WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Frostwire, LLC v. Shane Williams
Case No. D2012-0964
1. The Parties
The Complainant is Frostwire, LLC of Florida, United States of America, represented by Espinosa Trueba, PL, United States of America.
The Respondent is Shane Williams of Tallinn, Harjumaa, Estonia.
2. The Domain Name and Registrar
The disputed domain name <frostwire10.com> is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2012. On May 7, 2012, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, eNom, Inc. transmitted by email to the Center its verification response confirming that the 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 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. After the due date for the Respondent to submit its Response had expired, the Respondent sent an informal communication by email to the Center on June 1, 2012 stating: “[…] i would like to submit a response, since the complainant has no real grounds for this argument over the domain […]”. An email in similar vein was sent to the Center on June 13, 2012. The Center replied to both emails saying that the Panel would decide in its sole discretion whether to consider any Response if submitted later. The Respondent sent no further communication or Response.
It is relevant to this proceeding to record that the present Complaint was separated from a prior Complaint (that the Panel has not seen) against multiple domain names and multiple Respondents and was re-filed with a new number, because the prior Complaint was not in compliance with paragraph 3(c) of the Rules. For this reason the Respondent was aware of the nature of the Complaint in respect of the disputed domain name before being formally notified by the Center on May 9, 2012. Indeed, earlier on April 25, 2012, the Respondent sent to the Center an informal communication (the “preliminary response”) in respect of the disputed domain name which at the time was the subject of the other proceeding, the content and relevance of which are discussed below in section 5 (Respondent’s Contentions) and section 6 (Discussion).
The Center appointed Dr. Clive N.A. Trotman 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
The Complainant provides Internet services under the name “Frostwire” in the realm of searching and sharing computer files across the Internet, and has done so since October 1, 2006. For this purpose, the Complainant uses its own website with the domain name “www.frostwire.com”, which was created on September 20, 2005.
The Complainant is the owner of the following registered trademark:
FROSTWIRE (with design), registration No. 3381297 at the United States Patent and Trademark Office (“USPTO”), registered on the principal register on February 12, 2008, first use in commerce claimed on January 1, 2007, for computer software for use in searching and sharing computer files with others on the Internet, international class 9.
The Complainant may reasonably be described as well known and to have an established reputation within its field of commerce.
Nothing of substance is known about the Respondent except for those details accompanying the registration for the disputed domain name, which was created on November 2, 2010.
5. Parties’ Contentions
The Complainant has submitted a copy of a page from the USPTO document of registration for the trademark FROSTWIRE as detailed in section 4 above and in which it claims to have rights.
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark, which is incorporated in its entirety, and that the addition of another term to the trademark does not detract from confusing similarity. The Respondent’s website reproduces textual and graphical elements of the Complainant’s trademark.
The Complainant further contends that the Respondent is not making a legitimate, noncommercial or fair use of the Complainant’s trademark as the dominant part of the disputed domain name. The Respondent’s corresponding website is not used or intended to be used for a bona fide offering of goods and services but is used to mislead people for the purpose of the distribution of counterfeit or third party software and for the generation of click-through revenue.
The Complainant further contends that the disputed domain name was registered and is used in bad faith.
The Complainant says, inter alia, that the Respondent’s website falsely represents itself as the Complainant’s website by use of the Complainant’s well-known trademark and an unauthorised “copyright Frostwire” notice.
The Respondent causes visitors to download software such as “RealPlayer” that is not the Complainant’s software, and displays popup pages and links to the products of others, in the nature of a click-through operation for the collection of commission and revenue. In so far as the Complainant’s software might be obtainable through the Respondent’s website, it is not in its authentic state. These activities cause harm to the Complainant.
The Complainant says that the Respondent concealed its identity by the use of the privacy facilities of WhoisGuard. In this case there is no good reason and it is evidence of bad faith.
The Complainant has submitted a number of previous decisions under the UDRP that it wishes the Panel to consider as possible precedent.
The Complainant requests the transfer to itself of the disputed domain name.
