WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sharman License Holdings, Limited v. Mario Dolzer
Case No. D2004-0935
1. The Parties
The Complainant is Sharman License Holdings, Limited of Port Vila, Vanuatu, represented by Genga & Associates, P.C. of Encino, California, United States of America.
The Respondent is Mario Dolzer of Muenchen, Germany, represented by Buckingham, Doolittle & Burroughs, LLP of Columbus, Ohio, United States of America.
2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with PSI-USA, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2004. On November 9, 2004, the Center transmitted by email to PSI-USA, Inc. a request for registrar verification in connection with the domain names at issue. On November 11, 2004, PSI-USA, Inc. 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 November 24, 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 November 25, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was December 15, 2004. The Response was filed with the Center on December 14, 2004.
The Center appointed Nels T. Lippert as the sole panelist in this matter on January�28,�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.
On February 10, 2005, Respondent filed with the Center a motion to suspend proceedings due to filing of a court proceeding. On March 9, 2005, the Panel issued Administrative Panel Procedural Order No. 1 requiring the Respondent to submit certain documentation with respect to the court proceeding and inviting the Complainant to provide brief comments on the motion to suspend proceedings. Following Respondent’s timely submission of the required materials and Complainant’s opposition, the Panel issued Administrative Panel Procedural Order No. 2 on March�21,�2005, denying Respondent’s motion to suspend proceedings.
Thereafter, Complainant requested addition of three additional disputed domain names to the proceeding and submitted an Amended Complaint. The Panel accepted the addition of the three additional domain names to the case; the Respondent was notified and a Response to the Amended Complaint was timely filed.
4. Factual Background
Complainant owns the KAZAA trademark through agreements with a related entity, Sharman Networks Limited, which acquired the marks and related rights from Kazaa BV in January�2002. Complainant also owns the domain name and website to which it resolves.
Complainant has registered the KAZAA mark with the Benelux countries and has applied for registration in the European Union, Australia and the United States.
The disputed domain names were all registered by Respondent subsequent to Complainant’s acquisition of the KAZAA mark in January 2002.
5. Parties’ Contentions
A. Complainant
Complainant contends that it owns the KAZAA mark as well as the domain name, website and related websites which are used in connection with the Kazaa Media Desktop application for advertising and other purposes. Due to the popularity of the Kazaa Media Desktop and Complainant’s active and continued promotion of it and of the KAZAA brand, Complainant contends that the KAZAA mark has established strong secondary meaning.
According to Complainant, the disputed domain names are all confusingly similar to the KAZAA mark in that each represents variations of the word “Kazaa”, known as typosquatting, or include the addition of a common or generic term which does not create a new or different trademark.
Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names because Respondent has not and does not offer the Kazaa Media Desktop and has no license from Complainant to do so. Furthermore, Complainant states that it knows of no evidence that Respondent has been commonly known by any of the disputed domain names and does not make a legitimate non-commercial or fair use of the disputed domain names. Rather, according to Complainant, Respondent uses the disputed domain names for its own commercial gain by diverting consumers to its own websites.
The Complainant further contends that the disputed domain names have been registered and used in bad faith by the Respondent because they have been registered for improper purposes, including disrupting Complainant’s business. According to Complainant, Respondent knew of the success and popularity of the Kazaa application when registering the disputed domain names and that by using the KAZAA mark in the domain names it would attract Internet users aware of the KAZAA mark to the respective websites that the disputed domain names point to. Complainant further asserts that because the KAZAA mark is a non-generic invented word, it is not a term a domain name registrant such as Respondent would legitimately choose unless it was seeking to create an impression of association with Complainant. Finally, according to Complainant, the websites to which the domain names resolve all employ metatags entered by the Respondent which contain confusingly similar variations of the KAZAA word mark and clearly indicate that the Complainant was the target of the Respondent’s activities.
B. Respondent
Respondent contends that although all of the disputed domain names incorporate Complainant’s trademark in one form or another, none competes or interferes with Complainant’s business and, in fact, enhances Complainant’s business by offering informational forums and supplemental documents for users of Complainant’s goods and services. According to Respondent, each of the disputed domain names resolves to a website describing Respondent’s discussion forum for Kazaa users and invites users to read the rest of the forum postings by clicking a link that directs users to download Respondent’s proprietary dialup software that allows users to navigate Respondent’s entire forum on all topics. Therefore, Respondent contends that its use of Complainant’s trademark in the disputed domain names is a non-competitive, fair use of Complainant’s trademark because it describes the nature of Respondent’s services. In short, Respondent asserts that the goods and services offered on Respondent’s websites are not competitive with Complainant’s goods and services and Respondent’s use of Complainant’s trademark in its domain names is merely descriptive of Respondent’s goods and services. This use therefore amounts to nominative use of Complainant’s trademark which is a non-competitive fair use.
