MetaMachine, Inc. v. eDonkey Records; MP3-Zone

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MetaMachine, Inc. v. eDonkey Records & MP3-Zone

Case No. D2003-0420

1. The Parties

1.1 The Complainant is MetaMachine, Inc., New York, United States of America,

represented by Sam Yagan.

1.2 The Respondents are eDonkey Records & MP3-Zone, both of Calgary, Canada.

These Respondents are represented by Mr. Anthony I. DeGidio of

Toledo, Ohio, United States of America.

2. The Domain Names and Registrars

2.1 The domain names in issue are <edonkey.com>, <edonkey-2000.com>

and <overmet.com>. The disputed domain name <edonkey.com> is registered

with Register.com, and <edonkey-2000.com> and <overmet.com> with

eNom.

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center

(the "Center") on June 2, 2003. On June 3, 2003,

the Center transmitted by email to Register.com and eNom a request for registrar

verification in connection with the domain names at issue. On June 3, 2003,

Register.com and June 5, 2003, eNom transmitted by email to the Center

their verification responses confirming that the Respondent eDonkey Records

is listed as the registrant for the disputed domain name <edonkey.com>

and confirming that the Respondent, MP3-Zone is listed as the Registrant for

the disputed name <overmet.com> and providing the contact details for

the administrative, billing, and technical contacts. On September 9, 2003, the

Center confirmed through a Whois search that the Respondent, MP3-Zone is listed

as the Registrant for the disputed name <edonkey-2000.com> and also confirmed

the administrative, billing, and technical contacts.

3.2 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").

3.3 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

June 17, 2003. In accordance with the Rules, paragraph 5(a), the due

date for Response was July 7, 2003. The Response was filed with the

Center on July 7, 2003. Further details of the parties’ submissions

and the Panel’s procedural orders is detailed in section 4 below.

3.4 The Center appointed David Perkins as the sole panelist in this matter

on July 17, 2003. 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.

3.5 On July 1, 2003 the Complainant submitted an amendment to the Complainant,

adding the domain name <ovrenet.com> to the Complaint. However, the Respondent

failed to provide details of the domain name’s registration details. By the

time the details were provided to the Center and Panel, on August 19, 2003 and

August 21, 2003, respectively, the domain name’s registration had expired,

and was not renewed. Therefore the Panel is unable to issue a decision in regards

to this domain name.

4. Chronology of Parties’ Submissions and Panel’s Procedural Orders

4.1 The Chronology in this administrative proceeding is as follows:

June

2 / June 6, 2003:

Complaint

(email / hard copy).

July

1, 2003:

Request

to Supplement the Complaint.

July

4, 2003:

Objection

to Request to Supplement the Complaint

July

7 / July 11, 2003:

Response

(email / hard copy)

July

11 / July 14, 2003:

Supplemental

Complaint (email / hard copy).

July

14 / July 21, 2003:

Response

to Supplemental Complaint (email / hard copy).

August

1, 2003:

Panel’s

Procedural Order No.1

August

11, 2003:

Panel’s

Procedural Order No.2

August

19 / August 21, 2003:

Amended

Complaint (email / hard copy).

August

22, 2003:

Second

Amended Complaint (email / hard copy).

August

22, 2003:

Panel’s

Procedural Order No.3

September

16 / October 3, 2003

Second

Response (email/hard copy)

October

1, 2003

Panel’s

Procedural Order No.4

October

9, 2003

Third

Response (email)

5. Factual Background

5.1 The Panel believes that where there are minor shortfalls in the information

it requires left by the submissions of the parties it is entitled to, and indeed

should, supplement the submissions from readily available public information.

To the extent that this has been necessary and possible, the Panel has done

so in this proceeding.

The Complainant

5.2 The Complainant is MetaMachine, Inc., of New York, United States of America.

The Complainant’s eDonkey 2000 and Overnet Software

5.3 The Complainant states that it released software under the name eDonkey 2000

in late 2000, and additional software under the name Overnet in

mid 2002. Both software suites apparently enable peer-to-peer file swapping

of music and movies. Internet and magazine articles exhibited to the Complaint

explain that, functionally, the Complainant’s edonkey software facilitates

file-swapping in a way comparable to Napster, Gnutella, Kazaa and other

similar networks.

5.4 Mr. Jed McCaleb, an officer of the Complaint, is referred to as the originator

of both the edonkey and overnet products. A publication entitled

"Slyck’s Guide to Music" dated January 9, 2003, carries

information relating to the level of usage of both products. This is attributed

to the eDonkey website. At that time the latest version of eDonkey

was recording approximately 500,000 users at any given time and Overnet

some 100,000 users. The same publication on February 9, 2003, estimated

that "eDonkey 2000’s population may be much closer to 1 million users."

