WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Steinberg Media Technologies GmbH (Steinberg) v. WhoisGuard Protected, WhoisGuard, Inc. / Mohamed Hamdi Moustafa Moustafa, Ghulam Muhuddeen, Zubair Ismai, vst torrents, Vst Plugs, and Desiree Burkee
Case No. D2021-0433
1. The Parties
Complainant is Steinberg Media Technologies GmbH (Steinberg), Germany, represented by Raffay & Fleck Patentanwälte, Germany.
Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / Mohamed Hamdi Moustafa Moustafa, Egypt, Ghulam Muhuddeen, Pakistan, Zubair Ismail, Pakistan, vst torrents, India, Vst Plugs, India, and Desiree Burkee, Seychelles, represented by Advocate Ramesh Kumar, India.
2. The Domain Names and Registrars
The disputed domain name <crackedvst.com> is registered with Eranet International Limited (the “First Registrar”).
The disputed domain names <crackedvst.net>, <vscrackofficial.com>, <vst-mafia.com>, and <vst-torrents.com> are registered with NameCheap, Inc. (the “Second Registrar”).
The disputed domain names <vstcracks.net>, <vstplugs.com>, and <vsttorrents.net> are registered with BigRock Solutions Pvt Ltd (the “Third Registrar”).
The disputed domain name <vstland.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Fourth Registrar”).
The disputed domain names may be collectively referred to herein as the “Domain Names”.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 12, 2021. On February 12, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names.
On February 12, 2021, the Second Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint.
On February 13, 2021, the Third Registrar transmitted by email to the Center its verification response disclosing registrants and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint.
On February 13, 2021, the Fourth Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint.
On March 1, 2021, the First Registrar transmitted by email to the Center its verification response disclosing registrants 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 Complainant on March 1, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 5, 2021.
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 Respondent of the Complaint, and the proceedings commenced on March 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2021.
Respondents filed a Response on February 27, 2021, i.e., before the proceeding was commenced. The Center requested Respondents to confirm its Response after Notification of Complaint has been sent. The Response was filed with the Center on March 26, 2021.
Respondent, Ghulam Muhuddeen, filed an informal Response on March 14, 2021. His entire statement was:
“I am not used your VST name, send me Software List I am removed your software.”
The Center sent on March 25, 2021, a possible partial settlement email to Complainant with the opportunity to suspend the proceeding in order to explore settlement options. Complainant did not send a request to have the proceeding suspended.
The Center appointed Robert A. Badgley as the sole panelist in this matter on April 12, 2021. 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 inventor of an audio plug-in software interface known as Virtual Studio Technology (“VST”), which, since 1996, has been used in connection with music production. Complainant’s software programs include “Cubase”, and Complainant also offers licensed VST-SDKs (self-development kits) to customers. According to a Wikipedia entry submitted with the Complaint, the VST interface is “the most widely used on all platforms today”. Among the users of Complainant’s VST are Adobe Premiere Pro, Sony Vegas, and Magix Music Maker.
Complainant holds numerous trademark registrations for the mark VST, including European Union Reg. No. 000763367 (registered March 16, 1999) and United States Patent and Trademark Office Reg. No. 2,499,337 (registered October 23, 2001).
The Domain Names were registered on various dates between July 21, 2019, and November 7, 2020. The Domain Names resolve to websites, similar in nature though not identical, which purport to offer free downloads of “VST Crack and VST Plugins”, as well as audio software and products apparently made and sold by third parties in competition with Complainant, or at least operating in the same general consumer space (products and software related to music production). Complainant alleges that Respondent’s websites also infringe Complainant’s copyrighted material. Respondent does not deny this, but asserts that copyright infringement is not actionable under the UDRP.
5. Parties’ Contentions
Complainant contends that it has established all three elements required under the Policy for a transfer of each of the Domain Names. Complainant also asserts that the various Respondents named in this proceeding should be considered a single Respondent because each of the named Respondents is “at least associated with each other”.
Apart from the brief March 14, 2021, email from Respondent Ghulam Muhuddeen recorded above, Respondents’ entire substantive reply to Complainant’s contentions is set forth below. The first paragraph below was submitted to the Center on February 27, 2021, and the second paragraph below was submitted to the Center on March 26, 2021.
