WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lime Wire LLC v. David Da Silva / C
Case No. D2007-1168
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 David Da Silva / C, Panama Ciudad, Panama.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2007. On August 10, 2007, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the domain name at issue. On August 13, 2007, Tucows Inc. transmitted by email to the Center its verification response indicating David Da Silva as the listed registrant for the domain name. In response to a notification by the Center regarding the registrar-provided registrant information, the Complainant filed an amendment to the Complaint on August 15, 2007. 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 August 22, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 12, 2007.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on September 18, 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.
4. Factual Background
The Complainant Lime Wire is a software developer which specializes in building advanced file-sharing client/server software which connects computing devices over public and private networks. The Complainant has developed and offered a peer-to-peer file sharing software, which is widely distributed and used in several different languages, providing the public with a way to share computer files, such as .mp3s, .avis, jpgs, tiffs, etc.
The Complainant owns a U.S. trademark registration for the mark LIME WIRE & Design (Registration No. 3,054,287). The Complainant has used the LIME WIRE & Design trademark since November 2000. The Complainant also owns the domain name and has used this domain name since July 2000.
The Respondent registered the domain name on May 8, 2007. At the date of the Complaint the Respondent was operating a website which offered downloads of Complainant’s software for a fee.
5. Parties’ Contentions
A. Complainant
(a) Identical or Confusingly Similar
The Complainant contends that the domain name is confusingly similar to the Complainant’s registered trademark LIME WIRE & Design. The Complainant submits that the domain incorporates its trademark in its entirety, and merely appends the generic terms “download” and “now”. The Complainant contends that the addition of generic terms does not serve to distinguish the domain name from its registered LIME WIRE trademark.
(b) Rights or Legitimate Interests
The Complainant submits that the Respondent has no legitimate interests or rights in the domain name . The Complainant owns a U.S. trademark registration for the mark LIME WIRE & Design. The Complainant’s rights in the LIME WIRE trademark pre-date the registration of the Respondent’s domain name by approximately 7 years. The Complainant is not affiliated with the Respondent and has never authorized the Respondent to use its registered LIME WIRE trademark. The Complainant further submits that the Respondent is not commonly known by the name Limewire or Lime Wire. The Complainant further submits that at the time of filing the Complaint, the Respondent was operating a website under the subject domain name that was purporting to be the “Limewire Official Site” and offered downloads of the Complainant’s software for monetary gain. The Complainant contends that this conduct does not establish a legitimate right or interest in the domain name.
(c) Registered and Used in Bad Faith
The Complainant contends that the domain name has been registered and is being used in bad faith based on the following factors: (i) Respondent’s knowledge of the Complainant’s use of the LIME WIRE trademark at the time of registration of the subject domain name; (ii) Respondent’s registration of a confusingly similar domain name; (iii) Respondent’s claim that it was a representative or licensee of the Complainant and was authorized to use the LIME WIRE trademark; and (iv) Respondent’s use of a confusingly similar domain name to operate a website that provides the Complainant’s downloads and software for the purpose of monetary gain, which he was not authorized or licensed to do so.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established its rights in the LIME WIRE trademark, by virtue of U.S. Registration No. 3,054,287, which was attached to the Complaint.
The Panel finds that the domain name is confusingly similar to the registered LIME WIRE trademark. The subject domain name contains the Complainant’s trademark LIME WIRE as its most distinctive element. The Panel finds that the addition of two generic words, namely “download” and “now” does not serve to distinguish the domain name from the registered trademark. In fact, the Panel finds that the use of the word “download” actually increases the likelihood of confusion, as it is a generic term that describes how a user typically acquires Complainant’s software. Panelists have consistently ruled that the addition of generic or descriptive words to a complainant’s trademark does not serve to distinguish a domain name from the registered mark (see Pfizer Inc. v. Pretzel Publishing,WIPO Case No. D2005-1329, Aventis Pharma SA v. Jonathan Valicenti,WIPO Case No. D2005-0037 and Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219).
Therefore, the Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel finds no evidence in the available case record that the Respondent ever had any legitimate right or interest in the domain name in question. The Respondent registered the subject domain name approximately 7 years after the Complainant had commenced use of its LIMEWIRE trademark and domain name, and 1 � years after the registration of the Complainant’s trademark. The Respondent does not appear to have been known by the disputed domain name.
The Panel also finds that the Respondent is not using the domain name in connection with a bona fide offering of goods and services. The Complainant filed evidence in this proceeding that, at the time of the Complaint, the Respondent was operating a website under the disputed domain name that offered for sale the Complainant’s downloads and software. The Complainant has established that it had never authorized or licensed the Respondent to use its LIME WIRE trademark or sell its products. The Respondent did not file any evidence to refute these claims. Accordingly, the Panel accepts that the Respondent was in fact operating a website that offered for sale the Complainant’s products and services without authorization. Since being notified of the Complaint, the Respondent has changed the contents of its website under the disputed domain name. The Respondent’s domain name now reverts to a website that offers links to various businesses that offer downloads and software which are in competition with the Complainant. The Panel finds that the use of a confusingly similar domain name for the purpose of providing a “click-through” site for monetary gain does not establish a bona fide offering of goods and services. (see Pfizer Inc. v. Schreiner,WIPO Case No. D2004-0731, The Evening Store v. Henry Chan,WIPO Case No. D2004-0305, and Lilly ICOS LLC v. Saban Mihailovic,WIPO Case No. D2005-0356).
The Panel is therefore satisfied that the Complainant has made a prima facie showing of the Respondent’s lack of rights or legitimate interest in the disputed domain name. Once a complainant has made this prima facie showing, the Respondent must come forward with evidence that rebuts this presumption (Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270).
As the Respondent has not filed any evidence in response, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The uncontested evidence shows that the Complainant’s trademark LIME WIRE is distinctive and widely used for at least seven years. The Panel accepts that the Complainant’s trademark is well-known in the United States of America and internationally, and the Panel is prepared to infer that the Respondent had actual knowledge of the Complainant’s trademark rights when it registered the domain name .
The Panel is also prepared to find that the Respondent registered the domain name and used the disputed name to operate a website that offered for sale downloads and software of the Complainant when it was not authorized or licensed to do so for the purposes of monetary gain. The Respondent did not file any response contesting this claim. The Panel is also prepared to find that the Respondent, since the filing of this Complaint, changed the content of its website operating under the disputed domain name so that it is now providing links to sites of other companies which offer downloads and software in competition with the Complainant. Prior panel decisions have recognized this type of conduct to be evidence of bad faith (see CareerBuilder, LLC v. Names for Sale,WIPO Case No. D2005-0186 and Air Austral v. WWW Enterprise, Inc.,WIPO Case No. D2004-0765).
For these reasons, the Panel finds that the Complainant has satisfied the third requirement of paragraph 4(a) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to the Complainant.
Christopher J. Pibus
Sole Panelist
Dated: October 1, 2007
Full & Egal Universal Law Academy