WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sharman License Holdings, Limited v. IcedIt.com
Case No. D2004-0713
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 in respect of all of the 13 domain names the subject of the dispute is IcedIt.com of Melbourne, Victoria, Australia.
2. The Domain Names and Registrar
There are 13 disputed domain names as follows:
The Registrar with whom the domain names are registered is Enom Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 4, 2004. On September 7, 2004, the Center transmitted by email to Enom Inc. a request for Registrar verification in connection with the domain names in issue. On September 8, 2004, Enom Inc. transmitted by email to the Center its verification response confirming that the Registrant for all the domain names was the Respondent IcedIt.com. The administrative contact was also given as the said IcedIt.com. The technical contact and billing contact was given as IcedIt.com.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for the Uniformed Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
Notification of the Complaint and commencement of the administrative proceedings was given to the Respondent on September 15, 2004, by email and by hard copy. In the event no Response was received by the Center.
Notification of Respondent’s Default was given by email to the Respondent on October 12, 2004. No Response was subsequently received.
On October 20, 2004, the Administrative Panel was appointed consisting of Mr Clive Duncan Thorne, Sole Panelist. The Panel considers 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 in Paragraph 7. No interlocutory proceedings have taken place and no interlocutory orders have been issued by the Panel. The language of the proceedings is English.
At the request of the Panel an extension of time for submission of the Decision was granted by the Center until November 15, 2004.
There are two procedural matters which the Panel wishes to comment upon. Firstly, the Complainant draws attention to a copy of a “terms and conditions” document exhibited at Annex A to the Complaint. This appears to govern transactions on a separate billing site that the domain names at issue are redirected to upon page-load. The document specifically refers to “DBC Ventures” as the party with whom an end-user is agreeing to terms. The Complainant concludes that the Respondent may also be known by this name or DBC Ventures should also be deemed a respondent. In the Panel’s view the evidence of the relationship between the Respondent and DBC Ventures is insufficiently clear. The Panel does not consider that DBC Ventures should also be deemed a Respondent and the Panel proceeds to deal with this Complaint on the basis that there is a sole Respondent ie. the named Respondent, IcedIt.com.
The second matter is that the Complainant reserves the right to amend the Complaint to add additional domain names and/or to bring additional UDRP Proceedings against the named Respondent. The Panel wishes to make it clear that it is deciding this Complaint on the basis of the 13 domain names which are cited in the Complaint only. No application has been made by the Complainant to amend the Complaint. It is a matter for the Complainant if it wishes to bring additional UDRP Proceedings against the Respondent.
4. Factual Background
The Complainant adduces evidence of registered and unregistered trademark rights. In particular, the Complainant relies upon the mark “KAZAA”. The Complainant owns the mark “KAZAA” through an acquisition of the mark by a related entity, Sharman Networks Limited and has used it continually throughout the world since January 2002 to identify and market software that enables peer-to-peer (P2P) communications over the Internet.
In January 2002, Sharman Networks Limited purchased assets from the Dutch Company Kazaa BV including (i) the user interface with Kazza Media Desktop and (ii the right to use the Kazaa mark when identifying marketing Kazaa Media Desktop (iii) “www.kazaa.com” website and related websites used in connection with Kazaa Media Desktop application advertising and other purposes and (iv) a license to certain software modules within the Kazaa Media Desktop application that were not purchased at the time.
The Complainant asserts that Kazaa Media Desktop has been the most popular downloadable software application in Internet history with downloads of nearly 350,000,000 as of April 2004.
The Complainant owns the trademark and service marks of Sharman Networks Limited including the mark “KAZAA”. It has released several versions of the software with each launch supported by extensive advertising of the Kazaa software. In late 2003, the Complainant spent nearly 600,000 United States dollars on a consumer advertising campaign known as the “Kazaa Revolution”, largely in print media and on merchandise and has followed up that campaign with Internet advertising in early 2004, that would cost approximately another 100,000 United States dollars. The Panel has seen samples of advertising included at Annex E to the Complaint.
The Complainant has also filed for registration of a trademark “KAZAA” in a number of jurisdictions including the United States, Australia, the European Community and the Benelux Countries. Registration of the mark has been granted in the Benelux Countries under registration number 0747624. The application has been rejected for certain classes as a Community Trademark. This has been based upon potential confusion with a previously existing third party mark “CASA”. However, the registration is proceeding in relation to other classes following a decision of the Community Trademark Office. The Complainant’s application also remains pending in Australia and the United States listed at Annex F to the Complaint are summaries of the status of the application.
