WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bittorrent Marketing GmbH v. AdIntensity Ltd, Adam Smith

Case No. D2007-1033

1. The Parties

Complainant is Bittorrent Marketing GmbH, Berlin, Germany, represented by Christoph Hoppe, Kreuzkamp & Partner, Germany.

Respondent is AdIntensity Ltd, Adam Smith, Shenley, Hertfordshire, United Kingdom of Great Britain and Northern Ireland, represented by Nick Parr, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Names and Registrar

The disputed domain names <mybittorrent.com>, <mybittorrent.net>, and <mybittorrent.org> are registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2007. On July 18, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On July 19, 2007, Go Daddy Software transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

Complainant had registered the disputed domain names through a privacy service offered by Domains by Proxy, an affiliate of the registrar Go Daddy Software. In accordance with the registration agreement, upon notification of the Complaint Domains by Proxy appears to have communicated the matter to the Registrar, which informed the Center of the identity of and contact information for Respondent. Following its customary practice, on July 31, 2007, the Center transmitted this information to Complainant’s representative. On August 5, 2007, Complainant submitted an amendment to the Complaint.

Complainant did not transmit a copy of the Complaint with appendices to Respondent. Respondent requested these documents from the Center’s Case Manager, who duly transmitted copies electronically on July 19, 2007, and by courier on August 24, 2007.

The Center verified that the Complaint together with the amendment to 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 August 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response September 13, 2007. The Response, identifying Adam Smith of AdIntensity Ltd as Respondent, and signed by Mr. Smith, was filed with the Center on September 14, 2007.

The Center appointed Neil Brown, Richard G. Lyon, and Knud Wallberg as panelists in this matter on October 12, 2007. The Panel finds that it was properly constituted. Each member of the Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On October 19, 2007, Complainant transmitted simultaneously to the Center, Respondent’s representative, and each member of the Panel a proposed “Amendment No. 2 to Complaint”.¹ The Panel treated this communication as a request for a supplemental filing pursuant to paragraph 12 of the Rules. By Order dated October 31, 2007, the Panel denied leave to submit these additional materials.²

4. Factual Background

Both parties to this dispute use the word “bittorrent” in their business name and principal web address. Wikipedia defines “bittorrent” as follows:

“BitTorrent is a peer-to-peer file sharing (P2P) communications protocol. BitTorrent is a method of distributing large amounts of data widely without the original distributor incurring the entire costs of hardware, hosting and bandwidth resources. Instead, when data [are] distributed using the BitTorrent protocol, each recipient supplies pieces of the data to newer recipients, reducing the cost and burden on any given individual source, providing redundancy against system problems, and reducing dependence on the original distributor.

The protocol is the brainchild of programmer Bram Cohen, who designed it in April 2001 and released a first implementation on 2 July 2001. It is now maintained by Cohen’s company BitTorrent, Inc.”

The parties’ evidence tends to support this background and definition. Basic bittorrent software is “open source”, free to any Internet user.

The company Bittorrent Inc. referred to above has a series of trademarks for the word BITTORRENT including trademarks registered in the United States of America and 14 other countries listed in Annex 7 to the Response. The United States trademark was filed on December 12, 2004 and registered on May 8, 2007 with a first use in commerce of October 1, 2001. It has also registered the domain name <bittorrent.com> and operates its own website at “www.bittorrent.com”.

Complainant also has registered trademarks for BITTORRENT, in Germany and the European Union. The former was registered in October 2003 and the latter was registered in June 2006 based on an application filed in June 2003.

Complainant has used the Bittorrent name and mark since at least 2005 and perhaps from as early as 2003. It maintains websites at “www.bitorrent.com” and “www.bittorrent.net”, and owns many other domain names that include the word “bittorrent” in various spellings. See Bittorrent, Inc. v. Day Networks Marketing GmbH, WIPO Case No. D2005-0858; respondent in that proceeding is a “partner company” of Complainant here.³ The disputed domain names in that proceeding are included among the domain names that the Complainant here now claims to own.

At Complainant’s principal website “www.bittorrent.net” an Internet user may purchase many different goods and services including film, music, electronics, and travel, and find links to many recipes and jokes. An Internet user may also purchase a download of “access”, “tutorials”, and “technical support” for the Bittorrent protocol for $29.95 US.

