WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Steinberg Media Technologies GmbH v. Whois Privacy Corp. / John Gadsden
Case No. D2020-2098
1. The Parties
The Complainant is Steinberg Media Technologies GmbH, Germany, represented by Raffay & Fleck Patentanwälte, Germany.
The Respondent is Whois Privacy Corp., Bahamas / John Gadsden, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <vstmania.com> is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 7, 2020. On August 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 10, 2020, the Registrar 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 August 11, 2020, 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 Complain on August 13, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 7, 2020.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on September 15, 2020. 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 a technology company with interests in the field of music. It trades using the trade mark VST which is an acronym created by it as a short form for “Virtual Studio Technology”, it is widely known for an audio plug-in software interface which was developed by the Complainant in 1996.
VST is used widely in the field of music, not only by the Complainant’s audio software programs such as “Cubase” or “Wavelab” but additionally by licensing for other parties’ audio software and through its VST-SDK (self-development kit) for making VST-plugins provided under license as well. This can be seen from Annex 8 to the Complaint.
The mark VST is commonly known in the field of music software as a mark created and licensed by the Complainant. The German Wikipedia states (in translation):
“The VST interface is the most widely used on all platforms today.”
This is well shown by the large quantity of audio programs using the VST technology on the audio software market. Ableton, one of the leading global players in the field of music software is using VST technology within its main software product Ableton Live. Other global competitors using VST technology include Adobe, Sony, and Magix.
The Complainant is the owner of a large number of trade marks worldwide, registered since 1999, incorporating the mark VST. These are set out in the Complaint and evidenced by proof of registration contained in Annex 5 to the Complaint. They include VST registered as Australia, Canada, European Union United States, and International marks, the latter designating, Israel, Japan and the United States. Such trademark registrations include, for example, United States registration no. 2499337, registered on October 23, 2001. Other registrations include VST CLOUD, VST TRANSIT, VST CONNECT, and VST LIVE.
With the exception of United States registration no. 88275212 for VST registered on February 25, 2020, all of the registrations referred to were registered prior to the registration of the disputed domain name on January 26, 2020.
According to the Complainant and as can be seen from Annex 1 to the Complaint the registrant of the disputed domain name is not named in the WhoIs database in respect of “vstmania”, which indicates that it is not known as a corporation or other legal entity under the name “vstmania”. This is why the Complaint was brought against Whois Privacy Corp, which is in the business of providing WhoIs privacy services, and then amended to include underlying registrant details provided by the Registrar.
In the absence of a Response the Panel finds the facts adduced by the Complainant to be true and proceeds to determine the Complaint on that basis.
5. Parties’ Contentions
The Complainant submits;
i. the disputed domain name is confusingly similar to the mark VST in which the Complainant has registered rights;
ii. on the evidence, the Respondent has no rights or legitimate interest in respect of the disputed domain name; and,
iii. on the evidence, the disputed domain name was registered and is being used in bad faith by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel has considered the evidence of the Complainant’s trade mark registrations set out in Section 4 above the Panel finds that the Complainant has registered rights in the mark VST.
The disputed domain name consists of the VST mark, which is clearly recognizable in the disputed domain name, plus the word “mania”. The addition of the word “mania” does not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8.
It follows that the disputed domain name is therefore confusingly similar to the mark VST in which the Complainant has registered rights within Paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that there is no evidence that the Respondent’s use of the disputed domain name is in connection with a bona fide offering of goods or services, nor that the Respondent has been commonly known by the disputed domain name or is making a legitimate noncommercial or fair use of the disputed domain name. This submission is strengthened by the fact that there is no entity called “vstmania” as registrant of the disputed domain name.
The Complainant also confirms that there is no connection between the Complainant and the Respondent that could justify any rights or legitimate interests in respect of the disputed domain name.
The evidence of the current use of the disputed domain name, as set out in Annex 7 to the Complaint, does not indicate any rights or legitimate interests since it provides “cracks” and/or “keygens” to bypass copyright protections.
Considering this evidence and in the absence of a Response, the Panel accepts the Complainant’s submission and finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name within paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant adduces evidence in Annex 7 to the Complaint that “cracked” versions of the Complainant’s audio software are distributed on the Respondent’s website at the disputed domain name via linkage to download platforms.
A link at “https://vstmania.com/category/vst-crack” states:
“Download hundreds of VST Crack for Mac and Windows. Free Download with Crack and Keygen Included.”
Besides such cracked versions of software, nothing else is to be found on the website available under the disputed domain name. The Complainant points out that this constitutes infringement of the Complainant’s trade marks and copyright. The Complainant’s trade marks are being used to lure potential customers of the Complainant and other parties using the VST technology under license onto the disputed domain name to download unlawful copies of the Complainant’s Cubase or Wavelab products.
Despite a disclaimer on the website, the existence on the website of a category “VST crack”, in the Complainant’s submission, “clearly and undoubtfully” shows the intention of the website’s administrator (i.e. the Respondent) to provide a platform for cracked version of software using VST technology.
In summary, the Complainant submits that the content available on the disputed domain name means that the disputed domain name was registered and is used intentionally to infringe its VST trade marks and its copyrights, as well as rights licensed to third parties. This demonstrates that the disputed domain name was primarily registered in order to disrupt the Complainant’s business.
Having considered these submissions and in the absence of a Response, the Panel finds that the disputed domain name was registered and is being used in bad faith within Paragraph 4 (a)(iii) of the Policy.
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 <vstmania.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: September 23, 2020