WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Frostwire, LLC v. WhoisGuard / Danil Erko
Case No. D2012-0868
1. The Parties
The Complainant is Frostwire, LLC of Florida, United States of America (“USA”), represented by Espinosa Trueba, PL, USA.
The Respondents are WhoisGuard of Los Angeles, California, USA / Danil Erko of Longueuil, Québec, Canada.
2. The Domain Names and Registrar
The disputed domain names <downloadfrostwire.org> and <frostwirefree.net> are registered with eNom, Inc.
3. Procedural History
The Complaint concerning four (4) domain names was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2012. On April 24, 2012, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain names. On April 25, 2012, eNom, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the four (4) domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2012 providing the registrant and the contact information for each of the four (4) domain names as disclosed by the Registrar, informing the Complainant that the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”)and the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) do not contemplate the filing of a single Complaint against more than one domain name holder, and inviting the Complainant to submit an amendment to the Complaint.
The Complainant filed an Amended Complaint concerning only the disputed domain names on May 4, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the 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 Respondents 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. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on June 1, 2012.
The Center appointed Clive Duncan Thorne 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
In the absence of a Response, the Panel proceeds to decide this case on the basis of the evidence contained in the Amended Complaint of the Complainant ("the Complaint"). In the absence of evidence to the contrary from the Respondents, the Panel accepts the reasonable factual allegations submitted by the Complainant as true.
The Complainant has been using the trade mark FROSTWIRE (the “Trademark") in the USA for computer software for use in searching and sharing computer files with others on the Internet conspicuously and continuously since October 1, 2006.
On February 12, 2008, the Complainant registered the Trademark and associated design with the United States Patent and Trademark Office. A copy of the registration No. 3,381,297 is exhibited at Annex 4 to the Complaint.
Since commencing use of the Trademark, the Complainant has actively promoted the Trademark to the extent that it has become one of the best known and most respected brands of online file sharing software.
As a result of this long and continuous use, the Trademark has come to identify the software for searching and sharing files associated with the Complainant, and distinguish them from those of others, and has come to represent and symbolize to the purchaser that the product on which the Trademark appears performs to standards of the highest quality. The Trademark has earned a substantial reputation and goodwill with consumers.
The Complainant has also obtained and uses the domain name <frostwire.com> to distribute its software. A copy of the WhoIs record showing the registration of this domain name is exhibited at Annex 5 to the Complaint.
According to the Complainant, the disputed domain names include the Trademark FROSTWIRE.
The Complainant adduces evidence that the Respondents prominently use, without authority, both the textual and graphic elements of the Trademark on the websites complained of. Evidence of this is exhibited at Annex 6 to the Complaint. The Complainant points out that the Respondents misrepresent that its websites are owned or operated by the Complainant by their use of the words "copyright Frostwire", at the bottom of the page.
The Complainant also relies upon evidence that the Respondents' websites have been identified as "malicious imposter sites". Evidence of this is set out at Annex 7 to the Complaint which shows that instead of downloading the relevant software, the sites install pop-ups and try to force the user to download other third party software. If the websites are accessed to permit downloading of a version of the Complainant's Frostwire software, the installer is wrapped in code which is not authorized or approved by the Complainant. The websites generally download a counterfeit installer which actually installs a different program called "RealPlayer".
5. Parties’ Contentions
1. The Complainant submits that the disputed domain names are identical or confusingly similar to the Trademark in which the Complainant has rights. In particular, the Complainant submits that the Respondents prominently use without authority both the textual and graphical elements of the Trademark on its websites.
2. The Respondents have no rights or legitimate interests in respect of the disputed domain names. In particular, the Complainant submits that there is no evidence to show that the use is for a bona fide offering of goods and services, but rather that the use of the sites by the Respondents is used to mislead the public.
3. The disputed domain names were registered and are being used in bad faith. The Complainant relies upon the evidence of bad faith registration and use so that the disputed domain names are used by attracting Internet users to websites for commercial gain.
In the absence of any Response, there are no submissions from the Respondents.
6. Discussion and Findings
A. Identical or Confusingly Similar
For the reasons set out above, the Panel is satisfied that the Complainant has rights in the Trademark. The issue that the Panel needs to address is whether the two disputed domain names are identical or confusingly similar to the Trademark. The first of the disputed domain names <downloadfrostwire.org> essentially consists of the mark FROSTWIRE with the prefix of the word "download". In the Panel's view, the predominant part of the disputed domain name uses the Trademark FROSTWIRE and that the use of the word "download" is purely descriptive. In the Panel's view this is sufficient to establish that this domain name is identical or confusingly similar to the Complainant's registered Trademark.
In the case of the second disputed domain name, <frostwirefree.net> the Complainant's Trademark FROSTWIRE is used as the first part of the disputed domain name with a suffix consisting of the word "free". Again, in the Panel's view, the use of the word "free" simply descriptively qualifies the word "Frostwire". Accordingly, the Panel considers that the second disputed domain name <frostwirefree.net> is also confusingly similar to the Complainant's registered Trademark FROSTWIRE.
It follows that the Complainant succeeds in proving this element of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that the Respondents' websites are not used and show no intention to be used for a bona fide offering of goods and services. Moreover, there is no evidence that the Respondents are making a legitimate, noncommercial or fair use of the Trademark as the dominant part of the disputed domain names.
In the Panel's view, it is clear on the evidence that the Respondents' use of the disputed domain names is to distribute what appears to be infringing software to other sites for the purpose of generating click-through revenue and sales commissions. There is considerable authority from earlier UDRP Panel decisions that such use does not constitute a bona fide offering of goods or services so as to constitute a right or legitimate interest to use the disputed domain names under the terms of the Policy.
It follows that the Complainant succeeds in establishing this element of the Policy.
C. Registered and Used in Bad Faith
The Complainant relies on evidence of bad faith, registration and use when registration and use of a disputed domain name occurs in order to utilize another's well known trademark by attracting Internet users to a website for commercial gain.
The Panel takes note of the fact that the Complainant registered its own domain name <www.frostwire.com> in 2005 and has been using the Trademark since October 2006. This is well before the Respondents registered the disputed domain names in 2010 and 2011. Having considered the evidence adduced by the Complainant referred to in section 4 above, the Panel is satisfied that the disputed domain names were registered and are being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <downloadfrostwire.org> and <frostwirefree.net> be transferred to the Complainant.
Clive Duncan Thorne
Date: June 28, 2012