Respondent’s founder and principal is Adam Smith, at one time an associate of Bittorrent inventor Mr. Cohen and himself a participant in development of the Bittorrent protocol. Mr. Smith derived a script that allows users to customize their searches for materials downloadable with the Bittorrent protocol. This improved product was not dedicated to the public; instead, Respondent copyrighted the source code in the United Kingdom in April 2003. Respondent has exploited this product on websites at the disputed domain names in 2003⁴ for a website to identify files that were (or were not) available using the Bittorrent protocol. Bittorrent, Inc. licensed Respondent to use its trademark in connection with the Mybittorrent websites. Respondent’s principal website “www.mybittorrent.com” is one of the most heavily trafficked sites on the Internet today, receiving an average of more than 250,000 hits per day.

Certain of each party’s respective characterizations of the other’s business are included in the following section, Parties’ Contentions.

5. Parties’ Contentions

A. Complainant

Complainant contends as follows:

Identity of Respondent. Complainant urges the Panel to consider only Domains by Proxy, the privacy service engaged by Respondent, as the Respondent in this action, on the basis that Domain by Proxy was the registrant named at the time the Complaint was filed. See Rules, paragraph 1 (definition of Respondent).

Rights in a Mark; Confusing Similarity. Complainant has registered trademarks for BITTORRENT in Germany and the European Union. Addition of the word “my” does not obviate confusion when the dominant feature of the disputed domain name is Bittorrent.

No Rights or Legitimate Interest. As to Domains By Proxy, there is no basis for a finding of legitimate interest. This is a privacy service or domain name registrar, none of whose activities involves the word “bittorrent”. As to AdIintensity, the website it has maintained at the disputed domain name has as its sole purpose the promotion of “piracy” by allowing Internet users to link to third party websites for the purpose of unauthorized downloads of music or other data, in violation of copyright laws. Respondent also maintains advertisements for “adult entertainment” on its website.

Bad Faith. Use of a privacy service demonstrates bad faith in registration and use by hiding true ownership from the public, which assists in preventing a legitimate mark owner from identifying the true owner of the website and disputed domain name. Facilitation of “piracy” or copyright infringement is strong evidence in bad faith. Many of the products sold or accessible at Respondent’s website are also available for license download (for a fee) through Complainant’s website, making Respondent a competitor of Complainant. Use of a confusingly similar domain name to sell goods competitive with those of the mark owner is further evidence in bad faith.

B. Respondent

Respondent contends as follows:

Jurisdiction. Respondent contests the Panel’s jurisdiction to decide this proceeding. In September 2007 Respondent commenced legal proceedings against Complainant in a civil court in the United Kingdom, seeking among other things a declaration of its rights to the disputed domain name and contesting Complainant’s right to any use of the “Bittorrent” name. Forcing Respondent to answer charges in “a jurisdiction in which the Respondent is not domiciled” and in a proceeding in which it has not received full copies of Complainant’s papers is said to be a denial of “the right to a fair and proper hearing contrary to the Human Rights Act (UK), the European Charter of Fundamental Rights (ECR) (Art. 41), and the European Conventional and Human Rights (ECHR) (Art. 66(1))”.

Rights in a Mark. Respondent vigorously asserts that Complainant’s marks are invalid based upon Mr. Cohen’s development, ownership, and commercial exploitation of the Bittorrent protocol. Describing Complainant’s statements about its marks in its business as “incomplete and dishonest”, Respondent questions whether Complainant has any rights to use the Bittorrent name in its website or corporate name. Even if the Panel should accept Complainant’s rights in the mark, the disputed domain name is not likely to lead to any confusion given the wide and long-time acceptance of Respondent’s business and website. Respondent compares this to Complainant’s website, submitting Alexa statistics indicating that use of Respondent’s website is extensive and of Complainant’s is very limited.

