All disputed domain names are registered with Moniker Online Services, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2004. On October 8, 2004, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain names at issue. On October 27, 2004, Moniker Online Services, LLC 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 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 October 28, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2004.
The Center appointed David Perkins as the sole panelist
in this matter on November 25, 2004. 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
4.1 The Complainant
4.1.1 The Complainant markets software that enables peer to peer (P2P) communications – principally, music – over the Internet. The Complainant acquired, inter alia, the trademark KAZAA in June 2003 from Sharman Networks Limited [SNL]. At the same time, the Complainant acquired the domain name <kazaa.com> from LEF Interactive Pty Ltd.
4.1.2 Prior to that date, in January 2002 SNL acquired from the Dutch Company, Kazaa BV, assets including
the user interface for the Kazaa Media Desktop (KMD), the P2P application;
the right to use the KAZAA trademark when identifying and marketing KMD;
the “www.kazaa.com”website and related websites (including
“www.desktop.kazaa.com), which are used in connection with the KMD application
for advertising and other purposes; and
a license to certain software modules within the KMD application.
4.1.3 SNL has used the KAZAA trademark continuously since January 2002. Prior to that, the mark was used by its predecessor in title, Kazaa BV.
4.2 KMD and the KAZAA trademark
4.2.1 KMD is said to have been the most popular downloadable software application in Internet history. By September 2004 KMD had passed over 363 million downloads and had just under 3 million users sharing some 789 million files.
4.2.2 KAZAA software is supported by extensive advertising in print media, on merchandise and through the Internet. Some US$700,000.00 was spent during 2003 – 2004 on such advertising.
4.2.3 The Complainant is the registered proprietor of the KAZAA mark [registered No. 747,624] in Benelux in Classes 9, 35, 38, 41 and 42. The application was filed on November 5, 2003. The Complainant has applications for the KAZAA mark in the same classes in Australia [App. No. 960,655] and in the United States [App. No. 78295070] filed on July 8, 2003 and September 2, 2003 respectively. The Complainant has a pending Community Trade Mark for KAZAA in classes 35, 38 and 41 [App. No. 1,786,391] filed August 1, 2000. The application in Classes 9 and 42 was rejected by Decision of the OHIM Opposition Division dated May 17, 2004 following opposition by Speedware Software GmbH by reason of its earlier trademark registration No. 30018460 of CASA in Germany in Class 9 filed on March 20, 2000.
4.3 The Respondent
4.3.1 As noted in paragraph 3 above, no Response has been filed. So, the only information about the Respondent comes from what is contained in the Complaint.
4.3.2 The Respondent has an address in Shanghai, People Republic of China. For the Domain Administrator, a ‘yahoo.com’ email address is given. The 277 domain names in issue redirect to the <mp3downloading.com> domain name. The WHOIS for that domain name lists Rick Canelle as the administrative and technical contact and Canelle Ltd as the registrant, all at the same address in Nassau, Bahamas.
4.3.3 The Complainant currently has a pending complaint
against IcedIT.com (WIPO Case No. 2004-0713), an organisation which has 13 registered
sites that all redirect also to “www.mp3downloading.com”.
5. Parties’ Contentions
5.1 The Complainant
Identical or Confusingly Similar
5.1.1 The Complainant asserts that the 277 domain names in issue are all confusingly similar to the KAZAA trademark. The Complainant says that in every case the KAZAA mark is strategically modified by adding, subtracting, re-arranging and/or replacing one or more words or letters, so as to create a new word that is either identical, or confusingly similar visually or phonetically.
5.1.2 This takes either of two forms. First, typosquatting which involves slight variations of the KAZAA trademark. For example, KAAZA: KAZZA etc. Second, using compound words, each combing the KAZAA mark (or a variant of that mark) with terms and/or abbreviations commonly associated with, inter alia, the P2P industry, electronic music distribution or the Internet generally. For example, <downloadkazza.com>, <freekazza.com>, <kaazamedia.com>, etc.
