Spotify AB v. Mary Janes / Mary LTDA
Claim Number: FA1803001777751
Complainant is Spotify AB (“Complainant”), represented by John L. Slafsky of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Mary Janes / Mary LTDA (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spotify-usa.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 19, 2018; the Forum received payment on March 19, 2018.
On March 20, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <spotify-usa.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 March 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2018 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@spotify-usa.com. Also on March 26, 2018, 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 April 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions
Complainant, Spotify AB, is a world leader in developing and distributing software and services for streaming music and other audio-video content. Complainant has rights in the SPOTIFY mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,561,218, registered Jan. 13, 2009). See Compl. Ex. K. Respondent’s <spotify-usa.com> is identical or confusingly similar to Complainant’s SPOTIFY mark as the disputed domain name includes the mark in its entirety and adds a hyphen, the geographic term “usa” and appends the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <spotify-usa.com> domain name. Respondent is not commonly known by the disputed domain name. Complainant also has not granted Respondent permission or license to use the SPOTIFY mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, the <spotify-usa.com> domain name currently does not resolve to an active website. See Compl. Ex. L. Further, Respondent attempts to divert Internet users to Respondent’s website.
Respondent has registered and used the <spotify-usa.com> domain name in bad faith. Respondent uses the disputed domain name to divert traffic away from Complainant’s website for commercial gain, which in turn disrupts Complainant’s business. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SPOTIFY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Swedish and international company that is a world leader in developing and distributing software and services for streaming music and other audio-video content.
2. Complainant has established its trademark rights in the SPOTIFY mark based upon its registration with the United State Patent and Trademark Office (“USPTO”) (Reg. No. 3,561,218, registered Jan. 13, 2009).
3. Respondent registered the disputed domain name on January 25, 2018.
4. The <spotify-usa.com> domain name currently does not resolve to an active website and Respondent attempts to divert Internet users to its own website.
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 first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant submits that it has rights in the SPOTIFY mark based upon its registration with the USPTO (e.g. Reg. No. 3,561,218, registered Jan. 13, 2009). See Compl. Ex. K. Registration of a mark with the USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in SPOTIFY mark per policy ¶ 4(a)(i).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SPOTIFY mark. Complainant submits that Respondent’s <spotify-usa.com> is identical or confusingly similar to the SPOTIFY mark, as Respondent combines Complainant’s mark in its entirety with a hyphen, the geographic term “usa”, and the gTLD “.com.” The addition of a geographic term does not distinguish a domain name from a mark, and may even increase the confusing similarity of the domain name. See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”). Similarly, the addition of a hyphen and a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). The Panel agrees with Complainant and finds that the <spotify-usa.com> does not contain changes that would sufficiently distinguish it from the SPOTIFY mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SPOTIFY
mark and to use it in its domain name;
(b) Respondent registered the disputed domain name on January 25, 2018;
(c) The <spotify-usa.com> domain name currently does not resolve to an active website and Respondent has attempted to divert Internet users to its own website;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <spotify-usa.com> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the SPOTIFY mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name, especially where a privacy service has been engaged. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. See Compl. Ex. A (listing “Registration Private / DomainsByProxy, LLC” as registrant name). As a result, the Panel notes that the WHOIS information of record identifies the registrant of the domain name as “Mary Janes / Mary LTDA,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <spotify-usa.com> domain name;
(f) Complainant contends that Respondent has passively held the <spotify-usa.com> domain name since it was registered. When a respondent is not using the disputed domain name in connection with an active website, such a respondent may not be able to avail itself of Policy ¶¶ 4(c)(i) and (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant notes Respondent’s domain name does not resolve to an active website, and provides a screenshot to further this assertion. See Compl. Ex. L. Therefore, the Panel agrees that the <spotify-usa.com> domain name is inactive and as such is not being used for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii);
(g) Complainant contends that Respondent is using the <spotify-usa.com> domain name to divert internet users from Complainant’s website to Respondent’s own site. A respondent’s use of the complainant’s mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant contends that Respondent uses its confusingly similar domain name to attempt to cause confusion and divert users to Respondent’s website to commoditize the disputed domain name. Therefore, the Panel finds that such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <spotify-usa.com> domain name in bad faith because Respondent disrupts Complainant’s business and is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s SPOTIFY mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Using a confusingly similar domain name to disrupt a complainant’s business and mislead users can evince bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See PopSockets LLC v. san mao, FA 1740903 (Forum Aug. 27, 2017) (finding disruption of a complainant’s business which was not directly commercial competitive behavior was nonetheless sufficient to establish bad faith registration and use per Policy ¶ 4(b)(iii)); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Here, Complainant contends that Respondent’s confusingly similar domain name is intended to mislead Internet users and disrupt Complainant’s business by diverting Internet traffic away from Complainant’s site, and provides a screenshot of Respondent’s use of the domain name’s resolving webpage. See Compl. Ex. L. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Complainant submits the substantial fame and notoriety of the SPOTIFY mark, as well as the fact that Complainant is the leading music streaming service, support this finding. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the SPOTIFY mark when it registered <spotify-usa.com> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the SPOTIFY mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spotify-usa.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 20, 2018
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