February 27, 2021:
“Complainant argues that the VST Trademark and the vsttorrents.net, vstcracks.net, vstplugs.com domain names are confusingly similar, and that the VST Trademark is Solely Owned by Steinberg Gmh.[sic] Which is False as we have attached a Proof of different VST trademarks that are Registered in India (Annex - 1) and it doesn't contain Steinberg, And as an Indian it doesn't comply under our law. The Users who visits these website are not going to think that it is a Steinberg Trademarked as they are both vastly dissimilar. And these Websites are very popular in the world as they are ranked higher in the world (Attached the annex of Similarweb Ranking in Annex 2,3,4). And These Websites doesn't contain any Steinberg Products as they mentioned in the complaint. And we don't sell or label goods as an original product. The Complainant knowingly try to confuse the panel by adding other low ranked domains with ours. And is trying to claim that all domains are owned by a single person or a Single Company, Which is absolutely false and protecting our domains contact details is to avoid Spam calls and Messages. The Complainant filed this case to harass the domain holder and therefore has to be seen in such a way.”
March 26, 2021:
“Complainant argues VST Trademark is Solely Owned by Steinberg Gmh. Which is False as we have attached a Proof of different VST trademarks that are Registered in India (Annex - 1) and it doesn't contain Steinberg, According to Indian Civil Law any trademark, if it is not registered in the state cannot be considered as a trademark violation. The VST is a three letter trademark and the complainant has accused of trademark dispute on a domain which doesn't even have those 3 letters (vscrackofficial.com). This is absolutely inadmissible as the complainant has a history of filing UDRP complaints on any domain that contains VST in their domain. Now they have started to file UDRP complaints against those domains which doesn't even have VST on the name. The complainant files these UDRP cases against those websites which are allowing the users to download the demo version of their Cubase software, Which is a copyright infringement but the Domain Dispute platform cannot be used for copyright infringement cases, As the Complainant wants to steal the domain of these domain name holders who are supplying the demo of their software can no way be considered as domain dispute. The panel must consider that VST is a widely used word all around the globe as in different regions they are used for different technologies or products and the panel must also recognize that the US and European Union is not the "Entire World". And as an Indian my clients was not aware of the VST trademark that was registered by the complainant in US and EU. And according to WIPO a trademark is only valid if it is registered in their country. And in India VST trademark is owned by a tractor company (vsttractors.com). The complainant has filed a lots of UDRP cases and won all of them because there were no response statements to their case. So we want the panel to look into this case without the shadow of previous UDRP cases that were filed by complainant. And we request the panel to terminate the case based on the above points that were made on behalf of my Clients.”
6. Discussion and Findings – Consolidation Issue
Under section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a panel may consolidate in a single proceeding a complaint filed against multiple respondents, based primarily on 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.”
Guided by these principles, the Panel here considers the arguments and evidence advanced by the Parties, the most relevant of which are summarized below.
Complainant notes that it was a successful Complainant in a recent UDRP case involving eight VST-formative domain names (such as <vst-cracked.com> and <vst-torrent.com>) registered by five nominally different respondents. See Steinberg Media Technologies GmbH v. Host Master, 1337 Services LLC / Denald Doda / Sehrish Hashmi / Zubair Ismail / Ghulam Muhuddeen, WIPO Case No. D2020-2749 (the “Prior Case”). The UDRP panel in the Prior Case found that all eight domain names “[…] were subjected to be under common control” and therefore “consolidation would be fair and equitable to all the Parties”.
Two of the nominal respondents in the Prior Case, Zubair Ismael and Ghulam Muhuddeen, are also named Respondents in the instant case.
The first Response (February 27, 2021) states, as quoted above: “Complainant knowingly try to confuse the panel by adding other low ranked domains with ours. And is trying to claim that all domains are owned by a single person or a Single Company.” Respondents state that such an allegation is “absolutely false”. Respondents do not, however, deny the allegation that they are related, or that the Domain Names are subject to common control.
In the face of the allegation that the Domain Names are under common control, the Panel would have expected Respondent to address this allegation in some detail. Respondent’s failure to do so reasonably gives rise to an adverse inference here, tantamount to an admission.
Further, one lawyer prepared the second Response (March 26, 2021), and appeared to do so on behalf of all named Respondents and with regard to all implicated Domain Names.
Complainant points to various aspects of Respondents’ websites to demonstrate that they are likely under common control. For example, some of the websites (<vst-torrents.com> and <vst-mafia.com>) are nearly identical in their layout.
In addition, on the website accessible via <vsttorrents.net>, there is a statement: “We Have Created 2 New Premium Website For Our Users With Direct Download Links here Visit VSTPLUGS.COM And Visit VSTCRACKS.NET.”
