WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sharman License Holdings, Limited v. Kazagold / Adam Barger
Case No. D2008-0408
1. The Parties
The Complainant is Sharman License Holdings, Limited, Port Vila, Vanuatu, represented by Genga & Associates, P.C., United States of America.
The Respondent is Adam Barger / Kazagold, respectively of Florida, United States of America; Mercer Island, Washington, United States of America; Woodinville, Washington, United States of America.
2. The Domain Names and Registrar
The disputed domain names are those listed below, which are all registered with GoD, Inc.:
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 15, 2008. On March 17, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain names at issue. On March 19, 2008, GoD, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on March 31, 2008 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Further to that email, the Center sent another email on April 1, 2008, informing the Complainant that, if it intended to maintain a single Complaint against each of the named Respondents, it must show a relationship between them. There were some further emails between the Center and the Complainant concerning procedural matters for the filing of the Complaint on April 3, 2008. On March 31, 2008, there were also some communications between the Center and the registrar to confirm the ongoing active status of a number of the disputed domain names.
On March 28, 2008, a representative of ‘Traverse Legal, PLC’ sent an email to the Center, stating (among other things): “We are trying to figure out where in the process is the above referenced case…We’ve been contacted by the Respondent, we don’t know if we are representing him yet..”. The Center responded to confirm that the Complainant had not, at that stage, been formally notified and that, once this step had occurred, the Respondent would then have 20 days to make a formal Response. (In the event, no further communication was received, either directly from the Respondent or from a representative of the Respondent.)
The Complainant filed an amendment to the Complaint on April 5, 2008, principally to identify the Respondent consistently with the registrant details provided by the Registrar.
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 April 11, 2008.
On April 29, 2008, the Center sent an email to the parties and the Registrar to note that four of the disputed domain names were due to expire, and to request confirmation to the Center that those domain names remained active (and so would remain on foot for the purpose of this dispute). In that email, the Center also requested the Registrar to confirm that those domain names, , , , and , were to remain locked pending the outcome of these proceedings. The Registrar responded on April 29, 2008, confirming that those domain names would remain locked; that the Complainant bore the burden of ensuring that the domain names remained active during these proceedings (and that the domain name was not set to expire until April 27, 2009). On April 30, 2008, the Center emailed the parties and the Registrar to urge the parties to contact the Registrar directly if they wished to ensure that those domain names remained active for the duration of these proceedings, and to confirm to the Center once this had occurred.
In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 4, 2008.
The Center appointed James A. Barker as the sole panelist in this matter on May 9, 2008. 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 disputed domain names were first registered between April 2005 and June 2006 (as shown by the ‘creation date’ in the WhoIs record).
All the disputed domain names are registered in the name of ‘Adam Barger’. Because the Complainant (as outlined below) argues that ‘Kazagold’ is inseparably associated with the Respondent, that entity is also named as the Respondent in this case. (The Complaint as originally filed also named the privacy service ‘Domains by Proxy’ as the Respondent. However, as Domains by Proxy is not now the registrant of any of the disputed domain names, and there is otherwise no argument that it is the same entity as the Respondent, Domains by Proxy is not further named as the Respondent in this dispute.)
At the date of this decision, the disputed domain names all reverted to essentially the same website. That website contains a logo for ‘Kazaa Gold’, the title ‘Free Music Downloads’, and relates to the free downloading of music files. The webpage asks potential users to provide a name and email address to ‘To Start Downloading Music Immediately!’.
The Complainant has been a complainant in prior proceedings under the Policy. A description of the Complainant, its business and its marks is also contained in the factual background of those cases. (See e.g. Sharman License Holdings, Limited v. Kazagold,WIPO Case No. D2004-0396; Sharman License Holdings, Limited v. Kazagold,WIPO Case No. D2005-0074.)
In the absence of a Response, there is little direct evidence of the nature of the Respondent. However, the Respondent at least shares the same address as the named respondent in similar proceedings also before this Panel (similar, to the extent that the domain names are similar; involve the same complainant and a contemporaneous filing). See Sharman License Holdings, Limited v. Sonia Thompson a.k.a. Kazagold, Mykazaagold Music Download Service a.k.a. Kazagold,WIPO Case No. D2008-0554. The Complainant has also provided evidence of various apparent connections between the Respondent in that other case (Sonia Thompson), the registrant of record in this case (Adam Barger), and ‘Kazagold’.
