Spotify AB v. Nick Albrecht / CheapSpotify.com
Claim Number: FA1607001685779
Complainant is Spotify AB (“Complainant”), represented by John L. Slafsky of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Nick Albrecht / CheapSpotify.com (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cheapspotify.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 27, 2016; the Forum received payment on July 27, 2016.
On July 28, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <cheapspotify.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 August 1, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 22, 2016 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@cheapspotify.com. Also on August 1, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 30, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant has registered the SPOTIFY trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,561,218, registered Jan. 13, 2009). The mark is used in connection with the sale of computer software for use in delivery, distribution, and transmission of digital music and entertainment-related audio, video, text, and multimedia content.
2. The <cheapspotify.com> domain name is confusingly similar to the SPOTIFY trademark because the domain name contains the entire mark and differs only by the addition of the term “cheap” and the generic top-level domain (“gTLD”) “.com.”
3. Respondent has no rights or legitimate interests. Respondent is not commonly known by the domain name, nor is Respondent a licensee of Complainant. Furthermore, the domain name is being used to redirect Internet users to a website displaying advertisements and offers for competing and/or counterfeit services.
4. Respondent has engaged in bad faith registration and use. By using the domain name to redirect Internet users to a website displaying advertisements and offers for competing and/or counterfeit services, Respondent has engaged in bad faith under Policy ¶¶ 4(b)(iii) and (iv). Furthermore, as evidenced by Respondent’s aforementioned use of the domain name, it is clear that the domain name was registered with actual and/or constructive knowledge of Complainant’s rights to the SPOTIFY trademark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SPOTIFY mark. Respondent’s domain name is confusingly similar to Complainant’s SPOTIFY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <cheapspotify.com> domain name, and that Respondent registered and uses the domain name in bad faith.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has registered the SPOTIFY trademark with the USPTO (Reg. No. 3,561,218, registered Jan. 13, 2009).[1] The mark is used in connection with the sale of computer software for use in delivery, distribution, and transmission of digital music and entertainment-related audio, video, text, and multimedia content. Registration of a mark with the USPTO is sufficient to establish rights under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015).
Complainant claims that the <cheapspotify.com> domain name is confusingly similar to the SPOTIFY trademark. Complainant notes that the domain name contains the entire mark and differs only by the addition of the term “cheap” and the gTLD “.com.” The Panel disregards the “.com” portion of the domain name. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (FORUM Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Additionally, the addition of generic terms to a domain name that otherwise contains the entire at issue trademark results in a confusing similarity. See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Thus, the <cheapspotify.com> domain name is confusingly similar to the SPOTIFY trademark.
Complainant alleges that Respondent holds no rights or legitimate interests in the <cheapspotify.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts that Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow him to use the SPOTIFY mark in domain names. The Panel notes that “Nick Albrecht” is listed as the registrant of record for the disputed domain name. The Panel may also note that the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the <cheapspotify.com> domain name lacks a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant has shown that the domain name is being used to resolve to a webpage that advertises and offers competing and/or counterfeit services. Such use does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Collazo, FA 144628 (Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapspotify.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: September 1, 2016
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