The Complainant is Frostwire, LLC of Miami Beach, Florida, United States of America (“US”), represented by Espinosa | Trueba, PL, US.
The Respondent is Rinandy Arbuis of Misamis Oriental, Philippines. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2012. On April 26, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same date, eNom transmitted by email to the Center its verification response confirming that the Respondent 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” or “UDRP”), 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 May 1, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2012.
The Center appointed Alistair Payne as the sole panelist in this matter on May 25, 2012. 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 based in the US distributes and promotes software for searching and sharing files on-line under the FROSTWIRE trade mark and through its website at “”. It owns a combined logo and word mark registration in the US under registration number 3381297 dating from February, 12, 2008 which incorporates the name or term “frostwire”.
The Respondent based in the Philippines registered the disputed domain name on November 25, 2011. 5. Parties’ Contentions A. Complainant
The Complainant submits that its FROSTWIRE mark is very well known to the extent that it has become one of the best and most respected brands of on-line sharing software since it was first marketed in October 2006. The Complainant submits that it owns registered trade mark rights as noted above dating from February 12, 2008 and that the disputed domain name is confusingly similar to its FROSTWIRE mark as it wholly incorporates the term “frostwire” and the addition of the term “review” does nothing to distinguish the disputed domain name from its mark.
The Complainant says that it has never authorized the Respondent to use its FROSTWIRE mark and that the Respondent is neither making a legitimate non-commercial use of the mark, nor is it making a bona fide offering of goods or services under the mark. The Complainant notes that the Respondent uses both textual and graphic elements of the Complainant’s logo on its website, includes a note “copyright Frostwire” at the bottom of the page and then either facilitates people downloading the Complainant’s software wrapped in additional code or to download a counterfeit installer which installs a different player called “Real Player”. The Complainant submits that the Respondent’s use of the disputed domain name is to distribute counterfeit software or third party software and pass traffic through to other sites for the purpose of generating click-through revenue and sales commissions. It says that it is well established that such use does not constitute a bona fide offering of goods or services such as would constitute fair use under the Policy and is inconsistent with the Respondent having rights or legitimate interests in the disputed domain name.
As far as bad faith is concerned the Complainant says that under paragraph 4(b)(iv) of the Policy the 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 as to the source of its website and software products available for download from that site. The Complainant further says that although the Respondent has placed a disclaimer on the bottom part of the web site out of sight of the typical user it is clearly an attempt to defend against a UDRP and not a genuine effort to dispel confusion.
The Complainant says that it registered its “” domain name in 2005 and that the Respondent registered the disputed domain name in 2011 long after the Complainant’s domain name was registered and had developed substantial goodwill and renown. According to the Complainant the Respondent must have known of the Complainant’s mark since it used the web site associated with the disputed domain name to distribute the Complainant’s software product in a manner that misleads the consumer into thinking that it is obtaining the genuine software distributed by the Complainant. In summary the Complainant says that the Respondent’s website serves no purpose other than to falsely promote the Complainant’s software, or counterfeit versions of the Complainant’s software which is clearly indicative of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant owns a combined word and device mark registration for its FROSTWIRE mark in the US under registration number 3381297 dating from February, 12, 2008.
The clearly dominant element of this trademark registration is the FROSTWIRE word mark in large stylized script which has a device mark of a wire design beside it. The Panel notes that the term “frostwire” is a coined term which is quite distinctive and is not in common usage and the clear overall impression given by the trade mark registration is of the term “frostwire”. These circumstances distinguish this case from cases concerned with a device mark containing a common term such as Ville de Paris v. Salient Properties LLC, WIPO Case No. D2009-1279 or more recently Limited Liability Company Infomedia v. c/o Office-Mail processing center/Whois privacy services, provided by Domain Protect LLC/1) Eurofirm Ltd. 2) Ethno Share PO, Domain Manager, WIPO Case No. D2010-1239.
Based on the level of distinctiveness of the FROSTWIRE mark, its prominence in the Complainant’s combined device and word mark registration and the strong overall impression that the registered mark gives in relation to its dominant element, namely the word mark FROSTWIRE, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark registration. The Panel notes that the inclusion of the common English term “review” in the disputed domain name does nothing to distinguish it from the Complainant’s mark.
As a result the Complaint succeeds in relation to the first element of the Policy. B. Rights or Legitimate Interests
There is no evidence before the Panel that the Respondent was authorized by the Complainant or is otherwise making a legitimate or bona fide use of the disputed domain name. The Respondent’s use of the disputed domain name for a website that is obviously aimed at confusing consumers that it is dealing with the Complainant and that then illegitimately distributes re-wrapped versions of the Complainant’s software or different file sharing software altogether is clearly not a bona fide use and is inconsistent with the Respondent having any rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has met the onus upon it of demonstrating a prima facie case that the Respondent has no rights or legitimate interests and in circumstances that there is no reply from the Respondent finds that the Complaint succeeds under this element of the Policy. C. Registered and Used in Bad Faith
It is clear that the website at the disputed domain name blatantly seeks to confuse Internet users into thinking that the website is the Complainant’s or at the least is authorized by the Complainant and that the Complainant’s FROSTWIRE software may be uploaded from this site. It is notable that the website recreates the Complainant’s logo and word mark and the overwhelming impression given is that the site belongs to the Complainant.
Although there is a disclaimer on the website, it is not obvious at first glance and by the time that Internet users see it they may well have already proceeded to attempt to download the Respondent’s software. When they do so, according to the Complainant, they either receive the Complainant’s software wrapped in additional software provided by the Respondent, or they receive different software altogether, none of which has been authorized by the Complainant. The Panel finds that the Respondent is seeking to confuse consumers and is using the disputed domain name to attract consumers for commercial gain to its website by creating a likelihood of confusion with the Complainant’s FROSTWIRE name and mark in terms of paragraph 4(b)(iv) of the Policy .
The Panel notes that the Respondent registered the disputed domain name in 2011 long after the Complainant’s domain name and trade mark had been registered. Considering the nature of the Respondent’s website at the disputed domain name, its use of the Complainant’s logo and mark and the fact that the Respondent purports to distribute the Complainant’s software from the website, it is entirely reasonable to infer that the Respondent registered the disputed domain name purposefully and with knowledge of the Complainant’s FROSTWIRE mark in order to attract Internet users to its website.
Accordingly the Panel finds that the Complainant has demonstrated that the Respondent has both registered and used the disputed domain name in bad faith and the Complaint also succeeds under the third element of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Alistair Payne
Sole Panelist
Dated: June 3, 2012
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