By way of comparison, the article states that at its peak in the summer of 2000

Napster reached a population of some 1.5 million users.

5.5 The Complaint states that a search on the Internet search engine Google

for Overnet yields over 77,000 hits and for eDonkey over 445,000.

The Complainant’s eDonkey2000.com Website

5.6 The Complainant states that it registered the <edonkey2000.com> domain

name on September 2, 2000, and subsequently developed a website under

that name. According to the WayBack Machine ("www.archive.org") the

website was established on or by November 9, 2000.

5.7 "MetaMachine" of Brooklyn, New York is shown as the Registrant

and Mr. McCaleb is shown as the Administrative and Technical Contact.

Common Law trademark rights in EDONKEY and EDONKEY2000

5.8 By virtue of the level of its usage and its notoriety amongst peer-to-peer

file swapping systems, where the product is known as well by the abbreviation

eDonkey as it is by the full product name of eDonkey2000, the Complainant claims

to have established common law trademark rights in both marks. As to the EDONKEY

mark, the Complainant points to it also being the predominant feature of the

full eDonkey2000 product name. Certainly, the Internet and magazine articles

annexed to the Complaint use both marks, eDonkey2000 and the eDonkey

abbreviation interchangeably.

5.9 According to the news archive on the "www.edonkey2000.com" website

the eDonkey2000 software was made available for testing on September

6, 2000, and first appeared in the Internet search engine Google on October

20, 2000. These statements were also made on the "www.edonkey2000.com"

website on February 4, 2001, according to the WayBack Machine ("www.archive.org").

The Complainant’s overnet.com Website

5.10 The <overnet.com> domain name was registered on April 20, 1996,

and acquired by the Complainant from Mr. Isaiah Abrutsky on June 17,

2002. Subsequently, the Complainant established a website at that address for

its Overnet software product. According to the WayBack Machine ("www.archive.org")

the website was established on or by July 24, 2002.

5.11 "MetaMachine" of Brooklyn, New York is shown as the Registrant

and Mr. McCaleb is shown as the Administrative and Technical Contact.

Common Law trademark rights in OVERNET

5.12 The Complainant also claims to have established common law trademark rights

in the mark Overnet by virtue of the level of its usage and its notoriety amongst

peer-to-peer file swapping systems. According to the news archive on the "www.overnet.com"

website the Overnet software was stated to be in alpha testing on June

18, 2002, and the public beta version was launched on July 19, 2002.

This latter statement was also made on the "www.overnet.com" website

on July 24, 2002, according to the WayBack Machine ("www.archive.org").

The Respondent refers to an independent news release of July 21, 2002, on "www.infoanarchy.org"

about the software release, but the full text of the news release makes it clear

that the software release occurred prior to that date.

Mr. Jed McCaleb and MetaMachine, Inc.

5.13 As stated above, Mr. McCaleb is referred to as the originator and

developer of both the eDonkey and Overnet products.

5.14 Mr. McCaleb is stated to be the Complainant’s Founder and Chief Technology

Officer, but the relationship between Mr. McCaleb and the Complainant was not

clear in the original Complaint and was questioned by the Respondent, but this

has been clarified in later submissions. The Panel notes that a clear and evidenced

trail of ownership of rights in the original Complaint would have enabled the

Panel to deal with this Complaint far more efficiently.

5.15 The Complainant was incorporated as a company under the laws of the State

of New York on November 18, 2002. A company having the same name,

MetaMachine, Inc., had been incorporated as a company in California on April 24, 2001,

and was later merged into the Complainant on January 6, 2003. Copies

of documents evidencing these events were annexed to the Complainant’s submission

of July 11, 2003 [1].

5.16 The Complainant states that Mr. McCaleb assigned to the Complainant,

by means of an exhibited but apparently undated assignment agreement effective

May 16, 2001, all rights, title and interest in and to a License Agreement

dated May 16, 2002, between Petar Maymounkov and himself. This assignment

was annexed to the Complainant’s submission of July 11, 2003 [2].

The Complainant originally stated that this document transferred ownership of

the eDonkey2000 software to the Complainant, but no details of the License

Agreement were provided. However, responding to the Panel’s Procedural Order

No.1 dated August 1, 2003, the Complainant provided a second assignment agreement,

dated January 8, 2003, in which Mr. Caleb clearly assigned "Trademarks",

including the domain name <edonkey2000.com> and the words "eDonkey"

and "eDonkey2000", together with their attributable goodwill and the

eDonkey software to the Complainant. This assignment was annexed to the Complainant’s

submission of August 18, 2003.

