WIPO Domain Name Decision: D2005-0074

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sharman License Holdings, Limited v. Kazagold

Case No. D2005-0074

1. The Parties

The Complainant is Sharman License Holdings, Limited of Port Vila, Vanuatu, represented by Genga & Associates, P.C. of Encino, California, United States of America.

The Respondents are Kazagold and Kazagold.com, c/o Network Solutions of Herndon, Virginia, United States of America; Kazagold and/or Webstart Webstart of Brandon, Florida, United States of America; Kazagold, of Woddinville, Washington, United States of America; and Kaza Gold of Mercer Island, Washington, United States of America, represented by Patel & Alumit, PC, of Woodland Hills, California, United States of America.

2. The Domain Names and Registrars

The disputed domain names <k-a-z-a-a.com>, <kazaa-kazaa.com>, <kazaa-lite-download.com>, <kazaa-lyte.com>, <kazaa-mp3.com>, <kazaa-speedup.com>, <kazaanow.com> are registered with NamesDirect.com.

The disputed domain names <kazaaone.com>, <kazaa1.com> and <kazagold.com> are registered with Network Solutions, LLC.

The disputed domain name <kazagoldsupport.com> is registered with Go Daddy Software.

For economy of expression herein, the disputed domain names <k-a-z-a-a.com>, <kazaa-kazaa.com>, <kazaa-lite-download.com>, <kazaa-lyte.com>, <kazaa-mp3.com>, <kazaa-speedup.com>, <kazaanow.com>, <kazaaone.com>, <kazaa1.com> are collectively termed “KAZAA Disputed Domain Names”; and the disputed domain names <kazagold.com> and <kazagoldsupport.com> are collectively termed “KAZA Disputed Domain Names”.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2005. On January 24, 2005, the Center transmitted by email to NamesDirect.com, Network Solutions, LLC and Go Daddy Software a request for registrar verification in connection with the domain names at issue. On January 24, 2005, NamesDirect.com transmitted by email to the Center its verification response confirming that the Respondent Webstart Webstart is listed as the registrant of the domain names <k-a-z-a-a.com>, <kazaa-kazaa.com>, <kazaa-lite-download.com>, <kazaa-lyte.com>, <kazaa-mp3.com>, <kazaa-speedup.com>, <kazaanow.com> and providing the contact details for the administrative and technical contact. On January 27, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent Kazagold is listed as the registrant of the domain names <kazaaone.com>, <kazaa1.com> and <kazagold.com> and providing the contact details for the administrative, billing and technical contact. On January 24, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent Kaza Gold is listed as the registrant of the domain name <kazagoldsupport.com> 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 Respondents of the Complaint, and the proceedings commenced on February 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 21, 2005. The Response was untimely filed with the Center on February 25, 2005.

The Center appointed Mark Yang as the sole panelist in this matter on March 21, 2005. 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.

Before reaching the merits, the Panel must decide whether to consider Respondent’s untimely Response. Under the Rules, this determination is solely within the discretion of the Panel. See Rules, paragraphs 10(a) to (d), and WIPO Notification of Complaint and Commencement of Administrative Proceeding (“Notification of Commencement”) Section 6 (“The Administrative Panel will not be required to consider a late-filed Response, but will have the discretion to decide whether to do so.”).

Because the Response was received (a) only four days late beyond the deadline and (b) before the Panel was appointed, and because the Complainant has not suffered any evident prejudice, the Panel will consider the Response.

Also, the Response appears to clarify confusion about who the proper parties are to these proceedings. It appeared to the Panel that the many possible Respondents might be related to, or alter egos, of one party. The Response appears to admit that one party, Kazagold of Brandon, Florida, United States of America, is the party who is, directly or indirectly, the owner of the KAZAA Disputed Domain Names and the KAZA Disputed Domain Names. The Panel accepts such apparent admission as controlling, and hereinafter, reference will be made only to the Respondent (singular).