As indicated before, the present Respondent and the disputed domain name had been identified in a prior Complaint concerning several disputed domain names and Respondents.
On April 25, 2012, which for the reasons given in section 3 (Procedural History) was before formal service of the Complaint on the Respondent, the Respondent sent an email concerning solely the presently disputed domain name. Although this email communication was filed under a different proceeding, the Panel finds it appropriate that it be reproduced in full (copied verbatim):
“I am contacting you in reference to case number D2012-0868.
Can you please explain what is going on with the domain www.frostwire10.com , which represents a totally different entity as being a regular blog, download page ? If we need to remove any logos , do let us know..
We have heard about a complaint and have learned that our domain www.frostwire10.com is under a dispute investigation. We have been informed and we are aware of the complaint ( since April 24 , 2012) .
If it would be possible, then we would like to have a saying in the case. To fully explain what the website is, what it is intended to do or be for.
To our practices and knowledge, we are not in any infringement or violation with any laws. If there are changes needed to be made, we Will Fully cooperate with you.
www.frostwire10.com represents an alternative program to frostwire ( which is a p2p file sharing program, such as limewire) and Google search engines allows us to provide that alternative to All internet users. Our site is popular enough that it rose to the first page of google. If our site was made to use in BAD FAITH, then Google not only would not have ranked us well, but they would have dropped us from the first page ( google analyzes the time users spend on the website and also web comments) .
We are not exploiting frostwire or causing harm to them, the same way they did not cause harm to limewire. And our domain is not frostwire.com its totally different, due to the fact that it contains a numeric symbol in it and the webpages design is 100% different.
Furthermore, Frostwire is a free to share software, which means any download website in the world, can promote it.
We have even contacted frostwire.com in the past, for business cooperation, but they have not responded.
Please let us know what is going on with our domain www. frostwire10.com and we will work with you 100% to sort this issue out.”
After the due date for the Respondent to submit its Response had expired, the Respondent sent an informal communication by email to the Center on June 1, 2012 stating: “[…] i would like to submit a response, since the complainant has no real grounds for this argument over the domain […]”. An email in similar vein was sent to the Center on June 13, 2012.
6. Discussion and Findings
A. Procedural matters
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
The Panel is satisfied that the Respondent was properly served with notice of the complaint to his stated email address. Electronic delivery is recorded as complete on May 9, 2012. The Respondent’s email communication of April 25, 2012, was received by the Center from the same address, as was an email dated June 1, 2012, being two days after the date set for the receipt of any Response. A generally similar email from the Respondent was received by the Center on June 13, 2012, at which date the Panel’s deliberations were in progress.
In reply to each of his emails of June 1, 2012 and June 13, 2012, the Respondent was informed by the Center of the Panel’s sole discretion to accept any late Response. Paragraph 12 of the Rules, which are referred to in the Complaint served upon the Respondent and of which the Respondent ought to have been aware, provides that the Panel in its sole discretion may request further statements or documents from either of the Parties.
Having regard to all the circumstances, including the verification of contact between the Center and the Respondent, the clear notification to the Respondent of his options and timeframe for the provision of a Response, and the communicative facility shown by the Respondent in his email communication of April 25, 2012, the Panel concludes that it was the Respondent’s considered decision not to respond formally or within the required timeframe to the Complaint filed under the present proceeding. Nevertheless, the Panel will take into account the contents of the Respondent’s email communication of April 25, 2012 in rendering its Decision.
B. Identical or Confusingly Similar
The Panel is satisfied by the evidence produced that the Complainant has the necessary rights in the registered trademark FROSTWIRE.
The disputed domain name <frostwire10.com> comprises the Complainant’s trademark and the suffix “10”, the gTDL designation “.com” generally being disregarded for the purposes of determining confusing similarity under the Policy. It is well established in the terms of paragraph 4(a) of the Policy that the creation of a domain name by the addition of a number, word or character string to a trademark is in itself seldom sufficient to create a distinction between the domain name and the trademark. Accordingly, the Panel finds for the Complainant under paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The Complainant must prove that the Respondent does not have rights or legitimate interests in the disputed domain name. The Complainant has made clear that it has no intentional connection with the Respondent and has not authorized him to trade in the Complainant’s products or to use its trademark FROSTWIRE.
