WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lime Wire LLC v. MM (Mike Morgan)
Case No. D2007-0620
1. The Parties
The Complainant is Lime Wire LLC, New York, New York, United States of America, represented by Kaye Scholer, LLP, United States of America.
The Respondent is MM (Mike Morgan), Newfoundland, Canada.
2. The Domain Name and Registrar
The disputed domain name is registered with T, Inc./eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2007. On May 1, 2007, the Center transmitted by email to T, Inc. a request for registrar verification in connection with the domain name at issue. Having received no response from T, Inc., the Center verified the information available in the Whois database and found out that the registrant for the disputed domain name had been changed. On June 28, 2007, the Center notified the T, Inc. that the Center would proceed on the assumption that the information gathered from the public Whois database was correct unless the Center would receive a response from the registrar by June 30, 2007. T, Inc. never transmitted by email to the Center its verification response.
On July 3, 2007, the Center issued to Complainant a request for amending the Complaint to update the data of the holder of the domain name at issue. The Complainant filed an amendment to the Complaint on July 3, 2007 to reflect the registrant of the domain name at issue. 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 July 4, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 24, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2007.
The Center appointed Manoel J. Pereira dos Santos as the sole panelist in this matter on August 8, 2007. 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.
In view of the difficulties the Center was experiencing in receiving any confirmation from the relevant registrar on the registration status of the disputed domain name, the Panel conducted an independent search in the Whois database and verified that the disputed domain name registration has been transferred to another registrar and that eNom, Inc. now appears as the registrar. eNom, Inc. has subsequently confirmed that the registrant name and contact details remain unchanged. The status of the disputed domain name remains “locked”. The Panel notes that Paragraph 8 of the Policy provides that the registrant may not transfer the domain name registration to another registrar during a pending administrative proceeding brought pursuant to Paragraph 4 of the Policy or for a period of fifteen (15) business days after such proceeding is concluded.
The Panel also visited T, Inc.’s page where basically only the following notice is posted: “You have reached the , we are an ICANN Accredited. Our registrar specializes in acquiring domains for Club Drop customers, you can manage your domains in your control panel at eN.” Therefore, Panel notes that users are redirected to eNom, Inc. for domain name services.
4. Factual Background
The trademark upon which the Complaint is based is LIME WIRE. According to the documentary evidence and contentions submitted, Complainant owns a U.S. Trademark Registration for the LIME WIRE trademark No. 3,054,287 issued January 31, 2006. Complainant’s affiliate Tower Research Capital LLC owns Registration No. 2,169,639 for the LIMEWIRE trademark issued on August 2, 2002, by the European Union’s Office for Harmonization in the Internal Market. Reference is made to Annexes 3 and 4 to the Complaint. Complainant claims ownership of common law rights to the LIMEWIRE mark as a result of its extensive use thereof in the United States and abroad since 2000.
According to the documentary evidence and contentions submitted, Complainant is a software developer which specializes in building advanced file-sharing client/server software which connects computing devices over public and private networks. Complainant develops and offers a well known LIMEWIRE peer-to-peer file sharing software, which is distributed and used worldwide and is available in several different languages.
According to the documentary evidence and contentions submitted, Complainant owns the domain name which it uses to host a website to provide information about itself and its products.
Respondent registered the domain name with T, Inc. on August 30, 2006, and uses it to host a website which contains links to a variety of commercial sites as well as third-party pop-up advertisements.
5. Parties’ Contentions
A. Complainant
Complainant contends that the domain name (i) incorporates the well-known LIMEWIRE marks, (ii) merely appends to the term LIMEWIRE the generic term “store”, (iii) is confusingly similar to Complainant’s domain name, and (iv) is confusingly similar to Complainant’s LIMEWIRE’s marks.
Complainant further contends that Respondent does not have legitimate rights or interests regarding the disputed domain name because (i) Respondent does not have any affiliation with Complainant and has not been authorized by Complainant to register and use the disputed domain name or the LIMEWIRE mark; (ii) Respondent is not commonly known by the names “limewire”, “lime wire” or any variation thereof; (iii) Respondent has no trademark rights in the LIMEWIRE marks or the term “limewirestore”; and (iv) Respondent knew of Complainant’s LIMEWIRE marks prior to registration of the disputed domain name because Complainant’s adoption and registration of the LIME WIRE mark precede Respondent’s registration of the domain name and Complainant’s LIMEWIRE marks enjoy fame and notoriety.
