BitTorrent, Inc. v. tan yun
Claim Number: FA1311001530638
Complainant is BitTorrent, Inc. (“Complainant”), represented by John Paul Oleksiuk of Cooley LLP, California, USA. Respondent is tan yun (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bittorrentsync.com> (the “Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sebastian M W Hughes as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 19, 2013. The National Arbitration Forum received payment on November 20, 2013.
On November 19, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <bittorrentsync.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 10, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bittorrentsync.com. Also on November 20, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 9, 2013.
The Complainant submitted an Additional Submission in Reply to the Response on December 16, 2013, in accordance with Supplemental Rule 7(a).
On December 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sebastian M W Hughes as Panelist.
On January 2, 2014 the National Arbitration Forum issued a Panelist Order extending the due date for the Decision until January 10, 2014.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant asserts the following:
Complainant is incorporated in the United States of America (the “USA”). It has used its well-known BITTORRENT trade mark continuously since October 2001. The Complainant has registered the mark worldwide, including in China, where the Respondent is based. The Complainant’s earliest registration for the mark (in the USA) was filed in December 2004.
Complainant’s BITTORRENT file sharing protocols move as much as 40% of the world’s Internet traffic daily. More than 170 million people use Complainant’s products every month.
Complainant also asserts common law or unregistered trade mark rights in respect of the mark BITTORRENT SYNC, used by Complainant in connection with a distributed syncing product to help manage personal
files between multiple computers since. Complainant has been using the mark BITTORRENT SYNC continuously since January 24, 2013, when
Complainant introduced its new BITTORRENT SYNC product and announced the introduction of the said product on its blog. Complainant has made ongoing use of the BITTORRENT SYNC mark, and has received press coverage in respect of its new BITTORRENT SYNC product, since that date.
The Domain Name is confusingly similar to the BITTORRENT mark and the unregistered BITTORRENT SYNC mark.
Respondent registered the Domain Name on January 25, 2013, the day after the online launch of Complainant’s BITTORRENT SYNC product. Respondent has no rights or legitimate interests in the Domain Name, which is being used, in bad faith, in connection with a website offering sponsored links to third party websites (the “Website”).
B. Respondent asserts the following:
Respondent registered the Domain Name for his own legitimate business use. Respondent is not using the Domain Name in bad faith. The Website uses a domain name management system which automatically generates pages, and is not competing with Complainant’s business.
Complainant does not have legitimate trade mark rights as BITTORRENT is a generic term. The Domain Name is in any event not confusingly similar to BITTORRENT as it contains the additional word SYNC.
The fact that the Domain Name is the same as the BITTORRENT SYNC product released by the Complainant is a coincidence.
Complainant should be taken to have abandoned the Domain Name as it failed to register the Domain Name at the time of the BITTORRENT SYNC product launch.
C. Complainant’s Additional Submissions:
Respondent has not filed any evidence to show it is not receiving pay-per-click revenue from its use of the Domain Name and the Website.
Respondent’s assertions regarding the timing of his registration of the Domain Name are not credible. The timing of the registration amounts to further grounds of bad faith.
Complainant’s registrations worldwide for the BITTORRENT mark are prima facie evidence that it is not generic.
Complainant has established all the elements entitling it to transfer of the Domain Name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Domain Name is clearly confusing similar to Complainant’s BITTORRENT Mark. It is identical to Complainant’s unregistered BITTORRENT SYNC mark.
The Panel therefore finds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in a disputed domain name:
i) Before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or names corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent (as an individual, business, or other organization) has been commonly known by the domain name even if the Respondent has acquired no trade mark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant has not authorised, licensed, or permitted Respondent to register or use the Domain Name or to use Complainant’s marks. Complainant has prior rights in the BITTORRENT mark which precede Respondent’s registration of the Domain Name by over 10 years. The Panel finds on the record that there is therefore a prima facie case that Respondent has no rights or legitimate interests in the Domain Name, and the burden is thus on Respondent to produce evidence to rebut this presumption. See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000 0624; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Respondent has failed to show that it has acquired any trade mark rights in respect of the Domain Name or that the Domain Name has been used in connection with a bona fide offering of goods or services. To the contrary, the evidence suggests the Domain Name is being used to generate revenue through use of sponsored links on the Website (whether generated automatically, or otherwise). It has long been established that using a domain name incorporating a third party’s well-known trade mark in this manner does not amount to legitimate use.
There has been no evidence adduced to show that Respondent has been commonly known by the Domain Name.
There has been no evidence adduced to show that the Respondent is making a legitimate non-commercial or fair use of the Domain Name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the Domain Name. The Panel therefore finds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of Respondent:
By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line 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.
Respondent has been using the Domain Name in respect of the Website, which has not been authorised by Complainant, and which contains sponsored links to third party websites. Given the notoriety of Complainant’s BITTORRENT mark and the timing of the registration of the Domain Name (one day after the launch of Complainant’s BITTORRENT SYNC product), the Panel therefore finds, in all the circumstances, the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the Domain Name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <bittorrentsync.com> domain name be TRANSFERRED from Respondent to Complainant.
Sebastian M W Hughes, Panelist
Dated: January 10, 2014
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