in Vancouver, British Columbia which is an additional indicium of Respondent’s bad faith.

Further, Respondent’s use of Complainant’s mark has and will continue to tarnish Complainant’s mark. Complainant offers digital music to the public, including children. Complainant has parental options to limit access by children to songs with explicit lyrics. Respondent’s use of Complainant’s marks to directly link to pornographic Web sites will tarnish the image Complainant has created to appeal to users of all ages.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide a Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with Paragraph 4(a) of the Policy, Complainant must prove that each of the three following elements are satisfied:

(i) The domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) The domain names have been registered and are being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The domain names <napster4porn.info> and <sexnapster.info> contain Complainant’s distinctive and well known trademark in its entirety. The addition of the descriptive components “4PORN” as suffix and “SEX” as prefix to the well-known trademark NAPSTER does not alter the fact that the domain names are confusingly similar to Complainant’s trademark. Likewise, the inclusion of the gTLD denomination “.info” shall be disregarded for the purpose of these proceedings.

The requirements in the Policy, paragraph 4(a)(i) are therefore fulfilled.

B. Rights or Legitimate Interests

Complainant alleges that Respondent has no rights or legitimate interests in the domain names. Respondent has not rebutted this allegation and, based on the record of this case, it is unlikely that any such rights or interests may exist.

Complainant has thus not licensed or otherwise permitted Respondent to use its trademark or to apply for any domain name incorporating the mark.

Further, NAPSTER is, to the best of the Panel’s knowledge, a coined word that has no specific meaning. It can therefore be ruled out that Respondent can claim to use the contested domain names for any generic or informative purpose.

The requirements of the Policy, paragraph 4(a)(ii) and paragraph 4(c) are also considered fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy further provides that Complainant must prove registration and use of the domain names in bad faith. Paragraph 4(b) sets out, by way of example, the kind of evidence that may be put forward.

Given the notoriety of Complainant’s trademark and the coined nature of the word NAPSTER it is inconceivable to the Panel that Respondent registered the domain names without prior knowledge of Complainant and Complainant’s marks and activities.

The contested domain names were, shortly after being registered, allegedly used for websites containing pornographic material and are now used for a kind of directory service for other sites containing adult material. In the Panel’s view, the present use of the contested domain names is in itself liable to disrupt or otherwise harm Complainant’s business. The Panel therefore needs not address in detail whether the other issues raised by Complainant are also a proof of bad faith or not.

Considering all the facts and evidence, the Panel therefore finds that the requirements of the Policy, paragraph 4(a)(iii) are also fulfilled in this case.

7. Decision

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 <napster4porn.info> and <sexnapster.info> be transferred to Complainant.

Knud Wallberg
Sole Panelist

Dated: October 11, 2005