5.1.3 The 277 domain names in issue all redirect to “www.mp3downloading.com”. That website offers the visitor access to a download P2P software program called WinMX. Accordingly, the domain names in issue direct Internet users to precisely the same type of product as the Complainant’s KMD software. However, the Respondent’s WinMX program is neither produced by, nor is in any way associated with, the Complainant. It follows, the Complainant says, that this is likely to cause confusion to Internet users.
5.1.4 Put shortly, the Complainant’s KAZAA trademark is a fanciful term, it is very well known and is, consequently, a strong mark. The parties offer the same products; namely, access to P2P or file sharing software. The domain names in issue are identical or confusingly similar to the KAZAA trademark.
No rights or legitimate interest
5.1.5 None of the circumstances set out in paragraph 4(c) of the Policy apply. In this respect, the Complainant states that the 277 domain names in issue were registered well after the popularity of KMD and the wide recognition of the KAZAA mark had long been established. The Panel notes that 50 of the domain names in issue were registered in 2002, the earliest in March 2002 and all of the remaining domain names in issue were registered in 2003, bar one which was registered in 2004.
Registered and Used in Bad Faith
5.1.6 The Complainant’s case primarily rests on paragraphs 4(b)(iii) and (iv) of the Policy. The Complainant also relies on paragraph 4(b)(ii) of the Policy, pointing to the registration by the Respondent of domain names including variants of other well-known trademarks such as <toysrus.com>, <lavalife.com>, <adultfriendfinder.com> and other P2P file sharing organisations such as Morpheus and Audiogalaxy. Examples of this include <tousrus.com>; <lavafife.com>; <lavalifer.com>; <afultfriendfinder.com>; <adullfriendfinder.com>; <morephouscom>; <mourphous.com>; <audioglaxy.com> and <audiogalaxys.com>.
5.1.7 The nub of the Complaint is that this is bad faith registration and use on a massive scale. The 277 domain names in issue have been registered primarily for the purpose of disrupting the business of SNL and are clearly designed to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s KAZAA mark as to the source, sponsorship, affiliation or endorsement of the “www.mp3downloading.com” website and/or the WinMX download P2P software program.
5.2 The Respondent
The Respondent has not replied to Complainant’s
contentions.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
that the Respondent’s domain name is identical or confusingly similar
to a trademark or service mark in which the Complainant has rights; and
that the Respondent has no rights or legitimate interests in respect of
the domain name; and
that the domain name has been registered and is being used in bad faith.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the domain names in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again 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.
6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognises that other circumstances can be evidence relevant to the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical and Confusingly Similar
6.5 The Panel finds that the Complainant has rights in the KAZAA trademark, which is a well-known mark. The Panel also notes the intention of the Policy; to prevent bad faith registrations of domain names that take advantage of any confusion with a Complainant’s trademark.
6.6 The Panel has found in 6.17 below, that the Complainant has proved that the disputed domain names were registered to take advantage of the similarity between the domain names and the Complainant’s KAZAA trademark.
6.7 When making a decision as to the confusing similarity of a domain name, the traditional test used in trademark law is the natural starting point. However, under the Policy, the concept of confusing similarity may be wider than that of traditional trademark law. For example, the location or the class of the trademark is not relevant in the Policy, leading to cases where domain names have been found to be confusingly similar to a trademark despite the fact that a strict trademark test would have found differently.
6.8 Also relevant is the number of domain names registered by the Respondent.
In similar cases in the past, panelists have taken a broad approach to confusing
similarity, with the intention of the Respondent in registering the domain names
being a relevant factor in finding confusing similarity. For example, Ticketmaster
Corporation v. Bill Hicks, WIPO Case No. D2004-0400,
where the Panel found that “intentional typographical errors do not render
a domain name dissimilar to a trademark.”
6.9 The same applies here. The inevitable conclusion must be that the domain names were registered by a Respondent for the purpose of using those domain names to attract confused Internet users looking for the Complainant. The Respondent has done this through registering domain names that are visually similar, aurally similar, create a similar impression, or aim to take advantage of small typographical errors people may make when attempting to type “www.kazaa.com” into their browser. These actions by the Respondent evidence a deliberate strategy of registering domain names confusingly similar to the Complainant’s KAZAA mark.
