WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Frostwire, LLC v. Herki Hitrov / PrivacyProtect.org

Case No. D2012-0920

1. The Parties

The Complainant is Frostwire, LLC of Miami Beach, Florida, United States of America, represented by Espinosa | Trueba, PL, United States of America.

The Respondent is Herki Hitrov of Tallin, Estonia / PrivacyProtect.org of Nobby Beach, Australia.

2. The Domain Name and Registrar

The disputed domain name <frostwirepro.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2012. On May 1, 2012, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On May 2, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 4, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 8, 2012.

The Center verified that the Complaint together with the amended 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 the 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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 30, 2012.

The Center appointed Jane Lambert as the sole panelist in this matter on June 5, 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

The Complainant is incorporated as a limited liability company in the state of Florida in the United States of America. It distributes Frostwire file sharing software and manages an online community of users of that software.

The Complainant is the proprietor of the sign that is registered at the United States Patent and Trademark Office as a trade mark for computer software for use in searching and sharing computer files on the Internet in class 9 under registration number 3,381,297. The registered mark consists of a device that combines the word “frostwire” with an image of a length of barbed wire.

The Complainant has used that mark in relation to such software continuously and conspicuously since October 1, 2006. By reason of such use, file sharers in the United States of America and elsewhere associate the word “frostwire” in relation to computer software with the Complainant and none other.

The Respondent registered the disputed domain name on June 6, 2011. It is an Australian privacy service which holds the disputed domain name for one Herki Hitrov of Estonia. Annexed to the Complaint are what appear to be screen dumps of web pages downloaded from the website “www.frostwirepro.org”. Those pages are very similar to the Complainant’s site at “www.frostwire.com” in color and content. Even the Complainant’s trade mark is reproduced on those pages.

5. Parties’ Contentions

A. Complainant

The Complainant claims the transfer of the disputed domain name on the following grounds:

(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights.

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

(iii) The disputed domain name has been registered and is being used in bad faith.

As to the first ground, the Complainant refers to its trade mark registration and its goodwill and reputation in that mark in relation to computer software. The Complainant says that the disputed domain name differs from the word “frostwire” only in the addition of the suffix “pro”. It submits that the disputed domain name is thus identical or confusingly similar to a trade mark in which the Complainant has rights.

As to the second ground the Complainant argues that:

(1) The Respondent is not making legitimate, noncommercial or fair use of the disputed domain name.

(2) The Respondent’s site is not used and is unlikely to be used for the bona fide offering of goods or services.

(3) The disputed domain name has been used to divert traffic to other sites either for the purpose of distributing third party software or for obtaining click through revenues and sales commissions.

(4) The Respondent has used a privacy service without any obvious reason.

As to the third ground, the Complainant contends that the Respondent registered the disputed domain name for the sole purpose of causing confusion in the market place in violation of paragraph 4(b) of the Policy. In particular, the Complainant alleges that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Complainant says that the registration of a domain name that incorporates a well-known mark betokens bad faith and that the Respondent’s website can serve no useful, legitimate purpose.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed, the Complainant has to satisfy the Panel that:

(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In the administrative proceeding under the UDRP, the complainant must prove that each of these three elements is present.

A. Identical or Confusingly Similar

The Panel is satisfied that the first element is present.

As the Complainant has observed, the disputed domain name differs from the word “frostwire” only in the addition of the suffix “pro”. The word “pro” is used often to promote an enhanced version of a product or service. Many of those familiar with the Complainant’s software would have supposed that “frostwirepro” was an enhanced version of the Complainant’s file sharing software.

B. Rights or Legitimate Interests

The Panel is also satisfied that the second element is present.

Paragraph 4(c) of the Policy lists a number of circumstances that enable a respondent to show that it has rights or legitimate interests in a domain name. Those circumstances are illustrative and not exhaustive.

There is no evidence that any of those circumstances apply. Nor is there evidence of other circumstances that might indicate rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Panel is satisfied that the third element is present.

Paragraph 4(b) of the Policy lists a number of circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances is that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location (paragraph 4(b)(iv) of the Policy).

All the conditions of paragraph 4(b)(iv) of the Policy are met. The Panel has already held that many of those familiar with the Complainant’s software would have supposed that “frostwirepro” was an enhanced version of the Complainant’s file sharing software. The Respondent has used the disputed domain name for a website that is similar in appearance to the Complainant’s where software can be downloaded. As previously noted, the Complainant argues that the disputed domain name has been used to divert traffic to other sites for the purpose of distributing third party software or for obtaining click through revenues and sales commissions. While the precise nature of the commercial gain is not apparent from the screen dumps, the Respondent is unlikely to have gone to the trouble of making such a website unless it had expected commercial gain in one form or another. As confusion was inescapable it is reasonable to infer that that was the Respondent’s intention.

As to the Complainant’s other grounds, the Panel does not accept that the use of a privacy service of itself is a sign of bad faith. There are all sorts of good reasons why the registrant of a domain name would not wish to advertise its name and postal or email address. The Panel is far from persuaded that FROSTWIRE is a well-known mark in the sense that AOL or ELI LILLY are well known.

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 <frostwirepro.org> be transferred to the Complainant.

Jane Lambert
Sole Panelist
Dated: June 18, 2012