Rights or Legitimate Interest. Respondent has been operating its business and website continuously since 2002 using the phrase “mybittorrent” under trademark license from Bittorrent, Inc., the true owner of rights in the mark, giving Respondent a right or legitimate interest in the disputed domain name. Answering Complainant’s charges of “piracy”, Respondent describes its business as completely legal and points out that Complainant has submitted no evidence of any proceeding in which the legality of Respondent’s business was contested. Respondent comes within the safe harbors of paragraphs 4(c)(i) and 4(c)(ii) of the Policy.⁵

Bad Faith. The only bad faith by either party is Complainant’s unauthorized use of Bittorrent, Inc.’s mark and Complainant’s charging unknowing Internet users for a download of software that can be obtained at no charge from many other sources. Respondent registered the disputed domain names to exploit its own proprietary software and has done so without hint of illegality for more than five years.

Reverse Domain Name Hijacking. Complainant’s incomplete and misleading description of its own business, Respondent’s business, and the background of the Bittorrent protocol are grounds are for a finding of reverse domain name hijacking. Given the size and history of Respondent’s website “it is incomprehensible that Complainant would genuinely believe that Respondent had no right of legitimate interest whatsoever”, or that Respondent’s registration of the disputed domain name was in bad faith. Complainant’s failure properly to serve Respondent with a copy of the Complaint with exhibits is further grounds for such a finding.

6. Discussion and Findings

A. Jurisdiction.

Before proceeding to the merits, the Panel must determine whether it has jurisdiction to decide this dispute and, if so, whether it is appropriate to proceed when Respondent, subsequently to the filing of the Complaint in this proceeding, commenced claims in a national court.

When it registered the disputed domain names Respondent expressly accepted the Policy as a means for resolving a limited category of disputes over Respondent’s entitlement to the disputed domain names. While the Panel’s jurisdiction is indeed limited by the Policy, it is clear that this limited jurisdiction exists by virtue of the registration agreement accepted by Respondent.

Respondent has submitted that its commencing court proceedings strips the Center or the panel of jurisdiction to deal with the Complaint and relies in support of that submission on paragraph 4(k) of the Policy. That provision, however, does not take away the jurisdiction arising under the Policy, rather it merely provides that the administrative proceeding “shall not prevent” court proceedings from being taken.

Under Paragraph 18(a) of the Rules, “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”. It is clear from the plain words of that Rule that when legal proceedings are initiated, the panel has a discretion whether to suspend, terminate, or continue with the administrative proceeding.

In the exercise of that discretion the Panel elects to proceed to a decision in this matter for two reasons. First, a prompt resolution of the issue of Respondent’s entitlement to registration and use of the disputed domain name in accordance with the Policy criteria is consistent with the Policy’s stated goals of expedition. The Panel’s decision is issued ten weeks after the filing of the Complaint rather than the months or years that could be the case were the Panel to defer these issues to the courts, which are obviously not in any way restricted by the Panel’s determination in the instant Policy proceeding.

Second, and equally importantly, this proceeding provides the opportunity to admonish both parties, in the clearest possible terms, that Policy disputes are and should be limited to a very limited category of conduct – cybersquatting – that the Policy was enacted to combat.

B. Proper Respondent.

While as Complainant asserts privacy services have sometimes been used by unscrupulous domain name registrants and even registrars for purposes that may frustrate Policy proceedings, no such conduct has occurred here. On the contrary:

- The registrar offering the privacy service included in its registration agreement a provision advising the registrant that ownership details will be revealed immediately upon commencement of a Policy or legal proceeding contesting the registrant’s right to the domain name that it has registered. When it received the Complaint in this proceeding the registrar immediately advised the Center of the identity of and contact information for the underlying registrant, Respondent.

- Immediately upon being informed of Respondent’s name and address the Center advised Complainant of those details and invited an amendment to take account of the real party in interest. The Center proceeded to furnish Respondent with a complete copy of the Complaint plus exhibits.

- Any Internet user, including Complainant, could examine Respondent’s website with a simple Internet search and determine its contents.

- Respondent has appeared and timely filed a Response in accordance with the Policy and the Rules.

In short, this proceeding has advanced in much the ordinary course without prejudice to either party and without any subversion of the Policy. Following prevailing practice⁶ the Panel will proceed to a decision considering AdIntensity as the Respondent.