Respondent further contends that Complainant has not demonstrated that Respondent registered and is using the disputed domain names in bad faith. Specifically, Respondent contends that it has legitimately used Complainant’s trademark for a discussion forum on Complainant’s product and that there is no evidence that Respondent registered the disputed domain names to disrupt Complainant’s business or that Respondent registered and used the disputed domain names in an intentional attempt to attract users to Respondent’s websites by creating a likelihood of confusion with Complainant’s mark.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain names transferred to it, Complainant must prove the following (paragraph 4(a)(i)-(iii) of the Policy):
(i) the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names were registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four non-exclusive, but illustrative, circumstances or acts that for purposes of paragraph 4(a)(iii) above would be evidence of the registration and use of the domain names in bad faith.
Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by the Respondent, would demonstrate the Respondent’s rights or legitimate interests in the domain names for purposes of paragraph 4(a)(ii).
A. Identical or Confusingly Similar
The Panel finds that each of the disputed domain names is identical or confusingly similar to a trademark in which Complainant has rights. Respondent does not dispute that KAZAA is a trademark in which Complainant has rights. Indeed, Respondent, in its fair use defense, admits Complainant’s trademark rights in the KAZAA name. Moreover, Respondent has admitted that each of the disputed domain names incorporates Complainant’s trademark in one form or another.
Apart from Respondent’s admissions, it is well established that the addition of a common generic term to an established trademark in a domain name does not create a new trademark or avoid confusion. America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (April 23, 2001); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (January 19, 2001). Disregarding generic top-level domains and other generic terms, all but 9 of the disputed domain names are identical to Complainant’s mark. These 9 are all misspellings of Complainant’s trademark by the deletion or addition of one or both of the letters “a” and “z”. The deletion or addition of a letter is an insignificant change for the purposes of paragraph 4(a)(i) of the Policy. See Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716 (September 5, 2000) (finding that deleting the letter “s” from complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). Two of the domain names, and , combine Complainant’s trademark with the trademark of a third party. The addition of the third party’s trademark does not effect a finding of confusing similarity under the Policy. See Pfizer, Inc. v. Martin Marketing, WIPO Case No. D2002-0793 (November 15, 2002).
B. Rights or Legitimate Interests
The Panel further finds that Respondent has no rights or legitimate interests in the disputed domain names. It is not refuted that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the KAZAA mark in a domain name or in any other manner. Respondent does not assert that it was commonly known by the domain names in dispute.
Respondent not only admits but asserts affirmatively that the disputed domain names were acquired after knowledge of Complainant’s trademark rights. Respondent’s principal defense is that its use of the disputed domain names is a fair use in that the disputed domain names provide information by offering informational forums and supplemental documents for users of Complainant’s goods and services. Respondent also asserts that the use of Complainant’s trademark in the disputed domain names is a fair, nominative use because the Respondent’s domain names describe the line of products sold by Respondent. Yet, the disputed domain names do not resolve to a commentary site nor are they only descriptive of the goods and services of Respondent. Rather, they resolve to websites which offer Respondent’s non-related goods and services, as well as the goods and services of others, such as links to pornographic websites. With regard to the fair use commentary claim, the Panel notes that the websites to which the disputed domain names resolve are not, in and of themselves, commentary sites and even if they were, do not solely provide commentary with respect to the Kazaa Media Desktop application. The authorities cited by Respondent are not compelling because the disputed domain names are, as noted above, not linked to commentary websites and further because the Respondent’s domain names do not accurately describe only that which is being sold on the respective websites. Because the respective websites offer services and goods of others, the use of Complainant’s trademark in the disputed domain names is not a fair use. Therefore, despite Respondent’s claim to the contrary, by using the disputed domain names to divert Internet users seeking Complainant’s website to Respondent’s website, the Respondent is not making a bona fide commercial use of the domain names. See Microsoft Corporation v. M aka Tarek Ahmed, WIPO Case No. D2000-0548 (July�21,�2000).
C. Registered and Used in Bad Faith
Respondent does not dispute that it had actual notice of Complainant’s mark and registered domain name incorporating Complainant’s mark prior to registering the disputed domain names. Respondent has offered no justification for registering all of the 27 disputed domain names other than alleging a fair use which, as noted above, the Panel finds to be not compelling. Indeed, the sheer number of disputed domain names compels a different conclusion.
Respondent not only fails to contest but affirmatively asserts that Internet users that are directed to its website are provided links to Respondent’s goods and services. Therefore, the Panel finds that the disputed domain names are registered and used in bad faith because Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark.
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, , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Nels T. Lippert
Sole Panelist
Dated: January 31, 2006
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