5.17 Turning to the Overnet product, according to the WayBack Machine

(www.archive.org) the "about us" page at the website at <overnet.com>

on July 24, 2002, stated that "Overnet was created by MetaMachine".

Although the Complainant did not exist on that date, the Californian company

bearing the same name did and this was later merged into the Complainant. It

therefore appears that the Complainant owns the rights in the OVERNET mark.

The Respondent

5.18 The Respondents are eDonkey Records & MP3-Zone, both of Calgary, Canada.

The Registrant, Administrative and Technical Contact of <edonkey.com>

is eDonkey Records, and the Registrant, Administrative and Technical Contacts

of <overmet.com> and <edonkey-2000.com> are all MP3-Zone. Both eDonkey

Records and MP3-Zone have the same and are represented by Mr. Anthony I. DeGidio

of Toledo, Ohio, United States of America. The Panel has already decided in

its Procedural Order No. 1 of August 1, 2003, that it is satisfied that the

domain name registrants are one and the same entity and will hereafter be referred

to as "Respondent".

5.19 Despite the Panel’s request in its Procedural Order, neither party has

given further information about the Respondent’s business. However, the three

domain names which hosted websites which were still active on today’s date all

redirected the user to a website at music-download-world.com using the hyperlink

"http://music-download-world.com/ref.asp?revshare=Music&siteid=Traffic".

This indicates to the Panel that the Respondent is using the websites to profit

by means of an affiliate program for Music Download World using the RevShare

program of iBill ("www.ibill.com").

6. Parties Contentions

The Complainant

Identical or Confusingly Similar

<edonkey.com>; <edonkey-2000.com>

6.1 The Complainant says that the first of these domain names is identical

to its mark EDONKEY and is confusingly similar to its mark EDONKEY2000 because

its customers and business partners frequently shorten their references to the

Complainant to EDONKEY. The Complainant pleads no additional grounds in relation

to the second of these domain names, which differs from the Complainant’s EDONKEY2000

mark merely by the addition of a hyphen.

6.2 The Complainant cites a number of cases brought under the Policy where

confusing similarity has been found, including the following cases.

Goldmasters Precious Metals v. Gold Masters srl (NAF Case No. 95246)

Domain name <goldmasters.com> found to be confusingly similar to Complainant’s

GOLDMASTERS PRECIOUS METALS trademark.

AT&T Corp. v. Tala Alamuddin (WIPO Case No. D2000-0249)

Domain name <att2000.com> found to be confusingly similar to Complainant’s

ATT mark.

PG&E Corporation v Samual Anderson and PGE in the year 2000 (WIPO

Case No. D2000-1264)

Domain names including <pge2000.com> found to be confusingly similar

to Complainant’s PG&E trademark.

ISL Marketing AG, and the Federation Internationale de Football Association

v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002 (WIPO Case No.

D2000-0034)

Domain names including <worldcup2002.com> found to be confusingly similar

to Complainant’s WORLD CUP trademark.

6.3 The Complainant also exhibits an email received by the Complainant from

a customer who attempted to purchase eDonkey software from the Respondent’s

website.

<overmet.com>

6.4 The Complainant says that the domain name is a typographical mis-spelling

of "overnet". The Complainant cites the following case brought under

the Policy where confusing similarity was found and which in turn cites a number

of other similar cases.

OfficeMax, Inc. and OMX, Inc. v. Yong Li (WIPO Case No. D2003-0060)

Domain name iffixemax.com found to be confusingly similar to Complainant’s

OFFICEMAX trademarks.

Rights and Legitimate Interests

6.5 The Complainant's case that the Respondent has no rights or legitimate

interests in the domain names in issue for the following reasons:

- There is no relationship between the Complainant and the Respondent which

might lead to any license permission or authorization to incorporate the Complainant’s

marks in the domain names at issue.

- The Respondent has not used the domain names for any bona fide offering of

goods or services. The Respondent has never carried out any business or activity

under the names Overmet or eDonkey. The Complainant claims that the Respondent

has in the past made significant use of the Complainant’s names, marks and images

on the websites linked to the domain names. The Respondent currently links the

websites to third party sites in a manner which appears to the Panel to be an

affiliate scheme, from which the Respondent may derive some commercial benefit.

With two of the domain names the Respondent has exploited typographical errors.

