Old (former IPR-Thieving) Napster v New (IPR-Thieving) Napster.fm?

The World Intellectual Property Organization this week released the decision in an internet domain name dispute in which the current incarnation of the once-wildly successful Napster music-sharing website  successfully forced a website called napster.fm to shut down over intellectual property rights violations.

The decision, Rhapsody International Inc. v. Ryan Lester and Napster.fm, LLC, was issued on 8 September by the WIPO Arbitration and Mediation Center, which handles cybersquatting cases.

According to the decision, Rhapsody, registered in San Francisco, is the company that acquired the former peer-to-peer filesharing Napster business. It has licensed certain uses of the Napster mark, and has been active in defending it.

Around April 2013, Rhapsody became aware of the website www.napster.fm, a jumpy, constantly reloading website which as of early this week pitched itself as “Napster reimagined for the modern Web.” It listed “a few features that make Napster.fm better than Napster OG,” and boasts, “You won’t get arrested.”

“If Napster.fm were ever abandoned or shut down, the community could immediately rehost it,” it claimed.

This week, following the decision, the website changed its name to Peer.fm, still showing its claim of being better than Napster OG, with Napster.fm visibly crossed out. Traffic to napster.fm redirects to peer.fm.

The original Napster was revolutionary in providing users free access to copyrighted music but was shut down years ago after it lost a high-profile copyright battle that left millions of users stranded.

Napster.fm was owned by Ryan Lester and a company registered in Vienna, Virginia. The .fm domain extension belongs to the Federated States of Micronesia, which presumably is earning some revenue from its generic country code top-level domain. The Napster.fm argument was that users would think it refers to a radio station. His website does not use a visible trademark.

The WIPO dispute panel (one person) described evidence of admissions by Lester that he sought to gain from associating his company with the Napster name, and found in favour of Rhapsody, ordering Lester to discontinue using the name. Lester had offered to cease using it if Rhapsody paid nearly $1 million, but this was rejected and the case was brought to WIPO instead. There was no evidence that Lester’s site had been commonly known by the domain name, nor that it was making a legitimate noncommercial or fair use of the domain name.

The panel cited previous cases, such as a case that found the unauthorised websites peterbilttrucks.com and kenworthtrucks.com to not be appreciably different from the trademarks Peterbilt and Kenworth.

Lester had tried in September 2013 to register the Napster.fm trademark at the United States Patent and Trademark Office but the application was declined based on the likelihood of confusion with Rhapsody’s registration under the Napster mark. Lester appealed the decision and the case is pending at the Trademark Trial and Appeal Board.