Napster, Inc. v. Unasi Inc.
Case No. D2005-1090
1. The Parties
The Complainant is Napster, Inc., Los Angeles, California, United States of America, represented by Quinn Emanuel Urquhart Oliver & Hedges, LLP, United States of America.
The Respondent is Unasi Inc., Panama, Panama.
2. The Domain Name and Registrar
The disputed Domain Name <napsterporno.com> is registered with CapitolDomains LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2005. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 8, 2005. On November 1, 2005, the Center transmitted by email to CapitolDomains a request for registrar verification in connection with the domain name at issue. On November 1, 2005, CapitolDomains 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. 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 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2005.
The Center appointed Timothy D. Casey as the sole panelist in this matter on December 14, 2005. 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
Complainant is the current owner of a series of NAPSTER trademarks registered in the United States of America, some of which were used in the public as early as 1999. The NAPSTER trademarks are used in conjunction with the offering of a subscription service that enables customers to sample and download digital music from an online collection of music. Although ownership and the nature of the services provided under the NAPSTER trademarks has changed since 1999, the current use is essentially the same as prior uses.
The disputed Domain Name was originally registered on June 13, 2002 with the registrar DNChannel.com by an unidentified third party. That registration appears to have expired on June 14, 2005. The Domain Name was registered a second time on September 5, 2005 by Respondent. Although Complainant attempted to correspond with the original registrant, there is no evidence in the record of any attempt on Complainant’s part to correspond with Respondent. Complainant has included archived images of the website service offered by the original registrant, as well as the website service offered by Respondent. As the website services offered by the original registrant are not relevant to this Complaint, as no connection between the original registrant and Respondent has been shown by Complainant, only the website service offered by Respondent will be considered herein.
5. Parties’ Contentions
Complainant contends that Respondent did not reply to Complainant’s letter, attached as Annex 6 to the Complaint, but changed the content of its website service to a search page featuring numerous commercial and pornographic links. Complainant contends that Respondent receives a commission for customers referred to the linked websites associated with Respondent’s website, and that several of the links take users to music download services in direct competition with Complainant.
Complainant contends that the Domain Name is confusingly similar to Complainant’s NAPSTER trademarks because the Domain Name is comprised of the NAPSTER mark, the generic term “porno” and the <.com> extension. Complainant cites a number of UDRP panel decisions in which it was found that the mere addition of a generic term to a trademark was insufficient to prevent the disputed domain name from being found to be confusingly similar to the trademark. Complainant further asserts that the inclusion of the term “porno” with the NAPSTER trademark suggests that the products or services being offered by Respondent are associated with, sponsored by, or affiliated with Complainant, and that such actions further the confusing similarity between Complainant’s trademarks and the Domain Name.
Complainant has not given Respondent permission or a license to use Complainant’s trademarks. Complainant contends that Respondent is not commonly known by the Domain Name and that Respondent’s use of the Domain Name is commercial and intended to divert customers and to tarnish Complainant’s trademarks, and as such cannot be considered a bona fide offering of goods or services.
Complainant further asserts that Respondent’s registration and use of the Domain Name is in bad faith because Respondent knew or should have known of Complainant’s trademarks when the Domain Name was registered and that Respondent’s use of the Domain Name intentionally attempts to attract, for commercials gain, Internet users to its website, by creating a likelihood of confusion with Complainant’s trademarks, such as to source, sponsorship, affiliation or endorsement of Respondent’s website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, adopted by the Internet Corporation for Assigned Names and Numbers on August 26, 1999, applies inter alia to domain name registrations made in the “.com” namespace. Paragraph 4(a) of the Policy requires a complainant to make out three elements to succeed in an administrative proceeding initiated under the Policy:
1. The complainant has rights in a trade or service mark, with which respondent’s domain name is identical or confusingly similar (paragraph 4(a)(i)); and
2. The respondent has no rights or legitimate interests in respect of the domain name (paragraph 4(a)(ii)); and
3. The respondent registered and is using the domain name in bad faith (paragraph 4(a)(iii)).
A. The Complainant has Rights in a Trade or Service Mark, with which Respondent’s Domain Name is Identical or Confusingly Similar
There are two requirements that a complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the complainant’s marks.