The Complainant submits that as a result of the extreme and unprecedented popularity of Kazaa Media Desktop and the Complainant’s active and continued promotion of it and of the brand Kazaa it has established a strong secondary meaning in the form of a ready association among hundreds of millions consumers worldwide between the mark “KAZAA” and the source of this specific and powerful P2P application. Having considered the evidence referred to above of both unregistered and registered trademark rights taking into account the lack of any evidence to the contrary from the Respondent the Panel is satisfied that the Complainant has rights in the trademark “KAZAA”.
5. Parties’ Contentions
The Complainant submits that:
A. The Domain Name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. The Respondent has no rights or legitimate interests in respect of the domain names.
C. The domain names were registered and have been used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussions and Findings
In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within the Policy is present. These are as follows:
(i) the domain names in dispute are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) the domain names are registered and are being used by the Respondent in bad faith.
The Panel proceeds to deal with each of these elements in turn in respect of each of the domain names in dispute.
A. Confusingly Similar
The Panel has already found that the Complainant has registered and unregistered rights in the mark “KAZAA”. The issue which the Panel has to decide in respect of each domain name in dispute is whether it is identical or confusingly similar to the trademark “KAZAA”.
The Complainant contends:
1. All the domain names are “confusingly similar” to the mark KAZAA in that each represents a “slight variation” of the word “Kazaa”. In every case the word “Kazaa” is strategically modified by adding, subtracting one or more letters thus creating a new word similar in sound and/or spelling to the Complainant’s mark.
2. The Respondent is attempting to lure would be consumers of Kazaa Media Desktop who might mistype the web address or who maybe unfamiliar with the exact spelling of the word Kazaa to another site.
3. Each domain name uses a (presumably) intentional misspelling/variation of the mark “KAZAA” to provide the same type of product to consumers using the same Internet channels as the Complainant’s customers.
4. It submits that all of the words chosen for the domains have strong phonetic similarities to the “KAZAA” mark. Confusing similarity turns on the similarity in sound, appearance and ideas suggested by the mark and the domain name among other factors. It relies upon a previous UDRP decision; Altavista Company v. Geoffrey Fairbairn, WIPO Case No. D2000-0849.
5. By way of qualification the Complainant submits that the Complainant has not had sufficient time at this point to gather evidence of actual confusion but asserts that this should not weigh against the analysis given by the presence of most of the other factors and the likelihood that evidence of actual confusion exists.
The Panel considers that it should approach each of the domain names and consider whether each is confusingly similar on their face. Whether or not, letters differ between the mark KAZAA and the domain name complained upon is merely part of the test which the Panel has to decide i.e. is the domain name confusingly similar? The Panel does however agree with the Complainant that confusing similarity must turn “on the similarity of sound, appearance and idea suggested by the mark and the domain name” among other factors. The Panel therefore proceeds to consider confusing similarity on this basis.
The Panel takes into account previous UDRP decisions relating to the practice of “typosquatting” which arises where the domain name is a slight alphabetical variation from a famous mark e.g. Deutsche Bank AG v. New York TV Tickets Inc., WIPO Case No. D2001-1314 and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201. In these cases the Panel has found the circumstances of “typosquatting” to constitute confusing similarity.
In the Panel’s view this is the position here. Applying the test to the domain names in issue it finds all of the domain names to be confusingly similar to the mark “KAZAA” in which the Complainant has rights.
B. The Respondent has no rights or legitimate interests.
The Complainant submits that there is no evidence that the Respondent used or demonstrably prepared to use the domain names in connection with the bona fide offering of goods or services. Specifically it points out that the Respondent does not offer the Kazaa Media Desk top. Nor does it use the domain names as part of its business names. Instead it points out that the domain names are effectively stylistic variations of the Complainant's mark. The Respondent is using variations of the name incorporating variations in spelling for its own commercial gain, misleadingly diverting consumers to the sites in questions and charging a fee for access to file sharing software.
Taking into account overall the evidence submitted by the Complainant and the fact that there are no submissions to the contrary by the Respondent, the Panel accepts the Complainant's submissions and finds that the Respondent has no rights or legitimate interest in respect of the domain names in dispute.
C. The domain names were registered and being used in bad faith.
In support of this submission the Complainant submits that the domain names were designed to attract the commercial gain Internet users to the sites at issue by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the site of the products offered thereon. It points out that the Complainant’s mark is extremely well known and that the Respondent would “surely” have known of the success and popularity of the “KAZAA” application when registering the domain names.
The Panel accepts this submission in the absence of any submissions to the contrary and therefore finds that the Respondent has registered and used the domain names in bad faith.
For the foregoing reasons and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules the Panel finds for the Complainant in respect of the domain names:
and orders that the said domain names be transferred to the Complainant.
Clive Duncan Thorne
Dated: December 17, 2004