C. The Merits.

In this proceeding Respondent has furnished incontestable proof that it has been operating a business including the phrase “mybittorrent”, under license from the owner of a registered trademark for BITTORRENT, continuously since 2002, more than five years before the commencement of this proceeding. Unless the evidence furnishes a basis for the Panel to find that this entire usage is not bona fide but in bad faith, Respondent plainly fits within the safe harbors of paragraphs 4(c)(i) and 4(c)(ii) of the Policy. Complainant appears to acknowledge this by basing its argument under paragraph 4(a)(ii) on its charges of “piracy” and illegality. The only authority for these very serious charges is the unsupported statement of Complainant or its counsel to this effect. Complainant provides no evidence – none – that any governmental authority or private plaintiff anywhere in the world has ever leveled such charges at Respondent or its business, much less that an agency or court has determined any such impropriety. As far as the Panel is concerned, that is the end of the matter. The Panel has no basis for independent evaluation of illegality or impropriety of either party’s business, and no jurisdiction to make one.

Respondent has established rights or legitimate interest in the disputed domain names. Accordingly Complainant has failed to carry its burden of proof under paragraph 4(a)(ii) of the Policy. As the elements of the Policy are conjunctive, for this reason the Complaint fails.

All other matters between the parties are left to the proper courts.⁷ The parties’ disputes include their respective entitlements to use the “Bittorrent” name, how each conducts its business, and other matters going beyond the limited purview of the Policy. The Panel makes no findings on any of those matters one way or the other.

D. Reverse Domain Name Hijacking.

Respondent has asked that a finding be made against Complainant of Reverse Domain Name Hijacking.

Paragraph 15(e) of the Rules provides inter alia:

“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”.

A useful statement of the test to be applied by panels in considering Reverse Domain Name Hijacking in cases such as the present is to be found in Proto Software, Inc. v. Vertical Axis, Inc/PROTO.COM, WIPO Case No. D2006-0905, where a three person panel said:

“Initiating domain name dispute resolution proceedings necessarily involves putting the parties to a considerable expenditure of time and in many cases cost and the Policy must not be used unless the complainant has a reasonable and credible belief it is entitled to succeed. In particular, proceedings must not be commenced in a brash and totally unjustifiable attempt to pressure a domain name owner into releasing a legitimately held domain name that considerably pre-dates any trademark rights held by the complainant, see Sustainable Forestry Management Limited v. SFM.com and James M. van Johns ‘Infa dot Net’ Web Services, WIPO Case No. D2002-0535.”

In the present case, the domain name <mybittorrent.com> was registered on September 15, 2003 and both of the domain names <mybittorrent.net> and <mybittorrent.org> were registered on June 27, 2004. Complainant’s European Community mark for BITTORRENT had been applied for in June 2003 and its German trademark was registered in October 2003. Moreover, it appears that Complainant was using the name Bittorrent in business in June 2003 which was, of course, prior to the registration of the disputed domain names.

Accordingly, the evidence does not justify a conclusion that the domain names “considerably pre-date[d] any trademark rights held by the complainant, …” or that bringing the Complaint was “brash and totally unjustifiable”. As Complainant had trademark rights in the name Bittorrent, it was not unreasonable to defend those rights by challenging the contested domain names.

As events have transpired, of course, the Panel had no difficulty in deciding that Respondent had a right or legitimate interest in the domain names. However, from Complainant’s point of view, the case may well have looked different at the time the Complaint was issued.

The evidence is not unequivocal and there remain many areas of dispute between the parties which cannot be resolved in the present proceeding. But on balance, a majority of the Panel is not prepared to find Reverse Domain Hijacking within the meaning of the Rules.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Dated: October 31, 2007

OPINION DISSENTING FROM DENIAL OF REVERSE DOMAIN NAME HIJACKING

I join in all respects the Panel’s opinion denying the Complaint. I agree that the Panel has correctly stated the standard for finding reverse domain name hijacking. While I also agree that this standard is exacting, I believe that Complainant’s conduct in this proceeding, as demonstrated by the evidence before the Panel, clearly demonstrates the bad faith necessary for such a finding. I therefore respectfully dissent from the Panel’s denial of reverse domain name hijacking.