In other words, the domain names are visually the same as the Complainant's

marks, save for minor mis-spellings to take advantage of typing mistakes by

web users who are wrongly directed to the Respondent's website. This unfair

use of the Complainant's marks with intent to misleadingly divert consumers

for commercial gain.

Consequently, the Respondent cannot fulfill any of the circumstances set out

in paragraph 4(c) of the Policy as determinative of rights or legitimate interests.

Registered and Used in Bad Faith

6.6 Here, the Complainant's case is as follows:

The Respondent must have known of the Complainant’s marks at the time of registration,

given the widespread and extensive use of the marks on the Internet and the

fact that the Respondent used the domain names initially to sell unauthorized

copies of the Complainant’s software and then later to redirect to MP3 University,

a website competing with the Complainant.

The Complainant contacted the Respondent to complain about the use of the domain

names on November 19, 2002, but the Respondent failed to respond and later changed

the use of the domain names as described above. The failure to respond is itself

evidence of bad faith.

The Respondent is redirecting Internet users to the website of a competitor

of the Complainant, creating the likelihood of confusion with the Complainant’s

marks as to source, sponsorship, affiliation or endorsement of that website.

The Respondent has engaged in "typosquatting".

The Respondent has engaged in a pattern of abusive registrations.

The Respondent

6.7 Before proceeding to the issues raised by the Complaint, the Respondent

raises a number of criticisms of the Complaint for lacking evidence. The Respondent

also states that the Complainant’s activities are illegal as the Complainant’s

software amounts to a contributory and vicarious infringement of US copyright

law and also a conspiracy to distribute sexually explicit images of children

and bestiality. The Respondent also raises the following contentions related

to the terms of the Complaint.

Identical or Confusingly Similar

6.8 The Respondent claims that the Complainant has not proved any rights to

the marks claimed nor that it made first use of them before the Respondent.

The Respondent also claims that such rights would not be enforced due to their

illegality.

Rights and Legitimate Interests

6.9 The Respondent claims that the Complainant’s claims lack evidence and that

the Respondent made first use and/or has used the names uncontested for years.

Registered and Used in Bad Faith

6.10 The Respondent claims that the Complainant has not shown bad faith at

time of registration. Moreover, in relation to the cease and desist letter,

Respondent states that it was clear that any reply would be a waste of time.

Reverse Domain Name Hijacking

6.11 The Respondent claims that the Complainant’s lack of evidence, delay,

false filings and failure to provide annexes are evidence that this is a case

of reverse domain name hijacking.

7. Discussion and Findings

7.1 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.

7.2 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 interest in the domain name in issue.

7.3 The Policy paragraph 4(b) sets out circumstances which, again in particular

but without limitation, if found the Panel to be present, shall be evidence

of the registration and use of a domain name in bad faith.

7.4 As stated, the circumstances set out in paragraph 4b and 4c of the Policy

are not exclusionary. They are without limitation. That is, the Policy

expressly recognises that other circumstances can be evidence relevant

the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

7.5 In relation to the claims of the illegality of the Complainant’s operations,

the Panel notes that the Respondent’s allegations should be dealt with, if necessary,

by the relevant courts and not by the Panel. Although it is possible that cases

may arise where Complainant conduct will prevent a Panel from finding in its

favour, this is not such a case.

Identical or Confusingly Similar

7.6 The Complainant has been using the eDonkey2000 name since September 2000,

and the Overnet name since May 2002. The Respondent challenges the Complainant’s

assertion that it had first use of the names for lack of evidence but does not

provide any details of its own use, claiming that he cannot provide any evidence

as he does not recall the exact date he obtained <edonkey.com>.

7.7 On the evidence provided by the parties, in the Panel's view the Complainant

has common law trademark rights in the words eDonkey2000 and Overnet. The evidence

also demonstrates that the names eDonkey2000 and eDonkey are used interchangeably

on the Internet and therefore the Complainant has also demonstrated common law

trademark rights in the work ‘eDonkey’.

7.8 One of the domain names is a mis-spelling of the OVERNET mark, and the

other two are identical to EDONKEY and EDONKEY2000, in the latter case with

the addition of a hyphen. The Respondent has not suggested that any of the minor

differences in the spelling domain names are significant. They are therefore

to all intents and purposes identical with the relevant marks.

7.9 The Complaint, therefore, meets the requirements of paragraph 4(a)(i) of

the Policy.

Rights or Legitimate Interests

7.10 The Respondent claims that it has rights because the Complainant has delayed

in bringing these administrative proceedings and also, as described above, challenges

the Complainant’s assertion that it had first use of the names for lack of evidence.