Complainant also contends that there is no evidence that Respondent is making a legitimate non-commercial or fair use of the dispute domain name without intent for commercial gain. Complainant argues that Respondent is rather misleading and diverting Complainant’s customers to Respondent’s website, and that the use of the disputed domain name for a portal with links to websites that sell or offer either Complainant’s products or alternatives to Complainant’s products is not a bona fide use.
Complainant further contends that the bad faith of Respondent in registering the disputed domain name results from the following elements: (i) registration of a domain name that incorporates a well known trademark is itself evidence of bad faith registration; (ii) Respondent’s prior awareness of and bad faith intent to trade on LIMEWIRE marks are confirmed by the references to Complainant’s products on the home page of “www.” website; (iii) Respondent registered the disputed domain name to intentionally misdirect and divert customers looking for information about Complainant and its products; (iv) Respondent has shown a pattern of bad faith conduct; and (v) Respondent’s lack of rights or legitimate interest renders the issue of bad faith registration unnecessary to even be considered.
Finally, Complainant argues that Respondent’s bad faith use of the disputed domain name results from the following elements: (i) Respondent is using the domain name to host a website featuring revenue-generating advertisements and pay-per-click links to websites that offer competitors’ products as well as other for-profit sites; (ii) the public will be misled as to the source, sponsorship or origin of the information and products offered on the links connected to Respondent’s website; and (iii) Respondent’s actions are intentional, willful and in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Effect of the Default
The consensus view is that the respondent’s default does not automatically result in a decision in favor of the complainant and that the complainant must establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). However, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.
This Panel finds that there are no exceptional circumstances for the failure of the Respondent to submit a Response. As a result, the Panel infers that the Respondent does not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contac, WIPO Case No. D2003-0994. Therefore, asserted facts that are not unreasonable will be taken as true and the Respondent will be subject to the inferences that flow naturally from the information provided by the Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC v. Matthew Smit,. WIPO Case No. D2005-0540.
The Panel will now review each of the three cumulative elements set forth in paragraph 4(a) of the Policy to determine whether Complainant has complied with such requirements.
B. Identical or Confusingly Similar
The Panel notes that Complainant’s registered trademark is LIME WIRE, the LIMEWIRE trademark having been registered by an affiliate in the European Union, not in the United States of America. However, the elimination of the space between the words “lime” and “wire” to form the domain name is a difference without legal significance from the standpoint of comparing “” to the LIME WIRE trademark. The Panel also finds that the evidence of reputation of the Complainant’s LIMEWIRE mark is sufficient to show common law or unregistered trademark rights.
Relying on prior WIPO UDRP decisions, Complainant argues that the addition of generic or descriptive words does not create a different trademark in which Respondent has rights and cannot be considered as sufficient to avoid confusion between the domain name and the Complainant’s trademark. See, e.g., Pfizer Inc. v. Pretzel Publishing, WIPO Case No. D2005-1329 (use of word “stories”); Aventis Pharma SA v. Jonathan Valicenti, WIPO Case No. D2005-0037 (use of word “buy”).
In fact, it has been consistently decided that the addition of generic or descriptive terms to an otherwise distinctive trademark is to be considered confusingly similar to the trademark. This Panel also concurs with the opinion of several prior WIPO UDRP panels which have held that, when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Hitachi, Ltd. v. Arthur Wrangle, supra;. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. , WIPO Case No. D2002-0615.
In this type of combination it is clear that the Complainant’s trademark stands out and leads the public to think that the disputed domain name is somehow connected to the owner of that trademark. See Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159 (finding that the term “shop” is non-distinctive and may create an association with the trademark to which it is added).
Also, the addition of the suffix “.com” is non-distinctive because it is required for the registration of the domain name. RX America, LLC v. Mattew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582. In the instant case, Complainant owns the domain name and operates a website to which such domain name resolves. As a result, use of the disputed domain name is likely to cause confusion among Complainant’s customers and the public at large.
Therefore, the Panel finds that the requirement of paragraph 4(a)(i) of the Policy is met.
