Spotify AB v. Haji Pacman
Claim Number: FA1701001713362
Complainant is Spotify AB (“Complainant”), represented by John L. Slafsky of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Haji Pacman (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gospotify.com>, registered with 1&1 Internet SE.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 19, 2017; the Forum received payment on January 19, 2017.
On January 20, 2017, 1&1 Internet SE confirmed by e-mail to the Forum that the <gospotify.com> domain name is registered with 1&1 Internet SE and that Respondent is the current registrant of the name. 1&1 Internet SE has verified that Respondent is bound by the 1&1 Internet SE 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 January 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2017 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@gospotify.com. Also on January 23, 2017, 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 February 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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
Complainant registered the SPOTIFY (e.g., Reg. No. 3,561,218, registered January 13, 2009), SPOTIFY Word Logo (e.g., Reg. No. 3,561,218, registered January 20, 2009), and SPOTIFY Symbol (Reg. No. 4,795,890, registered August 18, 2015) marks (“Marks”) with the United States Patent and Trademark Office (“USPTO”), as well as with various other governmental agencies in other countries. See Compl., at Attached Exhibit J. Respondent’s <gospotify.com> domain name is nearly identical and confusingly similar to Complainant’s mark, as includes the entire SPOTIFY mark and only adds the generic word “go” before the mark, and the generic top-level domain (“gTLD”) “.com” after. Respondent, additionally, uses the SPOTIFY Symbol on the landing page.
Respondent has no rights or legitimate interests in <gospotify.com>. Respondent is not commonly known by the disputed domain; has not acquired any trademark rights in the Marks; and Complainant has never authorized Respondent to use the SPOTIFY Marks in any way. The disputed domain name directs users to a scam website, with Respondent attempting to pass off as Complainant by prominently displaying the SPOTIFY Marks and capitalize on consumers’ confusion. Additionally, Respondent does not offer any services, and the streaming services they do offer are counterfeit or obtained in violation of Complainant’s rights. Such use amounts to neither a bona fide offering of goods or services described in Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent registered and is using the <gospotify.com> in bad faith. Respondent, by using the disputed domain name and SPOTIFY Marks, passes off as Complainant, thus confusing and defrauding consumers for illegal commercial gain. Respondent attempts to intercept users seeking Complainant’s services and benefit from Complainant’s fame and goodwill to commercially benefit, disrupting Complainant’s business. Finally, Respondent also had actual knowledge of Complainant’s mark, evinced by Respondent fraudulently promising SPOTIFY services; has never used the infringing domain name to host any other type of website; Respondent had no reason to register the domain other than to exploit Complainant’s brand; the services provided on the infringing domain were similar; and the unique Spotify Symbol was predominant on the page.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered <gospotify.com> on October 15, 2016.
The Panel finds that the disputed domain name, <gospotify.com>, is confusingly similar to Complainant’s valid and subsisting mark, SPOTIFY; that Respondent has no rights or legitimate interests in or to the dispute domain name; and that Respondent has engaged in bad faith use and registration of the disputed 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.
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.”).
The Panel finds that the disputed domain name, <gospotify.com>, is confusingly similar to Complainant’s valid and subsisting trademark, SPOTIFY. Complainant has adequately pled it rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely adding the generic word “go” to the beginning of the exact trademark and the g TLD “.com” to the end. This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
Further, the Panel finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no permission or authority under which it registered the disputed domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information of record identifies Respondent as “Haji Pacman.” See Compl., at Amended Attached Annex A. As such, the Panel finds that the record is devoid of any evidence showing Respondent is commonly known by the disputed domain name.
Respondent also has not made a bona fide offering of goods or services or legitimate noncommercial or fair use. The undisputed evidence in the record indicates that Respondent infringes upon Complainant’s rights and disrupts Complainant’s business by offering counterfeit or unauthorized SPOTIFY services. The disputed domain name does not offer any legitimate services. The streaming services offered are either counterfeit or obtained in violation of Complainant’s rights, disrupting Complainant’s business.
Also, Respondent’s actions are not a bona fide offering of goods or services because Respondent attempts to pass itself off as Complainant and commercially benefit by capitalizing on consumers’ confusion. Apparently, the disputed domain name diverts potential users to a scam website, prominently displaying the SPOTIFY Marks, their premium membership offer, and other details to confuse users as to their relationship with Complainant. See Compl., at Attached Exhibit K.
Accordingly, the Panel finds that Respondent has not made a bona fide offering of goods or services or had any legitimate noncommercial fair use.
Finally, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent uses the disputed domain name to attempt to intercept Internet users by passing itself off as Complainant for commercial gain. Complainant alleges that Respondent, by using the disputed domain name and SPOTIFY Marks, confuses and defrauds consumers for unlawful commercial gain. The Panel finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith.
The Panel finally concludes that Respondent had actual knowledge of Complainant’s trademark and its interests thereto prior to registering the disputed domain name. The Panel finds that Respondent must have had actual knowledge of Complainant’s mark based on Respondent fraudulently promising SPOTIFY services; had never used the infringing domain name to host any other type of website; Respondent had no reason to register the domain other than to exploit Complainant’s brand; the services provided on the infringing domain were similar to actual SPOTIFY services; and the unique SPOTIFY Symbol was predominant on the page. Therefore, the Panel finds that Respondent had actual knowledge of Complainant’s mark.
Accordingly, the Panel finds that Respondent has engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <gospotify.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: February 21, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page