Complainant has provided sufficient documentation to establish its rights in one or more NAPSTER trademarks under paragraph 4(a)(i) of the Policy.
The second requirement is that the Domain Name is identical or confusingly similar to the marks. Although the NAPSTER portion of the Domain Name is identical to Complainant’s NAPSTER mark, Complainant did not allege ownership of a trademark that includes the “porno” portion of the Domain Name. Accordingly, the Domain Name is not identical to any of the marks in which Complainant has established its rights under the Policy.
Nevertheless, it would seem that there is confusing similarity between the Domain Name and the NAPSTER marks because of the well known nature of the NAPSTER marks in the field of online music services, and the use of the term “porno” in the Domain Name, which could be considered to be used to identify a further type of product or service being offered by Complainant. Hence the Panel concludes that the Domain Name is, for the purposes of the Policy, confusing similar to Complainant’s marks.
Complainant has therefore shown that it has the appropriate rights in a trademark, and that the Domain Name is confusingly similar to this mark. The Panel concludes therefore that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name, as required under paragraph 4(a)(ii) of the Policy. It makes a number of assertions as to this point, most notably that there is no relationship between the parties, that Respondent is using the Domain Name to take advantage of Complainant’s goodwill, and that Respondent is not making any bona fide offering of goods or services using the Domain Name.
Respondent has not responded to these assertions. However, in the interests of ensuring a fair application of the Policy, the Panel considers it relevant to consider whether there is any evidence to support the application of the examples provided in paragraph 4(c) of the Policy. Paragraph 4(c) provides the following examples of activities of a respondent, which may lead to its obtaining rights or a legitimate interest in a domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
There is no evidence that any of the scenarios of paragraph 4(c) apply to Respondent. Respondent appears to have only recently registered the Domain Name after it was used in a very similar manner by a third party over a number of years. There is no evidence that Respondent was ever known by a name similar to the Domain Name. Nor is there evidence of legitimate non-commercial or fair use of the Domain Name, nor any other bona fide offering of goods and services, by Respondent, other than the provision of pornographic and competitive goods and services through its website. Given that Respondent’s current use of the Domain Name appears to be for no other purpose but to use Complainant’s trademarks to divert Internet traffic to competitive commercial and pornographic offerings of Respondent’s, which could in turn cause the public to believe that Complainant sponsors, approves, endorses, or is affiliated with Respondent, Respondent’s use of the Domain Name cannot be considered legitimate or bona fide.
As a result the Panel concludes that, even having considered the possible application of paragraph 4(c), Respondent has no rights or legitimate interests in the Domain Name. The Panel concludes that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. The Respondent Registered and is using the Domain Name in Bad Faith
The final issue is that of bad faith registration and use by Respondent. For paragraph 4(a)(iii) to apply, Complainant must demonstrate the conjunctive requirements that Respondent registered the Domain Name in bad faith and has used it in bad faith. Complainant makes a number of submissions in relation to this point, including: (1) Respondent registered the Domain Name and is using the Domain Name to direct Internet users to the website content posted at the Domain Name’s website, which provides links to pornographic websites, as well to music-related websites that compete with Complainant; and (2) the Domain Name involves a well-known trademark and there is not possibility of a good faith use of the Domain Name by Respondent.
Complainant’s first submission is based on the bad faith exemplar outlined in paragraph 4(b)(iv) of the Policy, which reads:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, 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:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location”.
Complainant’s allegation that Respondent has attempted to attract Internet users to pornographic and competing music services through its website is sufficiently convincing. Also, given the significant notoriety associated with Complainant’s current and former music services, and Respondent’s recent registration of the Domain Name, it is impossible to conceive that Respondent was not aware of Complainant’s trademarks at the time the Domain Name was registered.
Given these points, the requirements of paragraph 4(b)(iv) are made out, and as a result, the activity of Respondent is deemed to fulfill the bad faith use and registration requirements of paragraph 4(a)(iii).
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <napsterporno.com> be transferred to the Complainant.
Timothy D. Casey
Date: December 26, 2005