Complainant is Bittorrent, Inc., San Francisco, California, United States of America, represented by Fenwick & West, LLP, United States of America.
Respondent is Ringo Fernandes, Morez, France.
The disputed domain name <bittorent.biz> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 31, 2008. On January 5, 2009, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the disputed domain name. On January 5, 2009, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 13, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 6, 2009. The Panel notes that copies of the Complaint despatched by courier could not be delivered due to Respondent's change of address. However, the Panel is satisfied that the requirements of Rule 2 of the Rules have been met.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on February 16, 2009. 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.
On February 24, 2009, the Panel issued a Procedural Order inviting Complainant to file at the Center and serve on Respondent further evidence of use by Complainant of the trademark BITTORRENT prior to October 10, 2003. Complainant filed and served further evidence on March 6, 2009. In accordance with the Procedural Order the due date for further Response was March 12, 2009. No further Response was filed. In this decision reference to “the Complaint” includes the further evidence.
The disputed domain name was created on October 10, 2003.
The trademark BITTORRENT was first used by Complainant's predecessor and co-founder Bram Cohen in 2001 in respect of peer-to-peer open source software. Complainant has produced evidence of Mr. Cohen's use of the BITTORRENT trademark at his website <bitconjurer.org> from July 2001. That website was regularly updated and continually included references to the Bittorrent software and its development.
Complainant has several registrations of trademarks consisting of, or including the word ‘Bittorrent' throughout the world. The earliest of these, U.S. Registration No. 3238849 dates from December 9, 2004 and claims first use in commerce from January 1, 2001. Complainant's Canadian registration dates from October 21, 2005 and claims first use from 2002. Complainant has many other registrations and pending applications for registration of BITTORRENT and BITTORRENT DNA including pending applications in the European Union. Complainant also has over seventy-five registrations of domain names consisting of variations of the word Bittorrent.
Complainant has also produced evidence of reference to Bittorrent software from Cnet in July 2003 from New Scientist in January 2002. Articles discussing the Bittorrent software appeared in The Hindu of March 2003, at MP3 Newswire.net in May 2003, Cnet News of May 2003, Der Spiegel of June 2003, On Ramp.com of July 2003, Mac Observer of July 2003 and Smart Computing of August 2003. By September 2003, there had been several million downloads for Bittorrent and the number of downloads has increased continually since that date. According to SFGate.com of August 6, 2006, Bittorrent had become the most popular peer-to-peer tool on the web, with nearly 70 million users and taking up 30 to 40 percent of the world Internet traffic.
Nothing is known of Respondent save that the disputed domain name resolves to a website which graphically displays and offers for sale video movies, including pornographic movies. Complainant states that it became aware of Respondent's website in October 2006.
Complainant consulted French counsel and sent a letter to the registrar requesting cancellation of the domain name. Complainant made further attempts through its French Counsel to have the website taken down by contacting Respondent's web hosting company and Respondent himself but without success. The Complaint was filed on December 31, 2008.
Complainant contends that the disputed domain name is substantially identical and is confusingly similar to Complainant's BITTORRENT trademark differing from that trade mark only by the omission of one letter, the letter “r”. Complainant contends that that does not create a distinguishable domain name and cites Reuters Limited v Global Net 2000, Inc., WIPO Case No. D2000-0441. Complainant contends that Respondent has no legitimate relationship to Complainant and is not licensed, authorised or permitted to use the disputed domain name. It further contends that Respondent is not commonly known by the disputed domain name or any variation of it and that the use of the disputed domain name to direct internet users to Respondent's explicitly pornographic website is neither a bona fide offering of goods or services nor a legitimate or fair use of Complainant's mark. Complainant contends that Respondent is using the domain name intentionally and for commercial gain to attract users to its website by creating a likelihood of confusion with Complainant's mark. Respondent's conduct is therefore squarely within paragraph 4(b)(iv) of the policy and is further calculated to tarnish Complainant's mark. Complainant cites several prior decisions under the UDRP including ABB Asea Brown Boveri Ltd v. Quicknet, WIPO Case No. D2003-0215 and America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661.
With respect to the time which elapsed between Complainant becoming aware of Respondent's use and registration of the disputed domain name in October 2006 and the filing of the Complaint in December 2008, Complainant cites a number of prior decisions including Tax Analyst v. eCorp, WIPO Case No. D2007-0040 and Tom Cruise v. Network Operations Center/Alberta Hot Rods, WIPO Case No. D2006-0560 as showing that the Complaint is not barred either by laches or acquiescence.
Respondent did not reply to Complainant's contentions.
