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Société Française du Radiotéléphone - SFR v. LaPorte Holdings [2005] GENDND 79 (25 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sharman License Holdings Limited v. Mark Jackson and ProxyOne Domain Trust

Case No. D2004-0965

1. The Parties

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

The Respondents are Mark Jackson of New York, United States of America and ProxyOne Domain Trust of Riverview, of Florida, United States of America.

2. The Domain Names and Registrars

The disputed domain name: <kazaa-file-sharing-downloads.com> is registered with eNom.

The disputed domain names are:

<install-kazaa-lite.biz>
<kazaa-desktop.biz>
<kazaa-direct.com>
<kazaa-downloads-direct.com>
<kazaa-downloads.net>
<kazaa-downloads-online.com>
<kazaa-downloads-site.com>
<kazaa-downloads-zone.com>
<kazaa-gold.biz>
<kazaa-light-download.biz>
<kazaa-lite-com.biz>
<kazaa-lite-old.biz>
<kazaa-lite-old-version.biz>
<kazaa-lite-plus.biz>
<kazaa-lite-ressurection.biz>
<kazaa-lite-resurection.biz>
<kazaa-lite-resurrection.biz>
<kazaa-mac.biz>
<kazaa-media.biz>
<kazaa-media-desktop.biz>
<kazaa-music.biz>
<kazaa-old.biz>
<kazaa-old-version.biz>
<kazaa-online.com>
<kazaa-resurection.biz>
<kazaa-search.biz>
<kazaa-skin.biz>
<kazaa-ultra.com>
<kazzaa.info> and
<k-kazaa.biz>

and are registered with Go Daddy Software.

The disputed domain names and the registrars are collectively referred to below as the “Domain Names” and the “Registrars”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on November 12, 2004, and in hard copy on November 15, 2004. The Center transmitted its request for registrar verification by email to the Registrars on November 15, 2004. The request referred by mistake to <kazaa-desktop.com> instead of <kazaa-desktop.biz>.

Go Daddy Software replied by email on November 15, 2004, confirming that it was the registrar of the domain names referred to in the request with the exception of <kazaa-desktop.com> and <kazaa-file-sharing-downloads.com>; that the Respondent, Mark Jackson, was the current registrant of these domain names; that it had received a copy of the Complaint; that the Uniform Domain Name Dispute Resolution Policy (the “Policy”) applied to these registrations; that these domain names would remain locked during the administrative proceeding; that the language of the registration agreement was English; and that the registrant had submitted in this agreement to the jurisdiction at the location of the registrar’s principal office for court adjudication of disputes concerning or arising from the use of the domain names. Go Daddy Software also provided the contact details for the registrant in its Whois database.

The Center subsequently verified from Go Daddy Software’s Whois database that the domain name <kazaa-desktop.biz> was also registered in the name of the Respondent, Mark Jackson, with Go Daddy Software as the registrar and the same contact details as the other disputed domain names registered with Go Daddy Software. The Center notified Go Daddy Software that <kazaa-desktop.biz> was included in the Complaint and requested that it be locked in accordance with paragraph 8 of the Policy.

eNom also replied to the Center’s request for registrar verification by email on November 15, 2004, confirming that the domain name <kazaa-file-sharing-downloads.com> had been locked to prevent any changes during this proceeding; that its registration agreement was in English and required the registrant to consent to the jurisdiction of the Federal and State Courts located in King County, Washington. eNom did not provide the other information requested by the Center, but stated that the current contact information could be accessed using the Whois facility provided on its website. Using this facility, the Center verified that this domain name was registered with Enom in the name of ProxyOne Domain Trust and ascertained the contact details. The Panel has verified that eNom’s registration agreement incorporates the Policy and that its principal office is located in King County, Washington, United States of America.

The Center verified that the Complaint satisfied the formal requirements of 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 Complaint to the Respondents and the proceedings commenced on November 19, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 9, 2004. The First Respondent, Mark Jackson, responded to the Complaint by a short fax sent to the Center on November 29, 2004. Although this fax does not comply with the requirements of paragraph 5 of the Rules, the Panel admits it under its general powers in paragraph 10 of the Rules.

The Center appointed Jonathan Turner as the sole panelist in this matter on December 21, 2004. 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. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondents and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The mark KAZAA has been used on a very large scale in relation to software, called “Kazaa Media Desktop”, which enables peer-to-peer communications over the Internet. As of April 2004, the software had been downloaded over 350 million times. The software was previously supplied by a Dutch company, Kazaa BV. That company assigned the right to use the mark KAZAA in relation to the software to Sharman Networks Limited (“SNL”) in January 2002. By an assignment and licence taking effect on June 6, 2003, ownership of the mark KAZAA was assigned by SNL to the Complainant and licensed back to SNL.