Further, Complainant notes that some of the websites at issue in the instant case have similar content to that features on several websites in the Prior Case. According to Complainant, these sites also “refer to the exact same examples of audio programs to whom the websites are being dedicated being ‘Cubase,’ ‘FL Studio’ and ‘Ableton’.”
In the Panel’s view, Respondent’s evasion on the “relatedness” and “common control” issues, combined with the striking similarities between this case and the Prior Case, the similarities among the websites involved in the instant case, and the fact that two of the named respondents in the Prior Case, whose domain names were found to be under common control, are also Respondents here, justify consolidation of the purportedly different Respondents in this case.
The Panel sees no injustice to any of the Parties here, as the Panel finds that each purported Respondent had the opportunity to step forward and say, in effect: “I am not with those other respondents, and here’s my proof”. Accordingly, the Panel will deem all Respondents here as a single Respondent, and will refer to Respondent in the singular hereafter.
7. Discussion and Findings – Merits
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights in the trademark VST through registration and use demonstrated in the record.
The Panel also concludes that the Domain Names are confusingly similar to the VST mark. All but one of the Domain Names entirely incorporate the VST mark, and add words like “cracks”, “cracked”, “torrents”, “land”, and “mafia”. As noted above, Complainant’s VST is a plug-in interface. Complainant contends that the term “crack” or “cracked” is a common term for software from which copyright protection has been removed, and “torrent” commonly refers to “collaborative filesharing”. The Panel finds that the addition of the terms in the Domain Names does not diminish the basic fact that the mark VST is clearly recognizable within the Domain Names, and is the dominant element thereof.
With respect to the Domain Name <vscrackofficial.com>, the Panel notes that VST in full is not included within the Domain Name. Rather, the letters “vs” are followed by the words “crack” and “official”. Although one should hesitate to find confusing similarity when a three-letter trademark is involved and only two of those three letters are included in the subject Domain Name, the Panel in the circumstances will make such a finding. The addition of the word “crack” which, as discussed above, can be associated with software (the type of product Complainant offers under its VST mark), tips the balance here and brings this Domain Name within the concept of confusing similarity under the Policy. Moreover, the content of the Domain Name and equally, the pattern of registrations not only here but in prior cases, affirms that Respondent sought to target Complainant’s rights. See generally WIPO Overview 3.0, section 1.15.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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 Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names. Respondent’s entire reply to the allegations in this case is reproduced above. The Panel finds Respondent’s account incoherent and not supportive of any claim to legitimacy vis-à-vis the Domain Names. Respondent seems to be stating that its infringement of copyrights is not actionable under the UDRP. Strictly speaking that may be so, but such infringing activity may certainly be probative when considering Respondent’s motives when registering and using the Domain Names. It is apparent from the record here that Respondent is using the Domain Names improperly to increase Internet traffic to its commercial websites by appropriating Complainant’s VST trademark.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered or Used in Bad Faith
For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith. The Panel incorporates its discussion above in the “rights or legitimate interests” section. It is obvious that Respondent targeted Complainant and its VST trademark. Complainant’s products, as well as those made by competitors, are featured at the websites to which Respondent’s Domain Names resolve.
The Panel concludes that Respondent is more likely than not the same controlling interest as was held in bad faith in the Prior Case, discussed above. Indeed, two of respondents named in the Prior Case are named Respondents here, and Respondent has no real answer to this fact, other than to urge the Panel to look at the facts of this case without any regard to the Prior Case. By virtue of Respondent’s conduct in the Prior case and this case, it is now easy to conclude that Respondent has engaged in a pattern of preclusive domain name registrations, in violation of the above-quoted Policy paragraph 4(b)(ii).
The Panel also concludes, on a balance of probabilities and as supported by the record here, that Respondent has registered and used the Domain Names to attract Internet users to Respondent’s websites, for commercial gain, by engendering consumer confusion with regard to the source, sponsorship, or affiliation of the websites to which the Domain Names resolve and Complainant’s VST trademark, in violation of the above-quoted Policy paragraph 4(b)(iv).
Complainant has established Policy paragraph 4(a)(iii).
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 <crackedvst.com>, <crackedvst.net>, <vscrackofficial.com>, <vstcracks.net>, <vstland.com>, <vst-mafia.com>, <vstplugs.com>, <vst-torrents.com>, and <vsttorrents.net> be transferred to Complainant.
Robert A. Badgley
Date: April 26, 2021