The word Bittorrent is an unusual and distinctive word. Relevantly it is a word, which contains a double consonant, the pronunciation of which not materially altered by the omission of one of those consonants. Visually, the word “Bittorrent” and “Bittorent” are almost identical.
Complainant has produced substantial evidence of its use of and reputation in the trademark BITTORRENT. It has several registrations and pending trademark applications throughout the world including the United States of America, Canada, Australia, New Zealand and several Asian and Latin American countries. The Panel notes, however, that Complainant's title to the BITTORRENT trademark is in dispute within the European community as is apparent from the decisions in Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith, WIPO Case No. D2007-1033 and Bittorrent, Inc v. Day Networks Marketing GmbH, WIPO Case No. D2005-0858. Furthermore, each of Complainant's pending trademark applications is under opposition from Bittorrent Marketing GmbH, complainant in Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith, WIPO Case No. D2007-1033. Complainant's failure to refer to these facts in the Complaint demonstrates a lack of candour. Nevertheless, the Panel concludes on the basis of the evidence presented, that the word “Bittorrent” is a trademark in which Complainant has rights even though those rights may not be exclusive.
The Panel therefore finds that the domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has made a prima facie showing that Respondent has no licence, permission or authorisation to use the domain name and is not commonly known by it. Respondent has, however, been using the domain name in the offering of goods and services from a time prior to any notice to him of the dispute. The question remaining, however, is whether that offering was bona fide. Respondent of course contends that it was not. Respondent had the opportunity to rebut Complainant's contention but failed to do so.
The Panel accepts Complainant's submission that Respondent's use of the domain name was not bona fide and in doing so adopts the reasons clearly and succinctly expressed by the unanimous decision of the 3 member panel in Madonna Ciccone (PKA Madonna) v. Dan Parisi and madonna.com.
“Respondent has failed to provide a reasonable explanation for the selection of Madonna as a domain name. Although the word “Madonna” has an ordinary dictionary meaning not associated with Complainant, nothing in the record supports a conclusion that Respondent adopted and used the term “Madonna” in good faith based on its ordinary dictionary meaning. We find instead that name was selected and used by Respondent with the intent to attract for commercial gain Internet users to Respondent's web site by trading on the fame of Complainant's mark. We see no other plausible explanation for Respondent's conduct and conclude that use which intentionally trades on the fame of another can not constitute a “bona fide” offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.”
The Panel therefore finds that Respondent has no rights or legitimate interests in the domain name.
Complainant is satisfied on the evidence that at the date of registration of the disputed domain name, October 10, 2003, Complainant's trademark BITTORRENT had been extensively used in Internet commerce and had been widely publicised and discussed. That use, publicity and discussion took place largely on the Internet with a universal reach. The fact that the Bittorrent software was published and discussed in general publications such as New Scientist and Der Spiegel, further evidences that Complainant's trademark was known beyond the United States and in Europe in particular. Accordingly, the fact that Respondent is a French resident does not discount the likelihood Respondent was aware of Complainant's mark when he registered the domain name. Furthermore, as noted above, the word “Bittorrent” is unusual and distinctive and there is no apparent reason why Respondent should adopt it. There is certainly no apparent reason why Respondent should do so in respect of a site for video downloads in general or pornographic videos in particular, unless it was to trade upon the established reputation and high internet profile of Complainant's mark.
Respondent continued to use the domain name after receiving Complainant's demand and in fact ramped up the pornographic contents.
The Panel therefore finds that the domain name was registered and is being used in bad faith.
The remedy sought by Complainant is the transfer to it of the domain name. As the Panel has noted above, although Complainant has demonstrated rights in the trademark, there is a dispute as to whether or not those rights are exclusive. Accordingly, for the Panel to order the transfer of the domain name to Complainant would pre-empt the outcome of the dispute taking place in other fora. Accordingly, the Panel considered whether the appropriate course would be to order its cancellation. However, the alternative remedy of cancellation of the disputed domain name has its own problems since once the domain name is cancelled it becomes available to all comers. Pursuant to paragraph 4(k) of the Policy the Registrar will wait ten business days after being informed of the Panel's decision before implementing the decision. That period provides not only Respondent but in effect also a third party the opportunity to institute such proceedings as may be available to it in respect of the domain name. The Panel therefore considers that transfer of the domain name is the preferred course provided that the third party, Bittorrent Marketing GmbH, is informed of the decision at the same time as the decision is communicated to the parties.
For all of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <bittorent.biz> be transferred to Complainant and that Bittorrent Marketing GmbH be informed of the Panel's decision at the same time as the decision is communicated to the parties.
Desmond J. Ryan AM
Dated: March 18, 2009