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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sharman License Holdings, Limited v. Domains at Fabulous

Case No. D2004-0915

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 Domains at Fabulous, Dublin, Ireland.

2. The Domain Names and Registrar

The disputed domain names<download-kazaa.com>, <freekazaa.com>, <kazaaalite.com>, <azaadesktop.com>, <kazaa-download.com>, <kazaa-downloads.com>, <kazaafree.com>, <kazaalie.com>, <kazaa-media.com>, <kazaa-music.com>, <kazaarlite.com>, <kazaars.com>, <kazaaupdate.com>, <kazaa-virus.com>, <kazacom.com>, <kazadownload.com>, <kazammusic.com>, <kazars.com>, <kazasa.com>, <kazzadownload.com>, <kazzamusicdownloads.com>, <kazzasoftware.com>, <lightkazaa.com>, <mikaza.com>, <my-kazza.com>, <www-kazaa.com>, <wwwkazaalite.com>, www-kazza.com> and <wwwkazza.com> are registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 3, 2004. On November 3, 2004, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain names at issue. On November 9, 2004, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 10, 2004. 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 November 10, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2004.

The Center appointed David Perkins as the sole panelist in this matter on December 13, 2004. 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

4.1 The Complainant

4.1.1 The Complainant markets software that enables peer to peer (P2P) communications – principally, music – over the Internet. The Complainant acquired, inter alia, the trademark KAZAA in June 2003, from Sharman Networks Limited (“SNL”). At the same time, the Complainant acquired the domain name <kazaa.com> from LEF Interactive Pty Ltd.

4.1.2 Prior to that date, in January 2002, SNL acquired from the Dutch Company, Kazaa BV, assets including

• the user interface for the Kazaa Media Desktop (“KMD”), the P2P application;

• the right to use the KAZAA trademark when identifying and marketing KMD;

• the “www.kazaa.com” website and related websites (including “www.desktop.kazaa.com”), which are used in connection with the KMD application for advertising and other purposes; and

• a license to certain software modules within the KMD application.

4.1.3 SNL has used the KAZAA trademark continuously since January 2002. Prior to that, the mark was used by its predecessor in title, Kazaa BV.

4.2 KMD and the KAZAA trademark

4.2.1 KMD is said to have been the most popular downloadable software application in Internet history. By September 2004, KMD had passed over 363 million downloads and had just under 3 million users sharing some 789 million files.

4.2.2 KAZAA software is supported by extensive advertising in print media, on merchandise and through the Internet. Some US$700,000.00 was spent during 2003 – 2004, on such advertising.

4.2.3 The Complainant is the registered proprietor of the KAZAA mark [registered No. 747,624] in Benelux in Classes 9, 35, 38, 41 and 42. The application was filed on November 5, 2003. The Complainant has applications for the KAZAA mark in the same classes in Australia [App. No. 960,655] and in the United States [App. No. 78295070] filed on July 8, 2003, and September 2, 2003, respectively. The Complainant has a pending Community Trademark for KAZAA in classes 35, 38 and 41 [App. No. 1,786,391] filed August 1, 2000. The application in Classes 9 and 42 was rejected by decision of the OHIM Opposition Division dated May 17, 2004, following opposition by Speedware Software GmbH by reason of its earlier trademark registration No. 30018460 of CASA in Germany in Class 9 filed on March 20, 2000.

4.3 The Respondent

4.3.1 As noted in paragraph 3 above, no Response has been filed. So, the only information about the Respondent comes from what is contained in the Complaint.

4.3.2 The Respondent has an address in Dublin, Ireland. The administrative, technical and billing contact is John O’Reilly with an email address. The 29 domain names in issue redirect to the <mp3downloading.com> domain name. The WHOIS for that domain name lists Rick Canelle as the administrative and technical contact and Canelle Ltd. as the registrant, all at the same address in Nassau, Bahamas.

4.3.3 The Complainant currently has a pending complaint against IcedIT.com (WIPO Case No. D2004-0713), an organization which has 13 registered sites that all redirect also to “www.mp3downloading.com”. The Complainant also currently has a pending complaint against Web Domain Names (WIPO Case No. D2004-0821), an organization which has 277 sites that, again, all redirect to “www.mp3downloading.com”. It may be, the Complainant suggests, that Mr. Canelle and/or the Respondents in these cases are connected to the Respondent in this administrative proceeding.

5. Parties’ Contentions

5.1 The Complainant

Identical or Confusingly Similar

5.1.1 The Complainant asserts that the 29 domain names in issue are all confusingly similar to the KAZAA trademark. Those domain names were variously registered between May 20, 2002, and October 30, 2002. The Complainant says that in every case the KAZAA mark is strategically modified by adding, subtracting, re-arranging and/or replacing one or more words or letters, so as to create a new word that is either identical, or confusingly similar visually or phonetically.

5.1.2 This takes either of two forms. First, typosquatting which involves slight variations of the KAZAA trademark. For example, KAZAARS: KAZASA etc. Second, using compound words, combing the KAZAA mark (or a variant of that mark) with other terms which, for example “lite”, which refers to the disabling of the third party advertisements which are delivered via the KMD.

5.1.3 As stated in paragraph 4.3.2 above, the domain names in issue all redirect to “www.mp3downloading.com”. That website offers the visitor access to a download P2P software program. Accordingly, the domain names in issue direct Internet users to precisely the same type of product as the Complainant’s KMD software. However, the P2P software program at “www.mp3downloading.com” is neither produced by, nor is in any way associated with, the Complainant. It follows, the Complainant says, that this is likely to cause confusion to Internet users.

5.1.4 Put shortly, the Complainant’s KAZAA trademark is a fanciful term, it is very well known and is, consequently, a strong mark. The parties offer the same products; namely, access to P2P or file sharing software. The domain names in issue are identical or confusingly similar to the KAZAA trademark.

