Spotify AB v. Sebastian Kussl
Claim Number: FA2005001895996
Complainant is Spotify AB (“Complainant”), represented by John L. Slafsky of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Sebastian Kussl (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spotify.audio>, registered with NameCheap, Inc..
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 12, 2020; the Forum received payment on May 12, 2020.
On May 13, 2020, NameCheap, Inc. confirmed by e-mail to the Forum that the <spotify.audio> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 May 14, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 2020 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.audio. Also on May 14, 2020, 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.
A timely Response was received and determined to be complete on June 2, 2020.
On June 9, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant uses the SPOTIFY mark in connection music streaming software and services. Complainant has rights in the SPOTIFY mark through its registration of the mark with the numerous trademark agencies around the world (e.g. Intl Reg. No. 921,642, registered Jan. 4, 2007). Respondent’s <spotify.audio> domain name is identical or confusingly similar to Complainant’s trademark as it only adds the “.audio” generic top-level domain to Complainant’s trademark.
Respondent lacks rights or legitimate interests in the <spotify.audio> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the trademark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent simply parked the domain name without using it.
Respondent registered and uses the <spotify.audio> domain name in bad faith. Respondent registered the disputed domain name to divert Internet traffic to Respondent’s own webpage for commercial gain and to disrupt Complainant’s business. Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the SPOTIFY trademark given Complainant’s longstanding use of the trademark.
B. Respondent
Respondent purchased the <spotify.audio> domain name with the intent to sell it. Respondent never intended to exploit consumer confusion to draw internet traffic to the disputed domain name. Respondent consents to transfer the disputed domain name.
The Complainant is the owner of a number of national and regional trademark registrations including SPOTIFY, for example
International Registration No 921,642 SPOTIFY (word), registered January 4, 2007 for goods and services in classes 9, 35, 38 and 41, designating accepted for more than 20 countries/regions over the world.
The disputed domain name <spotify.audio> was registered on August 20, 2017.
PRELIMINARY ISSUE: CONSENT TO TRANSFER
Respondent consents to transfer the <spotify.audio> domain name to the Complainant. However, after the initiation of this proceeding, NameCheap, Inc. placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain name while this proceeding is still pending.
The Panel notes that there are cases where a respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to complainant, and the panel of such case (including some decisions made by the Panel of this case) the panel has decided to forego the traditional UDRP analysis and order an immediate transfer of the disputed domain name. However, that can only be used in cases where there is no bad faith involved, or where the complainant in that case has separately and clearly accepted such immediate transfer.
In this case, the Panel finds that Complainant has not implicitly consented in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel. As indicated above, the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them. In Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008), the panel stated that:
“Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy”.
Therefore, the Panel decides to analyze the case under the elements of the UDRP.
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.
The Complainant asserts rights in the SPOTIFY trademark based on registration of the trademark with numerous trademark agencies around the world (e.g. Intl. Reg. No. 921,642 registered Jan. 4, 2007). See Compl. Registration of a trademark with multiple trademark agencies is sufficient to establish rights in the trademark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Accordingly, the Panel find that Complainant has established rights in the SPOTIFY trademark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <spotify.audio> domain name is identical or confusingly similar to Complainant’s trademark as consists of the full trademark, and only adds the “.audio” generic top-level domain (“gTLD”). The addition of a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). The Panel therefore find that the <spotify.audio> domain name is identical to the SPOTIFY trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant argues that Respondent lacks rights or legitimate interests in the <spotify.audio> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Sebastian Kussl,” and there is no other evidence to suggest that Respondent was authorized to use the SPOTIFY mark. In the Response, the Respondent filed no arguments or provided any evidence in contradiction to Complainant’s arguments in this respect. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent simply parked the domain name without using it. The failure to make active use of a disputed domain name may not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (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 provides a screenshot of the resolving webpage of the disputed domain name which displays the error message “this site can’t be reached.” The Respondent confirm in the Response that the disputed domain name is not used, apart from when Respondent offered the Complainant to buy the domain name <spotify.audio>.
The Panel therefore find that Respondent does not use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
The Complainant contends that Respondent registered and uses the <spotify.audio> domain name in bad faith as Respondent registered the disputed domain name to divert Internet traffic to Respondent’s own webpage for commercial gain and to disrupt Complainant’s business. Use of a domain name obviously connected to a trademark to divert Internet users even to an inactive webpage can show bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). See Love City Brewing Company v. Anker Fog / Love City Brewing Company, FA 1753144 (Forum Nov. 27, 2017) (Finding that Respondent disrupts Complainant’s business by pointing Internet users to an expired webpage. This may create the perception that Complainant is closed, never existed, or is not a legitimate business. Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iii).). The Panel recall that Complainant provides a screenshot of the resolving webpage of the disputed domain name which displays the error message “this site can’t be reached.” The Panel therefore find that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant asserts that Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the SPOTIFY trademark given Complainant’s longstanding use of the trademark. Although panels have generally not regarded constructive notice as sufficient for a finding of bad faith, actual knowledge of Complainant’s trademark prior to registering is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). In this case, Complainant provides screenshots of Complainant’s webpage, social media pages, and press coverage of Complainant’s business to illustrate the fame of the trademark.
Further, the Respondent has in fact clearly stated the Respondent’s intention with the registration was to sell the same to the Complainant. The Respondent has provided a screenshot of the sales offer sent to Complainant. The Panel notes that the Respondent clearly indicates that the offer for sale will involve a significant amount, stating “I guessed this would be a quite a valuable domain”. The Respondent also indicates what will happen to the domain name if the Complainant does not pay the Respondent: “I would prefer selling it to the official company than to somebody I don’t know on the open market, who might want to use this domain for phishing attacks”.
The Panel therefore clearly find that Respondent had actual knowledge of the SPOTIFY trademark at the time of registration of the disputed domain name, thus constituting bad faith registration and use under 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 <spotify.audio> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: June 23, 2020
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