5. Parties’ Contentions
A. Complainant
The Complaint proceeds (as it must in relation to this single proceeding) on the basis that the differently named Respondents are all the same in-fact. The Complainant asserts that the registrant of the disputed domain names (Adam Barger) is the principal and alter ego of ‘Kazagold’, such that both should be treated as the Respondent.
The Complainant claims that it bases its Complaint on the mark KAZAA. The Complainant claims to have used that mark continually throughout the world since January 2002 to identify and market software that enables peer-to-peer communications over the Internet. The Complainant claims to own that mark through an acquisition of it by a related entity, Sharman Networks Limited. Sharman Networks has used that mark since January 2002 to identify and market software that enables peer-to-peer communications over the Internet. In January 2002, the Complainant acquired, from the Dutch company Kazaa BV, the user interface for the Kazaa Media Desktop (KMD); a related peer-to-peer application; the right to use the KAZAA mark when marketing KMD; the K website and related websites; and a license to other software.
The Complainant points to its registration of that mark in jurisdictions including Australia, the European Union and the Benelux, and that the priority date of those registrations pre-dates the Respondent’s registration of the disputed domain names. The Complainant provides proof of those registrations, registered in the name of ‘Sharman License Holdings Limited’. The Complainant claims that its mark is famous. The Complainant also claims common law rights in that mark. The Complainant refers to two prior proceedings under the Policy in which its rights in a mark have been recognized. Those were Sharman License Holdings Limited v. Kazagold,WIPO Case No. D2004-0396; Sharman License Holdings Limited v. Kazagold,WIPO Case No. D2005-0074. Those cases also adopted the Complainant’s description of itself, its activities and its mark, which is similar to that set out in the Complaint in this case.
The Complainant claims that each of the disputed domain names are confusingly similar to its famous mark.
The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain names. In particular, the Complainant claims that there is no evidence that would support a finding of such a right or legitimate interest of a kind mentioned in paragraph 4(c)(i)-(iii) of the Policy. Rather, the Complainant claims that the Respondent is misleadingly diverting Internet users for commercial gain, by seeking a fee for users to access file-sharing software (“Kazaa Gold”) which it does not own or license. The Complainant asserts that Kazaa Gold infringes both the Complainant’s mark, as well as its copyright in the KMD software.
For similar reasons, the Complainant claims that the disputed domain names were registered and are being used in bad faith. The Complainant claims that the Respondent has registered the disputed domain names with the purpose of providing the same type of product to consumers, and using the same channels of commerce (the Internet) as the Complainant. The Complainant claims this has caused actual confusion, and provides copies of complaints by Internet users who purchased “Kazaa Gold” that e.g. they are unable to use that ‘product’ and that their complaints to the vendor received no response.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed 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 disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
These issues are discussed as follows, immediately following a consideration of the nature of the Respondent.
A. Nature of the Respondent
Paragraph 1 of the Rules provides that the Respondent “means the holder of a domain-name registration against which a complaint is initiated.” Previous panel decisions indicate that ‘the holder’ of a domain name must be a single entity in-fact. (See e.g. Regal Removals v. Gary Bradshaw,WIPO Case No. D2003-0832.) This means that a number of ‘different’ respondents or aliases might be named in a complaint, as long as there is a single underlying entity which holds the domain name registration. (A, Inc. v. Lorna Kang a/k/a Yong Li a/k/a Mahmoud Nadim a/k/a The Data in B’s WHOIS Database is p a/k/a Amjad Kausar,WIPO Case No. D2005-0635.)
Similarly, in a case previously involving this Complainant, the panel found that the then complaint could validly proceed against a number of differently named respondents, on the basis that it was most likely that the domain names were controlled by a single party. (See Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments,WIPO Case No. D2004-0659.) The indicia, in that case, of the domain names being controlled by a single party, included that:
- the disputed domain names were all registered with the same registrar, using the Domains by Proxy service; and
- the disputed domain names were all directed to essentially identical websites.
In this case there are three entities that might collectively be treated as ‘the Respondent’ for the purpose of this dispute – being entities against which the Complainant has initiated a complaint:
- ‘Adam Barger’, as the named registrant of the disputed domain names in this case;
- ‘Sonia Thompson’, being the registrant of similar domain names (not the subject of this dispute), and named as a respondent in a contemporaneously filed complaint by the Complainant. The Complainant alleges that this individual, presuming she exists, has a ‘strong relationship’ with the other three possible respondents.
