WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sharman License Holdings Limited v. Sonia Thompson a.k.a. Kazagold, Mykazaagold Music Download Service a.k.a. Kazagold
Case No. D2008-0554
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 Sonia Thompson a.k.a. Kazagold, Mykazaagold Music Download Service a.k.a. Kazagold, Brandon, Florida, United States of America; Woodinville, Washington, United States of America, represented by Traverse Legal, PLC, United States of America.
2. The Domain Names and Registrar
The following disputed domain names are registered with GoD, Inc.:
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 5, 2008. (This Complaint was filed with the Center, following a Complaint first filed with the Center on March 15, 2008. Following the filing of that Complaint, the registrar subsequently advised that there were two different registrants for the subject domain names. Those registered to ‘Sonia Thompson’ then became the subject of this Complaint. The others are the subject of the originally filed Complaint: See Sharman License Holdings, Limited v. Kazagold / Adam Barger,WIPO Case No. D2008-0408.
On April 10, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the domain names at issue. On April 11, 2008 GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent (variously, ‘Sonia Thompson’ and ‘MyKazaaGold Music Download Service’) is listed as the registrant and providing the contact details. The Center verified that 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 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2008. The Response was filed with the Center on May 2, 2008.
On May 6, 2008, there were also some communications between the Center and the Registrar to confirm the ongoing ‘locked’ status of a number of the disputed domain names. The Registrar responded on May 6, 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. On May 8, 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.
The Center appointed James A. Barker as the sole panelist in this matter on May 13, 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 November 2007 (as shown by the ‘creation date’ in the WhoIs record).
Most of the disputed domain names are registered in the name of ‘Sonia Thompson’. One () is registered in the name of ‘MyKazaaGold Music Download Service’.
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.
There is little direct evidence of the nature of the Respondent (Kazagold). As noted below, what is treated as the ‘Response’ for the purpose of this dispute is a filing in the Circuit Court in and for Hillsborough County, Florida, on behalf of ‘Webstart, LLC d/b/a Kazagold, a/k/a MyKazaaGold Music Download Service’. That filing in the County Court does not disclose the nature of the Respondent’s business; the relationship between ‘Webstart, LLC’ and ‘Sonia Thompson’; nor any other information concerning the registrant of the disputed domain names: ‘Sonia Thompson’.
However, the Respondent at least shares the same address as the named respondent (‘Adam Barger’) 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. Kazagold / Adam Barger,WIPO Case No. D2008-0408. The Complainant has also provided evidence of various apparent connections between the Respondent in this case (Sonia Thompson), the registrant of record in the related case referred to immediately above (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 (Sonia Thompson) is the principal and alter ego of ‘Kazagold’, such that both should be treated as the Respondent. The Complainant provides various evidence of the connections between the variously named Respondents.
(The Complainant has made a similar argument in the related proceedings Sharman License Holdings, Limited v. Kazagold / Adam Barger,WIPO Case No. D2008-0408, in relation to the registrant of record for that case: ‘Adam Barger’. For reasons that are not explained, the Complainant does not, however, submit that those proceedings should be combined with these.)
The Complainant 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 Response consists of a copy of a civil complaint, filed by the Respondent ‘Webstart, LLC d/b/a Kazagold, a/k/a MyKazaaGold Music Download Service’. That complaint makes no mention of the registrant of record for the disputed domain names: ‘Sonia Thompson’. That civil complaint was filed in the Circuit Court in and for Hillsborough County, Florida, on May 1, 2008. It was filed in respect of the disputed domain names in this case.
On the basis of that filing, the Respondent submits that: ‘the issue of Kazaa’s [the Complainant’s] trademark rights, if any, in the United States is beyond the scope of charge of the UDRP panelist. Thus, we believe it is important to put this critical issue before a court of competent jurisdiction. We would request that you suspend or terminate the administrative proceeding as provided under paragraph 18 of the Policy.’
