WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Steinberg Media Technologies GmbH v. Host Master, 1337 Services LLC / Denald Doda / Sehrish Hashmi / Zubair Ismail / Ghulam Muhuddeen
Case No. D2020-2749
1. The Parties
The Complainant is Steinberg Media Technologies GmbH, Germany, represented by Raffay & Fleck Patentanwälte, Germany.
The Respondents are Host Master, 1337 Services LLC, Saint Kitts and Nevis (the “First Respondent”) / Denald Doda, Albania (the “Second Respondent”) / Sehrish Hashmi, Pakistan (the “Third Respondent”)/ Zubair Ismail, Pakistan (the “Fourth Respondent”) / Ghulam Muhuddeen, Pakistan (the “Fifth Respondent”).
2. The Domain Names and Registrars
The disputed domain name <vstcrack.com> is registered with Tucows Inc. and the disputed domain names <vst-cracked.com>, <vstcracked.com>, <vst-torrent.com>, <vst-torrents.net>, <vstcrack.info>, <vstcrack.net> and <vstcrackofficial.com> are registered with NameCheap, Inc. (collectively the “Registrars”). The disputed domain names the subject of this proceeding will collectively be referred to as the (“Domain Names”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2020. On October 20, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On October 20, and October 28, 2020, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 29, 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 Complaint on November 2, 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 Respondents of the Complaint, and the proceedings commenced on November 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 23, 2020. The Respondents did not submit any formal response (however, an individual purporting to be the website administrator for the Fifth Respondent sent emails to the Center on November 5, 6 and 17, 2020). Accordingly the Center informed the parties about the Panel appointment on November 24, 2020.
The Center appointed Nicholas Smith as the sole panelist in this matter on December 2, 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 German company best known for inventing an audio plug-in software interface in 1996 known as Virtual Studio Technology (VST for short). The VST technology is used in a range of software applications used for music production including products such as Cubase produced by the Complainant.
The Complainant is the owner of trademark registrations for VST (the “VST Mark”) in various jurisdictions (such as the United States of America (“United States”) and Canada) including a registration for the VST Mark in the European Union, registered on March 16, 1999, (registration number 763367) for goods and services relating to computer programming and computer programs.
The Domain Name <vstcrack.com> was registered on August 24, 2018, by the First Respondent. The Domain Name <vstcrack.info>was registered on October 1, 2019, by the Second Respondent. The Domain Name <vstcrack.net> was registered on July 9, 2020, by the Third Respondent. The Domain Names <vst-cracked.com>, <vstcracked.com>, <vst-torrent.com> and <vst-torrents.net>, were registered between April 5 and May 31, 2020, by the Fourth Respondent. The Domain Name <vstcrackofficial.com> was registered on February 8, 2020, by the Fifth Respondent.
Each of the Domain Names other than <vstcrack.info> resolve to stylistically different websites (“Respondents’ Websites”) that purport to offer a variety of VST Plugins and cracked software, including “cracked” (i.e. software with copyright protection removed) copies of Complainant’s Cubase software. The Domain Name <vstcrack.info> is presently inactive however prior to the commencement of the proceeding resolved to a similar website to the other Respondents’ Websites.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are identical or confusingly similar to the Complainant’s VST Mark;
(ii) that the Respondents have no rights nor any legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the VST Mark, having registered the VST Mark in numerous jurisdictions, including the European Union, Canada and the United States. The Domain Names each reproduce the VST Mark along with additional generic words (“crack-” or “torrent-”) that do not distinguish the Domain Names from the VST Mark.
There are no rights or legitimate interests held by the Respondents in respect of the Domain Names. The Respondents are not commonly known as the Domain Names nor do the Respondents have any authorization from the Complainant to register the Domain Names. The Respondents are not making a legitimate noncommercial or fair use of the Domain Names. Rather the Respondents are using the Domain Names to create websites that offer cracked or illegal versions of Complainant’s and third parties’ copyrighted software (such as Cubase) that includes Complainant’s VST interface.
The Domain Names were registered and are being used in bad faith. By using the Domain Names for websites that purport to distribute illegal versions the Complainant’s (or third party) products, the Respondents are clearly aware of the VST Mark and are using it to deceive consumers as to their affiliation with the Complainant. Such conduct amounts to registration and use of the Domain Names in bad faith.
