Complainant is Frostwire, LLC of Miami Beach, Florida, United States of America (“U.S.”), represented by Espinosa | Trueba, PL, U.S.
Respondent is Tim Jones of Atlanta, Georgia, U.S. 2. The Domain Name And Registrar
The disputed domain name is registered with eNom, Inc. (“eNom”) 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2012. On May 7, 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 Respondent is listed as the registrant and providing contact details and other information pertaining to the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 9, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 29, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 1, 2012.
The Center appointed Debra J. Stanek as the sole panelist in this matter on June 12, 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
Complainant owns a U.S. federal trademark registration for the mark FROSTWIRE for computer software for searching and sharing computer files. The registration issued in 2008 and claims a date of first use in 2006.
The disputed domain name was created in 2010. The disputed domain name resolves to a site that offers FROSTWIRE software available for download. 5. Parties’ Contentions A. Complainant 1. Identical or Confusingly Similar
Complainant has used its FROSTWIRE trademark continuously in the U.S. since October, 2006 for its searching and file-sharing software. Since that time the mark has become one of the best known and most respected brands of online file sharing software, earning Complainant substantial good will among consumers.
Complainant also uses its mark in the domain name , which it uses to distribute its software.
The disputed domain name includes Complainant’s FROSTWIRE mark as a dominant element, along with the descriptive term “download.” Further, Respondent’s site also includes the graphic elements of the mark along with a notice reading “copyright Frostwire” at the bottom of the page.
Respondent’s site has been identified as a “malicious imposter” site. Instead of downloading the promised software, such sites install pop-ups and try to force the user to download other third party software. To the extent that the site does allow downloading of a version of Complainant’s FROSTWIRE software, the installer includes code that is not approved or authorized by Complainant. Generally, however, the site uses a counterfeit installer that installs the “RealPlayer” program rather than that of Complainant. 2. Rights or Legitimate Interests
Respondent is not making a legitimate noncommercial or fair use of the FROSTWIRE mark.
Respondent’s sites [sic] are not used for and there is no evidence that they are intended to be used for a bona fide offering of goods and services apart from the infringing and unauthorized use.
Respondent has no right or legitimate interest in a domain name used to mislead the public through the commercial use of Complainant’s trademark. Respondent apparently uses the “[a]ccused domains” [sic] to distribute counterfeit or third party software and to pass traffic to other sites to generate click-through revenue and commissions.
Respondent used an anonymizing service to conceal his identity, which should be considered evidence of bad faith.
Here, the sites at issue do not engage in protected political speech. Instead they use Complainant’s trademarks to divert traffic to the sites and to mislead the public. The only purpose of such anonymity is to make it difficult to identify the infringer. 3. Registered and Used in Bad Faith
Complainant registered the domain name in 2005 and has made continuous use of the domain name to market and promote its products. Respondent registered the disputed domain name in 2010, long after Complainant had registered its domain and developed substantial public goodwill.
The only purpose of Respondent’s site is to falsely promote Complainant’s software or counterfeit versions of Complainant’s software.
Further evidence of bad faith, is the fact that Respondent used both Complainant’s FROSTWIRE mark and its logo on the initial page connected with the disputed domain name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
In order to prevail, a complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. Rules, paragraph 14(b). A. Identical or Confusingly Similar
Complainant has established its rights in the mark FROSTWIRE virtue of the evidence of its U.S. federal trademark registration.
Respondent’s disputed domain name is not identical to Complainant’s mark. As a general matter, the Panel subscribes to the consensus view that the test for confusing similarity is satisfied where the relevant mark is recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
Here, the addition of the generic term “download” after “frostwire” does not effectively differentiate or distinguish the disputed domain name from Complainant’s mark, which remains the dominant portion of the disputed domain name (the presence or absence of spaces and the addition of the generic top-level domain “.com” is not relevant for purposes of this comparison.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, paragraph 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples of ways that a respondent might demonstrate its rights or legitimate interests to a domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Although presenting a somewhat close question, the Panel nonetheless concludes that Complainant has made a prima facie showing that none of the three examples set forth in paragraph 4(c) of the Policy are applicable here.
The Complaint contains the following assertions:
“9. The site operated from the Accused Domain has been identified as one of several ‘malicious imposter sites.’ Instead of downloading the promised software these sites install pop-ups and try to force the user to download other third party software. See article attached hereto as Annex ‘7’.
10. To the extent that the site eventually does allow downloading of a version of the genuine Frostwire software, the installer is wrapped in code which is not authorized or approved by Complainant.
11. Generally, the site downloads a counterfeit installer which actually installs a different program called ‘RealPlayer.’”
However, Complainant provides little in the way of evidence in support of these assertions. It has not submitted an affidavit or other documentary evidence regarding what happens when users try to download software from the site. The “article” cited in the Complaint appears to be an excerpt from the “Official FrostWire Blog”, presumably originating with Complainant. Moreover, the Complaint is signed only by Complainant’s outside counsel; there is nothing to suggest that any of the assertions are based on his personal knowledge.
Nonetheless, Complainant has provided copies of pages from Respondent’s “www.” site that make it clear that Respondent is using the disputed domain name to identify Complainant’s software product. Under the consensus view, there are circumstances where a bona fide offering of trademarked goods and services by a distributor may provide the distributor with a legitimate interest in a domain name that includes the trademark. See WIPO Overview 2.0, paragraph 2.3. Those circumstances generally include: (1) actually offering the goods and services at issue, (2) using the site to sell only the trademarked goods, and (3) the site’s accurately disclosing or disclaiming the registrant’s relationship with the trademark owner. Here, Respondent’s site does not disclose or disclaim the registrant’s relationship with the trademark owner.1
There is no evidence that Respondent, an individual named, Tim Jones, is known by the disputed domain name and Respondent’s use does not appear to be a noncommercial or otherwise fair use.
The Panel finds that Complaint has established that Respondent has no rights or legitimate interests in respect of the disputed domain name . C. Registered and Used in Bad Faith
Complainant must establish that the disputed domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in its mark predate Respondent’s registration of the disputed domain name. Given that Respondent purports to offer Complainant’s FROSTWIRE software on its site, which displays Complainant’s trademark in word and stylized logo forms, Respondent had actual knowledge of Complainant’s trademark rights and appears to have intended visitors to believe that the site was that of Complainant.
In light of these facts and the adverse inferences that arise from Respondent’s failure to respond to the Complaint, the Panel finds that Complainant has established that Respondent has registered and is using the disputed domain name in bad faith. 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 Complainant.
Debra J. Stanek
Sole Panelist
Dated: June 20, 2012
1 Also consistent with the consensus view, the Panel undertook limited factual research to confirm this fact. See WIPO Overview 2.0, paragraph 4.5 (Panel may visit site linked to disputed domain name and may undertake limited factual research into the public record).
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