That filing does not describe the nature of Webstart, LLC’s business. In essence, the Respondent’s civil action seeks declaratory relief, in the form of an order that:
- The Respondent can use the word “Kazaa” in the subject domain names;
- The Complainant has no rights in the word (sic) “Kazaa” under Florida or U.S. law;
- The Complainant will take no further legal action against the Respondent alleging trademark violation in relation to the KAZAA mark. (Although that filing does not, in fact, specifically identify any legal proceedings which the Complainant has brought against the Respondent.)
In relation to a trademark application filed by the Complainant with the USPTO, the Respondent argues that ‘false information’ provided with the application ‘nullifies their trademark filing’. The Respondent also claims that the Complainant’s activities in relation to the downloading of copyright music is in violation of Florida public policy, thereby making enforcement of the Complainant’s trademark rights inappropriate and unlawful.
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 effect of the Respondent’s court filing, as well as a consideration of the nature of the Respondent.
A. Respondent’s County Court filing
The Respondent has not filed a formal Response, but instead relies on a civil complaint it has filed in the County Court in and for Hillsborough County, Florida, against the Complainant. Because of that filing, the Respondent submits that these proceedings be suspended or terminated.
The nature of that civil application is set out above (in relation to the Respondent’s contentions). In that application, the Respondent argues that the Complainant does not have any trademark rights in the United States of America, and has an ‘illegal business model’. Essentially on that basis, the Respondent seeks declaratory relief that the Respondent can use the word “Kazaa” in its domain names, that the Complainant has no trademark rights in the word Kazaa, and an order that the Complainant ‘shall take no further legal action’ against the Respondent.
There are three important issues to note in this respect.
Firstly, the Respondent’s court filing occurred well after the initiation of this dispute. Paragraph 4(k) of the Policy relevantly provides that:
“The mandatory administrative proceeding requirements set forth in Paragraph 4 [of the Policy] shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.” (emphasis added)
The Policy does not therefore explicitly address whether this proceeding prevents the submission of the dispute to a court after this proceeding is commenced, but before it is concluded – which is what the Respondent has done in this case. An implication might be drawn from paragraph 4(k) that a party should have less latitude to file a court proceeding after the initiation, and before the conclusion of an administrative proceeding. Otherwise the door is open to a party to merely file, and not proceed with, a court proceeding for the purpose of frustrating an administrative proceeding under the Policy. The intention of paragraph 4(k) seems intended to ensure that there is a proper priority, and sequence for, relief that may be available before a court.
Secondly, paragraph 4(k) further provides that the Registrar may not implement any decision of an administrative Panel if it receives official documentation that (within 10 days of the administrative panel’s decision) the Respondent has commenced a lawsuit against the Complainant. In that case, the Registrar may not implement an administrative panel’s decision pending the outcome of the court case. The effect of this provision is that there can be no conflict between an order of a Panel (if any), and any subsequent court decision.
Thirdly, paragraph 18 of the Rules relevantly provides that:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name in dispute . . . the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Panels have frequently declined to exercise this discretion, in circumstances where the parties are not prevented from seeking relief in court. See e.g. Western Holdings, LLC v. JPC Enterprise, LLC d/b/a Cutting Edge Fitness and d/b/a Strivectin SD Sales & Distribution,WIPO Case No. D2004-0426, and the cases cited in that one.
For similar reasons, the Panel in this case declines to exercise its discretion under paragraph 18 of the Rules. Such a decision does not prevent the parties from otherwise determining their claims in court.
B. 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’ or controls 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. 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 four 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:
- ‘Sonia Thompson’ as the named registrant of all but one of the disputed domain names in this case;
- ‘MyKazaaGold Music Download Service’, as the named registrant of , and as an alternative business name for ‘Kazagold’ (see below);
- ‘Adam Barger’, being the registrant of similar domain names (not the subject of this dispute), and named as a respondent in the related proceedings referred to above. The Complainant alleges that this individual, presuming he exists, has a ‘strong relationship’ with the other three possible respondents. To that extent, he might also be treated as part of the Respondent in fact.