No rights or legitimate interests

5.1.5 None of the circumstances set out in paragraph 4(c) of the Policy apply. In this respect, the Complainant states that none of the 29 domain names in issue were registered until well after the popularity of KMD and the wide recognition of the KAZAA mark had long been established. As stated in paragraph 5.1.1 above, the Panel notes the 29 domain names in issue were registered in 2002, the earliest in May 2002 and the latest in October 2002.

Registered and Used in Bad Faith

5.1.6 The nub of the Complaint is that this is bad faith registration and use on a significant scale. The 29 domain names in issue have been registered primarily for the purpose of disrupting the business of SNL and are clearly designed to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s KAZAA mark as to the source, sponsorship, affiliation or endorsement of the “www.mp3downloading.com” website.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

● that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

● that the Respondent has no rights or legitimate interests in respect of the domain name; and

● that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

Identical and Confusingly Similar

6.5 The Panel finds that the Complainant has rights in the KAZAA trademark, which is a well known mark. The Panel also notes the intention of the Policy; to prevent bad faith registrations of domain names that take advantage of any confusion with a Complainant’s trademark.

6.6 The Panel has found in 6.17 below, that the Complainant has proved that the disputed domain names were registered to take advantage of the similarity between the domain names and the Complainant’s KAZAA trademark.

6.7 When making a decision as to the confusing similarity of a domain name, the traditional test used in trademark law is the natural starting point. However, under the Policy, the concept of confusing similarity may be wider than that of traditional trademark law. For example the location or the class of the trademark is not relevant in the Policy, leading to cases where domain names have been found to be confusingly similar to a trademark despite the fact that a strict trademark test would have found differently.

6.8 Also relevant is the number of domain names registered by the Respondent. In similar cases in the past, panelists have taken a broad approach to confusing similarity, with the intention of the Respondent in registering the domain names being a relevant factor in finding confusing similarity. For example, Ticketmaster Corporation v. Bill Hicks, WIPO Case No. D2004-0400 where the Panel found that “intentional typographical errors do not render a domain name dissimilar to a trademark”

6.9 The same applies here. The inevitable conclusion must be that the domain names were registered by a Respondent for the purpose of using those domain names to attract confused Internet users looking for the Complainant. The Respondent has done this through registering domain names that are visually similar, aurally similar, create a similar impression, or aim to take advantage of small typographical errors people may make when attempting to type “www.kazaa.com” into their browser. These actions by the Respondent evidence a deliberate strategy of registering domain names confusingly similar to the Complainant’s KAZAA mark.

6.10 Based on the above, the Panel finds that all 29 of the domain names in issue are confusingly similar to the KAZAA mark and, accordingly, the Complaint satisfies the requirement of paragraph 4(a)(i) of the Policy.

Rights or Legitimate Interests

6.11 In default of Response, there is no evidence of use by the Respondent, or demonstrable preparations to use, any of the disputed domain names or names corresponding to them in connection with a bona fide offering of goods or services before notice of this dispute.

6.12 Nor is there any evidence that the Respondent was commonly known by any of the domain names in issue.

6.13 Finally, there is no evidence of the Respondent making a legitimate noncommercial or fair use of the 29 domain names found to be confusingly similar, without intent for commercial gain to misleadingly divert consumers or to tarnish the KAZAA trademark.

6.14 Indeed, use by the Respondent of the various misspellings and variations of and/or additions to the KAZAA trademark is clearly aimed at attracting Internet users into visiting the “www.mp3downloading.com” website and purchasing the software program at that site. Indeed, as noted in paragraph 5.1.5 above, all the domain names in issue were registered after the Respondent’s KAZAA mark had become very well known.

6.15 The Respondent’s use of the KAZAA trademark is not licensed or otherwise authorized by the Complainant. Further, to compound damage to that trademark and to the Complainant’s business, the software offered at the “www.mp3downloading.com” website to which the domain names in issue resolve is offered for a fee whereas no access fee is charged for the Complainant’s KMD file-sharing software.

6.16 Accordingly, the Complainant succeeds in establishing the second requirement of paragraph 4(a) of the Policy.

Registered and Used in bad Faith

6.17 As noted above, the Complainant’s KAZAA trademark and business was well known before the first of the 29 domain names in issue were registered, namely May 2002. By choosing the variants of the KAZAA trademark and compound names including that trademark and variants of it, which comprise the domain names at issue, it can only be assumed the Respondent acted deliberately with a view to trading off the reputation of the KAZAA mark. The KAZAA mark is a striking, invented word. The Respondent’s motive can only have been to attract Internet users to a website offering its competing file-sharing software product.

6.18 The Complainant satisfies the two prongs of the third requirement of paragraph 4(a) of the Policy.

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 29 domain names, <download-kazaa.com>, <freekazaa.com>, <kazaaalite.com>, <kazaadesktop.com>, <kazaa-download.com>, <kazaa-downloads.com>, <kazaafree.com>, <kazaalie.com>, <kazaa-media.com>, <kazaa-music.com>, <kazaarlite.com>, <kazaars.com>, <kazaaupdate.com>, <kazaa-virus.com>, <kazacom.com>, <kazadownload.com>, <kazammusic.com>, <kazars.com>, <kazasa,com>, <kazzadownload.com>, <kazzamusicdownloards.com>, <kazzasoftware.com>, <lightkazaa.com>, <mikaza.com>, <my-kazza.com>, <www-kazaa.com>, <wwwkazaalite.com>, <wwwkazza.com> and <www-kazza.com> in issue, be transferred to the Complainant.

David Perkins
Sole Panelist

Dated: December 24, 2004