4. Factual Background

Complainant owns the trademark KAZAA through an acquisition of the mark by a related entity, Sharman Networks Limited (“SNL”), and has used it continually throughout the world since January 2002, to identify and market software that enables peer-to-peer (P2P) communications over the Internet. In January 2002, SNL purchased assets from the Dutch company Kazaa BV, including: (i) the user interface for the KAZAA MEDIA DESKTOP, the P2P software; (ii) the right to use the KAZAA trademark when identifying and marketing KAZAA MEDIA DESKTOP, (iii) the “www.kazaa.com” website and related websites (including “www.desktop.kazaa.com”), which are used in connection with the KAZAA MEDIA DESKTOP application for advertising and other purposes; and (iv) a license to certain software modules within the KAZAA MEDIA DESKTOP application that SNL did not purchase.

Based on data from “www.download.com” KAZAA MEDIA DESKTOP is the most popular downloadable software application in Internet history; in December 2003, it passed 300 million total downloads and, as of today, has been downloaded over 380 million times. Millions of users make multiple millions of files available to each other with KAZAA MEDIA DESKTOP.

Several versions of KAZAA MEDIA DESKTOP P2P software have been released, each launch supported by extensive advertising. In late 2003, Complainant spent nearly $600,000 on a consumer ad campaign, the “Kazaa Revolution”, largely in print media and on merchandise, and followed up that campaign with Internet advertising in early 2004 that cost approximately another $100,000.

The extensive use of KAZAA MEDIA DESKTOP by Internet users and Complainant’s active and continued promotion of it and of the KAZAA brand, have established an association among hundreds of millions of consumers worldwide between the KAZAA trademark and the source of the KAZAA P2P software.

For the trademark KAZAA for various classes of goods and services, Complainant has a Benelux trademark registration and trademark applications pending in the United States, Australia and in the European OHIM (details are provided in Exhibit H of the Complaint).

The trademark KAZAA, used for various goods and services, and in various jurisdictions, whether registered or unregistered, all as described above, is collectively termed herein for economy of expression, as “KAZAA Trademark”.

The <kazaa.com> domain name was created on June 9, 2000, and acquired by the Complainant in January 2002. The KAZAA Disputed Domain Names and the KAZA Disputed Domain Names were registered by the Respondent in August 2002.

The Respondent offers P2P software directly competitive to the Complainant’s KAZAA MEDIA DESKTOP P2P software.

5. Parties’ Contentions

A. Complainant

The Complainant contended that the KAZA Disputed Domain Names and the KAZAA Disputed Domain Names are confusingly similar to its KAZAA Trademark in which it has rights, that Respondent has no rights or legitimate interests in the KAZA Disputed Domain Names and the KAZAA Disputed Domain Names, and that the Respondent registered and used the KAZA Disputed Domain Names and the KAZAA Disputed Domain Names in bad faith.

B. Respondent

The Respondent conceded, in its Response, that it registered the KAZAA Disputed Domain Names “…contrary to the provisions of ICANN….Respondent, through ignorance of law, believed that a slight variation of a trademark was legal”. However, the Respondent contended that its KAZA Disputed Domain Names are not confusingly similar to the Complainant’s KAZAA Trademark, that it has rights or legitimate interests in the KAZA Disputed Domain Names and that it has not registered and used in bad faith, the KAZA Disputed Domain Names.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that in respect of each of the Respondent’s KAZAA Disputed Domain Names and KAZA Disputed Domain Names: (A) that it is identical or confusingly similar to a trademark or service mark in which Complainant has rights, (B) that the Respondent has no rights or legitimate interests to it, and (C) that it was registered and is being used in bad faith.

With respect to the KAZAA Disputed Domain Names, because of the aforementioned concession by Respondent, the Panel finds for the Complainant on the three requirements A, B and C above.

With respect to the KAZA Disputed Domain Names, the Panel finds as follows.

A. Identical or Confusingly Similar

Based on the evidence provided in the Complaint, the Panel finds that: (a) the Complainant has rights in the KAZAA Trademark, and (b) the KAZAA Trademark is a made-up, fanciful term, and is strongly associated with the Complainant’s software. The Panel considers it significant that the Response did not dispute the Complainant’s preceding contention of the strength of the KAZAA Trademark.