The Complainant has registered the mark KAZAA in the Benelux countries and its applications for registration are under examination in various other trademark registries. Its application was rejected by the EU trademark office (OHIM) in relation to classes 9 and 42 on the opposition of the proprietor of the German registered mark “Casa”, but is proceeding in relation to classes 35, 38 and 41.

The Domain Names are registered in the name of the First Respondent, Mark Jackson, with the exception of <kazaa-file-sharing-downloads.com>, which is registered in the name of the Second Respondent, ProxyOne Domain Trust. All of the Domain Names are hosted on the same internet server. Some of the Domain Names registered in the name of Mark Jackson point to a website or websites providing hyperlinks to an executable file in a sub-directory at kazaa-file-sharing-downloads.com.

Most of the Domain Names are not in use for accessible websites. However, nine of the Domain Names resolve to web pages which promote and/or provide links through which internet users can apparently obtain software described as modified versions of Kazaa Media Desktop containing no spyware or adware and enabling faster copying.

The domain name <kazaa-file-sharing-downloads.com> resolves to a page which contains an article relating to copyright infringement proceedings pursued by record companies in respect of the Kazaa Media Desktop software, followed by the statement “Kazaa is freeware. This site is not affilated [sic] with Sharman Networks”. This page also contains links through which users can apparently obtain peer-to-peer communication software described as “KaZaA for Mac Users / The all new MorpheusMac File Grabber 1.6”.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Second Respondent holds the domain name <kazaa-file-sharing-downloads.com> as a proxy for the First Respondent and that the latter is therefore the real registrant of all of the Domain Names.

The Complainant contends that it has registered and unregistered rights in the trademark KAZAA and that the Domain Names are confusingly similar to this mark. The Complainant points out that all of the Domain Names incorporate the mark KAZAA or a misspelling of it together with common, descriptive indications.

The Complainant further contends that the Respondents do not have any rights or legitimate interests in respect of the Domain Names and that they were registered and are being used in bad faith, in particular to disrupt the Complainant’s business and to attract internet users to the First Respondent’s websites by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of those sites or the products offered on them. The Complainant relies on the absence of use by the First Respondent of the majority of the Domain Names even though some of them were registered two years ago, and on the use of the mark “Kazaa” in metatags on the First Respondent’s websites.

The Complainant requests a decision that the Domain Names be transferred to itself.

B. Respondents

The First Respondent states in his fax that he purchased the Domain Names after they were abandoned by another party or cancelled, in order to gain traffic for search results. He does not dispute that he is the real registrant of all of the Domain Names or that the Complainant has rights in the mark “Kazaa”.

However, he contends that fair or nominative use may be recognized where a reader is clearly able to understand that the use of the mark does not suggest sponsorship or association with its owner’s products or services and therefore is not being used in a manner to confuse the reader.

He claims that kazaa-file-sharing-downloads.com complies fully with this principle, since it is clearly stated at the bottom of his website that “Kazaa is freeware. This site is not associated with Sharman networks”. He submits that this shows that he is not using the “Kazaa” name in bad faith or attempting to attract internet users to his website by creating a likelihood of confusion with the Complainant’s mark. He contends that there is no confusion and that this applies to all of the Domain Names listed in the Complaint.

He adds that he can cancel the Domain Names, which do not yet contain a web page.

6. Discussion and Findings

A. Parties

The First Respondent, Mark Jackson, does not dispute that he is the real registrant of all of the Domain Names; on the contrary, he seeks to explain in his fax why he registered them and he admits that the website at <kazaa-file-sharing-downloads.com> is his.

The Panel is satisfied that the First Respondent is the real registrant of all of the Domain Names, and that the Complaint accordingly complies with paragraph 3(c) of the Rules (which states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder).

In accordance with this finding, the First Respondent is referred to below as the “Respondent”.

B. Requirements of the Policy

In accordance with paragraph 4(a) of the Policy, to succeed in a complaint under the Policy, a complainant must prove (i) that the disputed domain names are identical or confusingly similar to a trademark in which it has rights, (ii) that the respondent has no rights or legitimate interests in respect of the disputed domain names, and (iii) that the domain names were registered and are being used in bad faith. These requirements are considered in turn below.