The Respondents did not formally reply to the Complainant’s contentions. The Center received three e-mails between November 5 and November 17, 2020, from an individual using the registrant’s email address but purporting to be an administrator of the Fifth Respondent. They are reproduced in full below:
Email 1: Hi Sir I am an admin vstcrackofficial.com Please tell me your issue i will Solve you issue
Email 2: Please Close the Disputes, Domain case, i promise you I will Naver Post your any software
Email 3: Hi am waiting Your Reply Sir, i will Solve all issue
6. Discussion and Findings
6.1. Preliminary Matter: Consolidation of Respondents
The Domain Names are registered to five different named entities, as identified in section 4 above. UDRP proceedings are normally brought against a single respondent. However, paragraph 10(e) of the Rules states that in certain circumstances a panel may consolidate multiple domain name disputes. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, states:
“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of:
(i) the registrants’ identity(ies) including pseudonyms;
(ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities;
(iii) relevant IP addresses, name servers, or webhost(s);
(iv) the content or layout of websites corresponding to the disputed domain names;
(v) the nature of the marks at issue (e.g., where a registrant targets a specific sector);
(vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>);
(vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue;
(viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s);
(ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s);
(x) any (prior) pattern of similar respondent behaviour; or
(xi) other arguments made by the complainant and/or disclosures by the respondent(s).”
Based on the information before it, the Panel is satisfied that the First and Fifth Respondents are connected as the <vstcrack.com> and <vstcrackofficial.com> resolve to identical websites. Notwithstanding the stylistic difference between the remaining Respondents’ Websites, the Panel is satisfied that the remaining Domain Names are under common control with the First and Fifth Respondents. The Panel reaches this conclusion noting that the remaining Domain Names are registered to the same Registrar, use the same privacy service, were registered over the same one year period, offer essentially identical products and in many cases use the same subline descriptors, replicating grammatical errors in the sublines (i.e. “VST Crack – VST, Plugins, Audio, Samples, Free, Download”). In addition the Second and Third Respondents have provided obviously incorrect contact information, neither of them providing a proper street address, making it more likely that the individuals identified as the Second and Third Respondents are simply aliases for the individual or entity in control of the Domain Names.
Finally, the Panel notes that none of the Respondents, including the purported administrator of the Fifth Respondent, who sent a number of emails to the Center, has denied any association with the other or objected to the consolidation of the proceedings requested by the Complainant. The Panel finds that, on the balance of probabilities, the Domain Names are subject to common control and that the consolidation would be fair and equitable to all the Parties. As such, for the purposes of the decision going forward, the Panel will refer to the named registrants of the Domain Names as a single Respondent.
6.2. Substantive Matters
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and each Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the VST Mark, having registrations for VST as a trademark in the European Union as well as in various other jurisdictions.
Each of the Domain Names wholly incorporates the VST Mark with the addition of one or more descriptive words, such as “crack-” or “torrent-”. The addition of such terms to a complainant’s mark does not prevent a finding of confusing similarity, see section 1.8 of the WIPO Overview 3.0 and Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056.
The Panel finds that each of the Domain Names is confusingly similar to the Complainant’s VST Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain names. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain names.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the VST Mark or a mark similar to the VST Mark. There is no evidence that the Respondent is commonly known by any of the Domain Names or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a legitimate noncommercial use.
The Respondent uses or has used the Domain Names to offer what appear on the face to be illegal “cracked” versions of copyrighted software owned by the Complainant (such as Cubase) and third parties that incorporate the Complainant’s VST technology. The use of a domain name to facilitate copyright infringement is not a bona fide offering of goods and services and absent any further explanation from the Respondent, such use does not grant the Respondent rights or legitimate interests see Shutterstock, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / 0ashraf ayad, Web Pioneer, WIPO Case No. D2017-1445.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Names. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Names under the Policy. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, 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:
(i) circumstances indicating that the respondent has registered or has 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the VST Mark at the time the Domain Names were registered. The Respondent’s Websites contain numerous references to the Complainant, including both using the VST mark and offering illegally reproduced versions of the Complainant’s Cubase software. The registration of the Domain Names in awareness of the VST Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Panel also finds that an individual viewing any of the Domain Names may be confused into thinking that each of the Domain Names would refer to a site in some way connected to the Complainant.
The Respondent registered the confusingly similar Domain Names for the purposes of operating websites specifically to distribute illegal versions of software produced by the Complainant or by third parties incorporating the Complainant’s VST product. Such behavior is manifestly considered evidence of bad faith, see The Football Association Premier League Limited v. Joso Silva, WIPO Case No. D2019-1841.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Names in bad faith under 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 Domain Names, <vstcrack.com>, <vst-cracked.com>, <vstcracked.com>, <vstcrack.info>, <vstcrack.net>, <vstcrackofficial.com>, <vst-torrent.com> and <vst-torrents.net> be transferred to the Complainant.
Date: December 4, 2020