However, the Respondent does not provide any details of its own use, claiming

that he cannot provide any evidence as he does not recall the exact date he

obtained <edonkey.com>. Similarly, the Respondent does not provide any

details of its own use to rebut the Complainant’s claims. Accordingly, the Complainant

succeeds in establishing the requirements of paragraph 4(a)(ii) of the Policy.

Registered and Used in Bad Faith

7.11 The Complainant has enumerated various examples of bad faith usage and

the Respondent has not substantively challenged these assertions. The Panel

also notes that use of domain names solely to redirect consumers as part of

an affiliate program for an unconnected website, in this case "www.music-download-world.com",

will in most cases constitute bad faith. The Panel therefore finds that the

Complaint meets the requirements of paragraph 4(a)(iii) of the Policy as regards

use in bad faith.

7.12 However, the Policy also requires that registration was made in bad faith

by the Respondent. This must be considered separately for each domain name.

edonkey.com; edonkey-2000.com

7.13 The Complainant’s public use of EDONKEY2000 dates back to at least September

2000, although there is no need to determine the exact date in the context of

this proceeding.

7.14 The <edonkey.com> domain name was first registered on March 23,

1999. The Complainant claims, and the Respondent does not deny, that the Respondent

was not the original owner. In its first Response the Respondent merely stated

that the Complainant had offered no evidence that it began using the EDONKEY2000

mark before the Respondent’s ownership of the <edonkey.com> domain name.

The Complainant then stated that it did not know the exact date of transfer

to the Respondent but noted that the Respondent has failed to provide evidence

on this point. Although the date when the Respondent acquired the <edonkey.com>

domain name must be within the knowledge of the Respondent, in its Response

to the Supplemental Complaint the Respondent merely took the position that the

burden of proof lay on the Complainant to prove the point. Then, when the Panel

stated in Procedural Order No.1 that neither party had provided an adequate

factual background, in the Second Response the Respondent merely said that it

"cannot submit any evidence on this issue as he does not recall the exact

date he obtained edonkey.com". Given that bona fide acquisition of the

domain name was put in issue by the Complainant, the burden of proof must lie

with the Respondent to satisfy the Panel on that issue. For instance, if the

Respondent had acquired <edonkey.com> before the Complainant’s first use

of the EDONKEY2000 mark, then proof of such acquisition would have constituted

convincing evidence of the Respondent’s bona fides. It is, however, simply not

convincing for the Respondent to assert that it is a good faith registrant without

at the very least providing an approximate date of transfer and initial use

of the domain name, given that these facts must be within its own knowledge

and do not appear to be determinable by the Complainant. In the light of this,

on the balance of probabilities the Panel finds that the Respondent acquired

the domain name <edonkey.com> in bad faith.

7.15 As for the <edonkey-2000.com> domain name, this was first registered

on March 19, 2002. This clearly postdates the Complainant’s use of the

EDONKEY2000 mark and was in bad faith.

7.16 For these reasons, the Panel finds that the Complaint meets the requirements

of paragraph 4(a)(iii) of the Policy in relation to the domain names <edonkey.com>

and <edonkey-2000.com>.

overmet.com

7.17 The Complainant’s public use of OVERNET dates back to at least June 18,

2002, and the public beta version of the Overnet software was released

on July 19,2002. The domain name <overmet.com> was first registered on

July 21, 2002. In the Panel’s view, the timing and format of this registration

and its subsequent usage make it clear that the registration was made in bad

faith.

7.18 For these reasons, the Panel finds that the Complaint also meets the requirements

of paragraph 4(a)(iii) of the Policy in relation to this domain name.

Reverse Domain Name Hijacking

7.19 For the reasons above, and in particular the Respondent’s bad faith use

of the domain names in dispute, the Panel finds the Respondent’s claim of reverse

domain name hijacking not made out.

8. Decision

8.1 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 <edonkey.com>,

<edonkey-2000.com> and <overmet.com> be transferred to the Complainant.

David Perkins

Sole Panelist

Dated: October 14, 2003

Footnotes:

1. The Respondent claims not to have received

these annexes in its submissions of July 14, 2003, and September 6, 2003.

This is contrary to Rule 2(h)(iii), which requires that any communication by

a Party be copied to the other Party. However, the Panel finds that this has

not deprived the Respondent of a fair opportunity to present its case under

Rule 10(b), as the annexes do not add substantive material which was not referred

to in the submission itself. Moreover, the annexes were forwarded to the Respondent

by the Center on October 2, 2003, and the Respondent provided the Panel with

a further supplemental filing on October 8, 2003, commenting on the annexes.

2. As above.