C. Identical or Confusingly Similar to Mark in which Complainant has Rights

The Complaint is not very clear as to what rights in the mark were transferred by Kazaa BV to SNL in January 2002. However, the assignment and licence between SNL and the Complainant of June 2003 recited that SNL was the legal and beneficial owner of this trademark prior to this transaction. In any case, the evidence is that SNL has used and promoted KAZAA as a trademark on a very extensive scale in relation to its peer-to-peer communication software in succession to Kazaa BV since January 2002. This use would in itself be capable of establishing rights in the mark, which SNL could transfer to the Complainant in June 2003, and thereafter maintain for the Complainant by use as its licensee. The Complainant also has registered rights in the trademark in the Benelux countries. In these circumstances, the Panel considers that the Complainant has provided sufficient evidence of its title to the trademark KAZAA.

It is well known that the software supplied under the mark KAZAA is widely used to make infringing copies of copyright works. In many legal systems, trademarks are not entitled to protection if their use is illegal or contrary to public policy. However, the fact that the software is often used illegally does not mean that its supply by the Complainant’s licensee or predecessors has been illegal: see Metro-Goldwyn-Mayer Studios & others v Grokster & others (US 9^th Cir., August 19, 2004), Sony Corp. v. Universal City Studios, Inc., [1984] USSC 14; 464 U.S. 417 (US Supreme Court) and CBS Songs v. Amstrad Consumer Electronics [1988] UKHL 15; [1988] RPC 567 (UK House of Lords). Moreover, even if the supply of the software had been illegal, it would not follow that the trademark is itself objectionable: see the distinction drawn in the classic English case, Ford v. Foster (1870) 7 Ch App 611 between misrepresentations forming part of the mark and other misrepresentations made by the proprietor. In this case, the trademark, KAZAA, does not itself contain any misrepresentation or other matter contrary to public policy. Furthermore, the Complainant’s registration of the trademark in the Benelux countries may be presumed valid.

The Panel is therefore satisfied that the Complainant has rights in the trademark KAZAA, despite the objections which may be made to the business which has been carried on under it.

Two of the Domain Names (<kazzaa.info> and <k-kazaa.biz>) consist of a mis-spelling of the Complainant’s mark, KAZAA, and the gTLD suffix. The remainder of the Domain Names comprise the Complainant’s mark together with one or more common descriptive indications (“desktop”, “direct”, “downloads”, “file-sharing”, “gold”, “install”, “light”, “lite”, “media”, “music”, “old”, “old-version”, “online”, “plus”, “search”, “site”, “skin”, “ultra”, “zone”) and/or “resurrection” or mis-spellings thereof (which could well be taken to refer to the reorganization of the business at the beginning of 2002) or “Mac” (which would indicate compatibility with the “Mac” operating system), followed of course by the gTLD suffix. “Media” and “Desktop” have themselves been used by the Complainant and its predecessor in conjunction with “Kazaa” in the name “Kazaa Media Desktop”.

As the Complainant rightly points out, KAZAA is an inherently distinctive mark, and the added descriptive terms would indicate to many internet users either a variant, new, improved or restored version of the “Kazaa” software or business or the original software or business, and not an independent product or business. The domain names comprising miss-spellings of “Kazaa” would also be confused with Kazaa as a result of misspelling, mistyping or misreading of search results.

The Respondent appears to accept that he is using the Complainant’s trademark, but contends that there would be no confusion in view of the statement “Kazaa is freeware. This site is not affilated with Sharman Networks” on the website at “www.kazaa-file-sharing-downloads.com”. The Panel rejects this submission for several reasons.

In the first place, this point does not apply to any other of the Domain Names, since no such statement is present on any of the other websites.

Secondly, the Respondent advertises and provides a link to his software at the top of the web page at “www.kazaa-file-sharing-downloads.com”, whereas the statement is only at the end of the web page following a long article. The statement would not normally appear on an internet user’s screen unless he scrolls down. A person attracted to the website by the prospect of obtaining Kazaa software, indicated by the domain name <kazaa-file-sharing-downloads.com>, would be likely to follow the link at the top of the page, and would be unlikely to read as far as the statement.

Thirdly, even if a user reads through the article and understands the statement as signifying that the website is not connected with the Complainant, by this time the damage has already been done. Although the website is not what he was originally looking for, he may be tempted by the alternative offering, thereby enabling the Respondent to gain commercially from attracting internet users by his use of a domain confusingly similar to the Complainant’s mark.