- ‘Kazagold’ and ‘MyKazaaGold Music Download Service’ (for convenience, referred to as ‘Kazagold’ in this decision). The former is a business which the Complainant alleges is an alter-ego of Mr. Barger. The Complainant alleges that the latter has a ‘strong relationship’ with the other two possible respondents named above. From evidence filed in related proceedings involving the Complainant (Sharman License Holdings, Limited v. Sonia Thompson a.k.a. Kazagold, Mykazaagold Music Download Service a.k.a. Kazagold,WIPO Case No. D2008-0554) it appears that both ‘Kazagold’ and ‘MyKazaaGold Music Download Service’ are the business names of Webstart LLC. Webstart LLC describes itself a limited liability company organized in the Island of Nevis. This evidence is based on a copy of a civil complaint filed in the Circuit Court in and for Hillsborough County, Florida.
The second of these possible respondents (Sonia Thompson) is not named as the Respondent in this case. However the Panel has accepted that there is a strong relationship between each of these three entities for the purpose of these proceedings, on the basis of at least the following:
- Both Adam Barger and Sonia Thompson have the same street address;
- All the disputed domain names in this case, and in the related proceedings, revert to essentially the same website;
- All the disputed domain names are registered by the same registrar, and were registered within a close period of time;
- All the disputed domain names include the term Kazagold, or a confusingly similar variation.
For these reasons, the Panel has treated at least Adam Barger and Kazagold (including its aliases and Webstart LLC) as the same entity for the purpose of these proceedings. It follows from this finding that the apparent conduct of one of these entities can be treated as the conduct of the other.
On the basis of the evidence above, it may also be that Sonia Thompson could be treated as the same entity as Kazagold / Adam Barger. In this connection, the Panel notes that, in Sharman License Holdings Limited v. Kazagold,WIPO Case No. D2004-0396, Sonia Thompson acted as the representative of Kazagold, and referred variously to “we at Kazagold”. However, Sonia Thompson is not named as the Respondent in this dispute. Further, when notified of the registrant details following the communication to it from the Center on March 31, 2008, the Complainant split its originally filed Complaint into two. One is this one. The other was filed against ‘Sonia Thompson a.k.a. Kazagold’ and ‘MyKazaaGold Music Download Service a.k.a. Kazagold’.
It might be asked why, if the Complainant contends that both Sonia Thompson and Adam Barger are in fact the same entity as Kazagold, it did not amend its originally filed Complaint to press this argument. It may have been that, out of an abundance of caution, the Complainant split its original Complaint in the event that a finding were made that those entities are, in fact, different.
In any case Sonia Thompson is named, along with Kazagold, in the related proceedings referred to above. As Kazagold is named in these proceedings, as well as those related proceedings, the Panel has taken into account the evidence in those other proceedings to the extent that it is relevant to the conduct of Kazagold in this case.
B. Identical or Confusingly Similar
The Complainant provides evidence of having registered rights in the KAZAA mark, in Australia, the European Union, and the Benelux. The Complainant also claims common law trademark rights in other jurisdictions. The Panel also notes that the Complainant’s rights have been recognized in prior proceedings. (Sharman License Holdings, Limited v. Kazagold,WIPO Case No. D2004-0396; Sharman License Holdings, Limited v. Kazagold,WIPO Case No. D2005-0074.) The Complainant’s rights in that mark have also been recognized in other prior panel proceedings: e.g. Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments,WIPO Case No. D2004-0659. Consistently with those prior proceedings, the Panel finds that the Complainant ‘has rights’ in the KAZAA trademark for the purpose of paragraph 4(a)(i) of the Policy.
The Panel finds that the disputed domain names are identical or confusingly similar to the Complainant’s mark. This is for the following reasons.
Firstly, all the disputed domain names wholly incorporate the Complainant’s mark (with the exception, in one case, of a misspelling of it). As such, the disputed domain names are likely to create confusion with the Complainant’s mark, at the very least in the minds of those Internet users who recognize the Complainant’s marks.
A second reason is that the disputed domain names all add merely generic words, in addition to incorporating the Complainant’s mark. Each domain name includes at least the generic word ‘gold’. The addition of the word ‘gold’ to the Complainant’s mark was not found to be distinguishing, in a trademark sense, in the previous cases involving the parties referred to above.