Respondent contended that the word “kazaa” (with the second “a’) “…stresses a different pronunciation” than would be the case with “kaza” (without the second “a”). Whether this is true or not for any given language (and the Panel does not find it necessary to opine thereon), the Respondent has not offered any evidence or argument that pronunciations make much, if any, difference when the man/machine interface for visiting Internet’s websites is, as of the date of this decision, predominantly, if not exclusively, typing letters on a keyboard. Even shortcuts or graphical representations have, at base, a domain name that is entered by typing on a keyboard. The Respondent has not offered any evidence that the man/machine interface accepts voice commands where its contention of “different pronunciation” would be relevant. Even if Respondent did offer such evidence or argument on pronunciation, it would still have to address the contention that the KAZAA Trademark is a “strong mark”, for which trivial variations would have no legal significance.

Respondent further contended that the addition of the suffix “gold” creates a “different commercial impression”. The Panel does not know what Respondent means by “different commercial impression” but does not think that the generic suffix “gold” creates enough difference that the consumer on the Internet thinks that the “gold”-suffixed goods and services, originate from a source different than the non-suffixed goods and services. The Panel finds that the generic suffix “gold” merely suggests a select or best version of Complainant’s KAZAA goods and services. The Panel finds similarly for the suffix “goldsupport”.

Respondent further contended that the combination of mis-spelling and the “gold”- suffix, suffices to avoid confusing similarity. The Panel finds that the trivial mis-spelling of the Complainant’s KAZAA Trademark (by dropping the final “a”) coupled with the addition of a generic “gold”-derived suffix, does not avoid a finding that the KAZA Disputed Domain Names are confusingly similar to the Complainant’s KAZAA Trademark. The Panel thinks that the contended combination of differences dissolves into only the trivial mis-spelling because the suffix is generic.

The Panel concludes that the first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

Although the Complainant must demonstrate that the Respondent has no rights or legitimate interests in the KAZA Disputed Domain Names, once prima facie evidence has been offered, it is incumbent upon the Respondent to demonstrate otherwise, and failing to do so may enable the Panel to draw a negative inference.

The Panel considers that the circumstances described in paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, for proof of legitimate interest by the Respondent in the KAZA Disputed Domain Names, likely do not exist.

Respondent contended that it was using the KAZA Disputed Domain Names “…in an active website prior to the commencement of the proceedings”. Whether Respondent’s contention is true or not is not germane because Complainant contended that it knows of no evidence that, before notice to the Respondent of the dispute that was resolved in favor of the Complainant against the Respondent, in earlier WIPO Case No. D2004-0396, Sharman License Holdings, Limited v. Kazagold, Respondent used or demonstrably prepared to use either of the KAZA Disputed Domain Names, or a name corresponding thereto, in connection with a bona fide offering of goods or services; that Respondent has never offered the Complainant’s KAZAA MEDIA DESKTOP P2P software and would have no permission from Complainant to do so; and that the KAZA Disputed Domain Names were registered and used only after the “extreme popularity” of Complainant’s KAZAA MEDIA DESKTOP and the “wide recognition” of the KAZAA Trademark – and the Respondent has not rebutted Complainant’s contentions.

The Panel concludes that the second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

Respondent contended that since it “sufficiently changed these two domain names, these domain names could not have been registered in bad faith”. The Panel does not, for the reasons stated above on requirement (A), accept that the changes were “sufficient”, and even if it did accept the changes as sufficient, the Panel does not believe this could help the Respondent on the issue of “bad faith”.

Complainant contended that the fact that the Respondent registered the KAZA Disputed Domain Names after the KAZAA Trademark become well known in association with its P2P software, is strong evidence that the Respondent registered in bad faith. The Complainant further contended that the Respondent is using the KAZA Disputed Domain Names to redirect Internet traffic, for commercial gain, to its websites offering P2P software directly competitive to the Complainant’s P2P software. The Respondent has not rebutted these contentions. The Panel concludes that the third requirement of the Policy is satisfied.

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 all the disputed domain names, namely, <k-a-z-a-a.com>, <kazaa-kazaa.com>, <kazaa-lite-download.com>, <kazaa-lyte.com>, <kazaa-mp3.com>, <kazaa-speedup.com>, <kazaanow.com>, <kazaaone.com>, <kazaa1.com> <kazagold.com> and <kazagoldsupport.com>, be transferred to the Complainant.

Mark Yang
Sole Panelist

Dated: April 3, 2005