Complainant has violated clear provisions of the Rules, by not transmitting a complete copy of the Complaint to Respondent, and possibly also later by communicating directly with the Panel. More importantly, Complainant has used the Policy to air a dispute much broader than mere entitlement to the disputed domain names. Complainant was admittedly aware of Respondent’s long use of the disputed domain names; given the prominence and renown of Respondent’s websites Complainant could not credibly deny it.⁸ Complainant’s contentions that all such use was “piracy” raises issues that knowledgeable counsel should know have no place in a Policy proceeding. Respondent’s counsel in this proceeding certainly knew that, at least as to proceedings brought against his clients, as in Bittorrent, Inc. v. Day Networks Marketing GmbH, WIPO Case No. D2005-0858, he successfully defended a Policy proceeding against Complainant’s partner company using arguments not unlike those advanced by Respondent here.

Respondent has also presented an evidentiary picture that is incomplete and misleading, to say the least. For example, he makes no mention of the origin of “bittorrent”, the key word in the disputed domain names, and no reference to the existence of Bittorrent, Inc. Based upon my review of Respondent’s website I believe Complainant’s description of that website in the Complaint is glaringly inaccurate in several respects pertinent to the merits of this proceeding. And leveling charges of piracy and copyright infringement without a shred of independent evidence exceeds any permissible counsel’s hyperbole; that conduct betrays at best inexcusable carelessness, at worst actionable disparagement.

Any of these circumstances justifies a finding of reverse domain name hijacking; see Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081. All of them in the same case in my opinion make such a finding mandatory.

With all due respect to my colleagues in the majority, I believe that ownership of a duly registered trademark, even one that predates registration of the disputed domain names, does not absolve Complainant of bad faith in commencing this proceeding. Confusing similarity to a mark in which complainant has rights is but one element that must be proven to make out a case under the Policy. Where I believe the present Complaint abuses the Policy is in connection with the other two Policy elements, particularly paragraph 4(a)(ii). A responsible party and responsible counsel could not in good faith ask a UDRP panel to find several years of continuous active use of a domain name that incorporates Respondent’s corporate name not legitimate without the most compelling evidence. Complainant here asked the Panel to do so on no evidence at all.

The efficacy of the Policy depends upon limiting its use to the carefully circumscribed class of cases for which it was intended – cybersquatting. Those who use it for broader business disputes or for harassing a competitor, as Complainant here has done, divert providers’ and panelists’ resources from the Policy’s intended purpose and inflict unnecessary expense on legitimate domain name holders such as Respondent.

I believe the Complaint was “brought primarily to harass the domain-name holder” and “constitutes an abuse of the administrative proceeding”, see Rules, paragraph 15(e).

Richard G. Lyon
Presiding Panelist (Dissenting on RDNH )

¹ Paragraph 8 of the Rules expressly prohibits any direct communication between a party and the Panel. Whether or not Complainant’s October 19, 2007 email was in violation of the Rules, it would at least have behooved Complainant to seek clarification from the Center in relation to the usual procedure for filing supplemental filings.

² The basis on which Complainant sought to file these materials was “[the identity of Respondent was] unknown to the Complainant at the time the Complaint was filed”. As noted in the text, this premise is not accurate, as Complainant was aware of the identity of Respondent from the Center’s earlier communication and could easily have determined the identity of Respondent from the website maintained at the disputed domain names. Since the proposed “amendment” was filed after Complainant’s receipt of the Response and consisted almost entirely of responses to arguments advanced in the Response, the Panel treated Complainant’s application as a request to submit a reply. Supplemental filings are not favored under the Policy and in its application Complainant offered no basis justifying an extraordinary filing.

³ Complainant in this proceeding was Mr. Cohen’s company referred to above. It unsuccessfully sought transfer of a series of domain names that incorporated the word bittorrent and various spellings thereof.

⁴ Respondent made his Mybittorrent software available at another website beginning in 2002.

⁵ Paragraph 4(c) of the Policy provides in part that “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 [a respondent’s] 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.”

⁶ See, Divex, Ltd. v. ZJ, Sam Chang and Tim Ng, WIPO Case No. D2007-0861 and cases cited in footnote 2 thereof.

⁷ For obvious reasons a panel’s findings in a Policy dispute have no res judicata or collateral estoppel effect in any subsequent court proceedings between the parties.

⁸ See, e.g., Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin, WIPO Case No. D2002-0635.