C. Rights or Legitimate Interests
The Panel finds as reasonable Complainant’s contentions that (i) Respondent does not have any affiliation with Complainant and has not been authorized by Complainant to register and use the disputed domain name or the LIME WIRE and LIMEWIRE marks; (ii) Respondent is not commonly known by the names “limewire”, “lime wire” or any variation thereof; (iii) Respondent has no trademark rights in the LIMEWIRE marks or the term “limewirestore”; and (iv) Respondent most likely knew of Complainant’s LIME WIRE and LIMEWIRE marks prior to registration of the disputed domain name.
Relying on prior WIPO UDRP decisions, Complainant argues that a registrant has no legitimate rights in a domain name which is used to sell or offer either original or competing products. See, e.g., Aventis Pharma SA v. Dukes, WIPO Case No. D2004-0276; Pfizer Inc. v. Schreiner, WIPO Case No. D2004-0731; Aventis Pharma SA and Merrell Pharmaceuticals Inc. v. RXUSA, WIPO Case No. D2002-0290; Lilly ICOS LLC v. Redzone, WIPO Case No. D2005-0534; Kabushi Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba, WIPO Case No. D2004-0941; Abbot Laboratories v. United Worldwide Express Co., Ltd., WIPO Case No. D2004-0088; Pfizer Inc. v. The Magic Islands, WIPO Case No. D2003-0870.
The Panel concurs with the prior WIPO UDRP decisions holding that there is no bona fide offering of goods or services where the disputed domain name resolves to a website containing links which direct the Internet user to various websites offering either original or competing products for sale.
Finally, the Panel finds that the Complainant has satisfied its burden of providing evidence to show that Respondent lacks rights to or legitimate interests in the disputed domain name. It has been established by previous WIPO UDRP decisions that, “while the overall burden of proof rests with the complainant, the burden of proof shifts to the respondent where the complainant establishes a prima facie case showing lack of rights and legitimate interests of the respondent to the disputed domain name”. Caixa D�Estalvis I Pensions de Barcelona v. Young N, WIPO Case No. D2006-0406; Croatia Airlines dd v. Modern Empires Internet Ltd., WIPO Case No. D2003-0455.
The Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465.
In light of the foregoing, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
(i) Bad Faith Registration
It is very unlikely that Respondent would have registered unless Respondent knew (i) of the existence of the LIME WIRE and LIMEWIRE marks, and (ii) that the domain name at issue might be of some type of economic advantage.
This Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. As decided before, “knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith”. Caixa D�Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. An additional, relevant element in this case is the circumstance that Complainant owns and operates a “www.” website with information about Complainant and its products.
The fact that Respondent has formed the domain name by only adding the generic and descriptive word “store” indicates that the combination was made in bad faith with the motivation to exploit user confusion as to source of, sponsorship by, affiliation with, or endorsement by Complainant. That conclusion is reinforced by the circumstance that the disputed domain name resolves to a website containing links to LIMEWIRE products or to alternatives to LIMEWIRE products. This is evidence of opportunistic bad faith. See Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648 (“The Panel is also of the opinion that the Domain Name is obviously connected with the Complainant, its products and services. Therefore, the Panel finds that its use by someone with no connection with the Complainant supports a finding of opportunistic bad faith”).
(ii) Bad Faith Use
The Panel concurs with the understanding of several other WIPO UDRP panels that the use of a domain name to point to a website that offers search engine services and sponsored links to complainant’s competitors and other websites is evidence of bad faith. Mudd, LLC v. Unasi, Inc., WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unais, Inc., WIPO Case No. D2005-0556.
A compelling factor in this case is the circumstance that Complainant had previously registered and used a domain name incorporating its trademark, i.e., . As found before, the public will be misled as to the source, sponsorship or origin of the information and products offered in Respondent’s website, and it is clear that the disputed domain name is being used to attract Internet users to the Respondent’s website for commercial gain. This is bad faith use for the purpose of the Policy.
The Panel concludes that the information provided by the Complainant, including the contents of the Respondent’s website, indicates bad faith in the acquisition and use of the subject domain name, and notes that Respondent has done nothing to supplant that indication.
Therefore, the Panel finds that the requirement of paragraph 4(a)(iii) of the Policy is met.
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 name be transferred to the Complainant.
Manoel J. Pereira dos Santos
Sole Panelist
Dated: August 20, 2007
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