In addition, each disputed domain name adds other generic terms, including ‘my’, ‘live’, ‘mp3’, ‘music’, ‘official’, ‘new’ and ‘online’. It is well-established that a domain name which wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy, despite the addition of common or generic words. See, for example: Wal-Mart Stores, Inc v. Wallsucks & Walmarket Puerto Rico,WIPO Case No. D2000-0477; Dr. Grandel GmbH v. Drg Randel Inc.,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Playboy Enterprises International, Inc. v. Hector Rodriguez,WIPO Case No. D2000-1016.
In the context, specifically, of the Complainant’s mark, it is also clear from previous cases involving the Complainant, that the addition of generic terms to its mark has not avoided findings of confusing similarity. See e.g. Sharman License Holdings, Limited v. Gregg Smitherman,WIPO Case No. D2004-0375; Sharman License Holdings, Limited v. KazaaP, WIPO Case No. D2004-0401; Sharman License Holdings, Limited v. KazaaL Inc.,WIPO Case No. D2004-0402; Sharman License Holdings, Limited v. Robert Johnson,WIPO Case No. D2004-0691; Sharman License Holdings, Limited v. Web Domain Names,WIPO Case No. D2004-0821; Sharman License Holdings Limited v. Mandel Enterprises Ltd., WIPO Case No. D2004-0841; Sharman License Holdings, Limited v. Domains at Fabulous,WIPO Case No. D2004-0915; Sharman License Holdings Limited v. Mark Jackson and ProxyOne Domain Trust;WIPO Case No. D2004-0965; Sharman License Holdings, Limited v. Kazagold,WIPO Case No. D2005-0074.
Supporting this conclusion, the panel’s decision in Sharman License Holdings Limited v. Kazagold,WIPO Case No. D2005-0074, was that the Complainant’s mark was “a made-up, fanciful term”. In Sharman License Holdings, Limited v. KazaaP, WIPO Case No. D2004-0401, the then panel found that the Complainant’s mark was a “highly distinctive and invented word.” In Sharman License Holdings, Limited v. Web Domain Names,WIPO Case No. D2004-0821, the panel found that the Complainant’s mark was “well-known”. The Panel makes similar findings in this case.
Thirdly, although given the above it is hardly needed, the Complainant has also provided evidence of actual confusion by the Respondent’s registration and use of the disputed domain names.
For these reasons, the Complainant has established this first element.
C. Rights or Legitimate Interests
The Panel also finds that the Respondent has no rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.
The Complainant has established a prima facie case against the Respondent, who has not answered it.
There is otherwise no evidence that the Respondent has a right or legitimate interest of a kind described in paragraph 4(c) of the Policy.
On the contrary, what the Respondent has apparently done in this case is similar to that of the Respondent in Sharman License Holdings Limited v. Mark Jackson and ProxyOne Domain Trust,WIPO Case No. D2004-0965. The panel in that case described the then respondent’s activity as follows:
“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…. 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”.
For these reasons, the Complainant has established this second element.
D. Registered and Used in Bad Faith
For similar reasons, the Panel finds that the Respondent has registered and used the disputed domain names in bad faith. Paragraph 4(b)(iv) of the Policy relevantly provides that the following circumstance, in particular but without limitation, if found by the Panel to be present, is evidence of the registration and use of a domain name in bad faith:
(iv) by using the domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or other location.
The Panel finds that this is what the Respondent has done. As noted above, the disputed domain names are all confusingly similar to the Complainant’s mark.
The evidence suggests that it was likely that the Respondent intended this result, for commercial gain. It is inconceivable that the Respondent was not aware of the Complainant when it registered the disputed domain names. At the very least, the Respondent would have this awareness from the prior proceedings in which it has been involved under the Policy. The Respondent also offers a similar product via domain names that are confusingly similar to the Complainant’s mark. It is not believable that such a combination of circumstances would have occurred by accident.
It is also clear that the Respondent operates for commercial gain. The Respondent’s websites, to which the disputed domain names refer, all concern the offer for sale of a similar product to the Complainant’s ‘KMD’ software. The Complainant also provides evidence that Internet users, thinking that they are dealing with the Complainant, purchased software available at the Respondent’s website.
For these reasons, the Complainant has established this third element.
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 following domain names be transferred to the Complainant:
James A. Barker
Sole Panelist
Dated: June 10, 2008
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