6.10 Based on the above, the Panel finds that all but 49 of the domain names in issue are confusingly similar to the KAZAA mark. Even with imperfect recollection, differences in spelling, appearance and/or sound are such as to take the following domain names outside the requirement of paragraph 4(a)(i) of the Policy (number corresponding to alphabetical order).
24
<FASAA.COM>
69
<KASOA.COM>
25
<FAZALITE.COM>
73
<KAVA.COM>
34
<GAZZAA.COM>
74
<KAWAZA.COM>
35
<KAAALITE.COM>
75
<KAWAZZA.COM>
36
<KAAAZ.COM>
76
<KAXAALITE.COM>
48
<KAAZE.COM>
190-199
KAZ prefixed domain names (10 DNs)
49
<KAAZI.COM>
242-247: 249-250 and 252
KAZZ prefixed domain names (10 DNs)
50
<KAAZMA.COM>
256
<KIAZA.COM>
51
<KAAZO.COM>
258
<KOAZA.COM>
52
<KAAZZ.COM>
259
<KOEZES.COM>
53
<KABAAZ.COM>
270
<MAZAKA.COM>
60
<KAMAA.COM>
273
<MYKAZOA.COM>
61
<KANAZA.COM>
274
<RAZZALITE.COM>
62
<KANZZA.COM>
275
<SAZAA.COM>
63
<KAOZA.COM>
276
<ZACAA.COM>
68
<KASASS.COM>
277
<ZAHAA.COM>
Rights or Legitimate Interests
6.11 In default of Response, there is no evidence of use by the Respondent, or demonstrable preparations to use, any of the disputed domain names or names corresponding to them in connection with a bona fide offering of goods or services before notice of this dispute.
6.12 Nor is there any evidence that the Respondent was commonly known by any of the domain names in issue.
6.13 Finally, there is no evidence of the Respondent making a legitimate noncommercial or fair use of the 228 domain names found to be confusingly similar, without intent for commercial gain to misleadingly divert consumers or to tarnish the KAZAA trademark.
6.14 Indeed, use by the Respondent of the various misspellings and variations of and/or additions to the KAZAA trademark is clearly aimed at attracting Internet users into visiting the “www.mp3downloading.com” website and purchasing the Respondent’s own WinMX P2P software program. Indeed, as noted in paragraph 5.1.5 above, all the domain names in issue were registered after the Complainant’s KAZAA mark had become very well known.
6.15 The Respondent’s use of the KAZAA trademark is not licensed or otherwise authorised by the Complainant. Further, to compound damage to that trademark and to the Complainant‘s business, the WinMX software offered by the Respondent at its “www.mp3downloading.com” website to which the domain names in issue resolve is offered for a fee whereas no access fee is charged for the Complainant’s KMD file-sharing software.
6.16 Accordingly, the Complainant succeeds in establishing the second requirement of paragraph 4(a) of the Policy.
Registered and Used in bad Faith
6.17 As noted above, the Complainant’s KAZAA trademark and business was well known before the first of the 277 domain names in issue were registered, namely March 2002. By choosing the variants of the KAZAA trademark and compound names including that trademark and variants of it, which comprise the domain names at issue, it can only be assumed the Respondent acted deliberately with a view to trading off the reputation of the KAZAA mark. The KAZAA mark is a striking, invented word. The Respondent’s motive can only have been to attract Internet users to a website offering its competing file-sharing software product.
6.18 In this connection, the Panel also has regard to the similar misappropriation by the Respondent registering as domain names variants of other well-known trademarks such as, for example, TOYSЯUS.
6.19 The Complainant satisfies the two prongs of the third requirement of paragraph
4(a) of the Policy: that the Respondent registered and used the domain names
in bad faith.
7. Decision
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 names numbered 1 to 23; 26 to 33; 37 to 47; 54 to 59; 64 to 67; 70 to 72; 77 to 189; 200 to 241; 248; 251; 253 to 255; 257; 260 to 269 and 271 to 272 be transferred to the Complainant. Those domain names are set out in Annex 1 to this Decision.
David Perkins
Sole Panelist
Date: January 3, 2005
ANNEX 1
228 Domain Names to be transferred to the Complainant