- ‘Kazagold’. This appears to be a business which the Complainant alleges is an alter-ego of both Adam Barger and Sonia Thompson. From evidence filed in related proceedings involving the Complainant (Sharman License Holdings Limited v. Kazagold / Adam Barger,WIPO Case No. D2008-0408) 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 the Respondent’s civil complaint filed in the Circuit Court in and for Hillsborough County, Florida.
The third of these possible respondents (Adam Barger) is not named as the Respondent in this case. However, the Panel has accepted that there is a strong relationship between each of these 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;
- All the disputed domain names include the term Kazagold, or a confusingly similar variation;
- There is no evidence, either in this case of the related proceedings, that any of these entities have any separate existence in fact.
For these reasons, the Panel has treated at least Sonia Thompson 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 Adam Barger could also be treated as the same entity as Sonia Thompson / Kazagold. However, Adam Barger 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 ‘Adam Barger 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 Adam Barger 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.
C. Identical or Confusingly Similar
The Complainant’s mark
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 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 Response alleges that the Complainant does not have valid trademark rights in the United States of America. This is alleged on the basis that the Complainant provided ‘false information’ to the United States Patent and Trademark Office. The Respondent also claims that the Complainant has an ‘illegal business model’ (that is, the Complainant’s file sharing software which, the Respondent alleges, facilitates the infringement of copyright material).
The Panel need not make a finding on these allegations. Even if they were true, they would not affect the Complainant’s case in these proceedings. The Complainant has registered trademark rights in jurisdictions other than the United States of America. That is enough to establish that the Complainant ‘has rights’ for the purpose of paragraph 4(a) of the Policy. The allegations of illegality of the Complainant’s ‘business model’ are also of no moment. A same argument was dismissed in Sharman License Holdings Limited v. Mark Jackson and ProxyOne Domain Trust,WIPO Case No. D2004-0965, as follows:
“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 9th Cir., August 19, 2004), Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (US Supreme Court) and CBS Songs v. Amstrad Consumer Electronics [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.”
Identical or confusingly similar to the Complainant’s mark
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 or a misspelled variation of it (‘kaza’). 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 mark.
A second reason is that the disputed domain names all add merely generic words (or misspelled versions of generic words, to the Complainant’s mark (or a misspelled variation of that mark). Each domain name includes at least the generic word ‘gold’, or the misspelled variation ‘goid’ or ‘g0id’. 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 the same way, the misspelled variations of that word do not distinguish the mark.
In addition, most of the disputed domain names add other generic terms, or a combination of those terms, including ‘my’, ‘live’, ‘mp3’, ‘music’, ‘download’, ‘new’ and ‘online’. It is well-established that a domain name which wholly incorporates a trademark may be confusingly similar to that mark 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.
D. 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.
As noted above, the Panel has not accepted the Respondent’s submission that this proceeding should be dismissed because of the Respondent’s filing of court proceedings. The Respondent has not otherwise directly submitted that it has rights or legitimate interests in the disputed domain names. However, the Panel has had regard to the substance of the Respondent’s court filing for this purpose.
That filing discloses little of what might be the Respondent’s own rights or legitimate interests in the disputed domain names. That filing is almost entirely directed to alleging that the Complainant does not have a valid trademark application in the United States of America (which is addressed above).
The Respondent’s filing notes that its websites ‘offer internet users the ability to register and purchase copyright protected music, with full royalties to the copyright owners.’ The Respondent provides no evidence for this statement. But it is clear from the content of the Respondent’s websites make a similar type of offering than that made by the Complainant in connection with the downloading of music from the Internet.
In this respect, 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.
E. Registered and Used in Bad Faith
The Respondent’s filing does not directly counter the Complainant’s argument that the Respondent has registered and used the disputed domain names in bad faith. As such, the Respondent has not relevantly sought to rebut the Complainant’s case against it.
The Panel finds that the Respondent has registered and used the disputed domain names in bad faith, for similar reasons to those set out above. 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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