Paragraph 4(c) of the Policy provides for the Respondent to rebut the Complainant’s prima facie case in any way that may satisfy the Panel, of which the following are illustrative examples:
“(i) before any notice to you of the dispute, your [the Respondent’s] use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent is under the stated impression that he may distribute the Complainant’s software “Frostwire” because it is free, and he has conceded that an approach to the Complainant for business cooperation did not receive any reply. The Complainant’s position is that any business that the Respondent may conduct in the products of the Complainant is without authorisation or approval and is illicit. While the Respondent’s website depends essentially upon the Complainant’s trademark, it is used to collect revenue as commissions for the referral of visitors seeking certain software and products available over the Internet. The website appears to achieve this by a combination of methods including the facilitation of downloads, either directly from the Respondent or by referral to other websites, including the Complainant’s website. In these circumstances and for the reasons explained below, the Respondent cannot reasonably establish that the offering of goods or services is bona fide within the meaning of paragraph 4(c)(i) of the Policy.
The Respondent’s activities, according to the evidence, would not support any contention that he may have been commonly known by the disputed domain name or may have made a fair or noncommercial use of it.
Accordingly the Panel finds for the Complainant under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name by a respondent in bad faith, namely:
“(i) circumstances indicating that you [the Respondent] have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are not exclusive and bad faith registration and use may be found otherwise.
The evidence, including a screen capture of the website to which the disputed domain name resolves, is sufficient to establish the Respondent’s most probable mode of operation. Essentially, it would be to collect revenue as commissions for the referral of visitors seeking certain software and products available over the Internet. The website appears to achieve this by a combination of methods including the facilitation of downloads, either directly from the Respondent or by referral to other websites, including the Complainant’s website. It may reasonably be concluded that the Respondent’s motivation is commercial.
The promotion of a software product as ostensibly free of charge by its proprietor does not exclude the probability that the proprietor may expect ultimately to benefit commercially, for instance by offering a paid upgrade or service to initially free users of the software, or by showing them hosted advertisements and links. For this reason the proprietor of the free software may offer a commission for the receipt of referrals, which a referring website operator may cause to be sent by proffering either overt or covert links to the original source of the software.
The business model in which a website generates revenue by offering links to other websites, may be entirely legitimate. The business depends for its success, however, on the attraction of visitors, and ceases to be legitimate if the attraction is achieved, as the evidence shows it to be in this case, by the use of Complainant’s trademark without permission.
The Respondent has placed an intended disclaimer along the bottom of his website, as follows:
“This website has no affiliation what so ever with Frostwire (tm), we only offer a download link to Frostwire software and we may receive compensation for doing this. Please read "Terms of Services" before installing or buying anything from our partner websites. You should not buy or download anything from our website - please head to “www.frostwire.com” for official Frostwire (tm) website. Powered by WordPress.”
This disclaimer does nothing to absolve the Respondent from responsibility for his actions. On the contrary, the disclaimer confirms the mode of operation of at least a part of the Respondent’s website, comprising referral and compensation, and confirms a knowledge of the trademark status of the Complainant’s name. Once an Internet user has been misled to the Respondent’s website by initial interest confusion between the disputed domain name and the Complainant’s trademark, the disclaimer does not eliminate the confusion, because it has already happened.
The Respondent’s statement to the effect that his website achieves first-page ranking on an appropriate Google search is revealing, because such a coveted ranking in a competitive area is generally understood to require significant programming and design skills. The Panel finds that, irrespective of who may initially have designed the website and business operation associated with the disputed domain name, it is a relatively sophisticated commercial enterprise that trades intentionally on the well-known trademark and goodwill of the Complainant, constituting bad faith use in the terms of paragraph 4(b)(iv) of the Policy, and that the disputed domain name was registered for that purpose.
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 name <frostwire10.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: June 18, 2012