In any event, it is well-established that the test of confusing similarity under the first requirement of the Policy is confined to a comparison of the disputed domain name and the complainant’s mark alone, and is not affected by the way in which the domain name is used: see, for example, Donvand Limited trading as Gullivers Travel Associates v. Gullivers Travel/Gulliver’s Travel Services, Gullivers Travel Agency and Metin Altun/GTA, WIPO Case No. D2004-0741 (<gtatravels.com>).

The Panel concludes that each of the Domain Names is confusingly similar to the Complainant’s trademark and that the first requirement of the Policy is met.

D. Rights or Legitimate Interests

The Respondent has used some of the Domain Names in connection with his offering of software said to be a modified version or versions of the Complainant’s software. Although he has not used all of the Domain Names in this way, it can be argued that they all correspond with the name “Kazaa” which he has used in the Domain Names and the content of his websites. However, this use would not confer any rights or legitimate interests in respect of the Domain Names on the Respondent in accordance with paragraph 4(c)(i) of the Policy unless it has been bona fide: see, for example, Mentor ADI Recruitment Ltd (trading as Mentor Group) v. Teaching Driving Ltd, WIPO Case No. D2003-0654 (<letsdrive.com>).

The Panel considers that the Respondent’s use of the mark “KAZAA” has not been bona fide. On the contrary, the use has been such as to mislead internet users into believing that they can obtain versions of the Complainant’s software approved by the Complainant from the Respondent’s websites. The Panel considers that many users would be misled even after accessing the Respondent’s websites, since there is no clear indication that the software offered is not approved by the Complainant, with the exception of the statement at the end of the page at “www.kazaa-file-sharing-downloads.com”, which is inadequate to dispel confusion for the reasons indicated above. Furthermore, as also noted above, the use of the Domain Names enables the Respondent to profit from confusion even where users realize after accessing the Respondent’s websites that the software offered is not approved by the Complainant.

The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the second requirement of the Policy is satisfied.

E. Registered and Used in Bad Faith

The Respondent states that he registered the Domain Names to increase traffic to his websites via search engines and he appears to accept that he has used the mark “Kazaa” in the Domain Names to attract internet users to his websites for commercial gain. However, he contends that he did not do so in bad faith since he was not trying to create a likelihood of confusion. He refers in particular to the statement at the end of the page at “www.kazaa-file-sharing-downloads.com” discussed above.

The Panel rejects the Respondent’s contention that he did not intend to cause confusion. The Panel considers that the Respondent undoubtedly intended to cause confusion at the stage of accessing his web pages. As noted above, even if this confusion is dispelled by the content of his web page, by then users have already been attracted to his website and the damage has been done. Furthermore, the inadequacy of the statement at the end of the page at “www.kazaa-file-sharing-downloads.com” as described above, and the absence of any attempt at disassociation on any of the other web pages, indicate that the Respondent intended to continue to confuse internet users even after they accessed his web pages; had he intended otherwise, he would have made the true position much clearer.

In these circumstances, the Panel considers that the Respondent has used the Domain Names which have been directed to his web pages to attract internet users to these web pages for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of these pages. This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

Although a majority of the Domain Names have not yet been directed to web pages, the Respondent admits that he registered all of them for the same purpose. His retention of the Domain Names for this purpose is itself a passive use of them in bad faith: see, for example, Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 (<ladbrokespoker.com>).

The Panel considers that the Domain Names were registered and are being used in bad faith, and that the third requirement of the Policy is satisfied.

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:

<kazaa-file-sharing-downloads.com>
<install-kazaa-lite.biz>
<kazaa-desktop.biz>
<kazaa-direct.com>
<kazaa-downloads-direct.com>
<kazaa-downloads.net>
<kazaa-downloads-online.com>
<kazaa-downloads-site.com>
<kazaa-downloads-zone.com>
<kazaa-gold.biz>
<kazaa-light-download.biz>
<kazaa-lite-com.biz>
<kazaa-lite-old.biz>
<kazaa-lite-old-version.biz>
<kazaa-lite-plus.biz>
<kazaa-lite-ressurection.biz>
<kazaa-lite-resurection.biz>
<kazaa-lite-resurrection.biz>
<kazaa-mac.biz>
<kazaa-media.biz>
<kazaa-media-desktop.biz>
<kazaa-music.biz>
<kazaa-old.biz>
<kazaa-old-version.biz>
<kazaa-online.com>
<kazaa-resurection.biz>
<kazaa-search.biz>
<kazaa-skin.biz>
<kazaa-ultra.com>
<kazzaa.info> and
<k-kazaa.biz>

be transferred to the Complainant.

Jonathan Turner
Sole Panelist

Dated: January 4, 2005