DECISION

 

Spotify AB v. Mateusz Tomaszewski

Claim Number: FA2501002138131

 

PARTIES

Complainant is Spotify AB ("Complainant"), represented by Jacob P. Dini of Perkins Coie LLP, California, USA. Respondent is Mateusz Tomaszewski ("Respondent"), Poland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <spotifydown.com> ("Domain Name"), registered with Cloudflare, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Nicholas J.T. Smith as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 31, 2025; Forum received payment on January 31, 2025.

 

On February 4, 2025, Cloudflare, Inc. confirmed by e-mail to Forum that the <spotifydown.com> domain name is registered with Cloudflare, Inc. and that Respondent is the current registrant of the name. Cloudflare, Inc. has verified that Respondent is bound by the Cloudflare, 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 February 10, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 3, 2025 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@spotifydown.com. Also on February 10, 2025, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On March 4, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Nicholas J.T. Smith as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant operates a leading global streaming service for music and other copyrighted material from its website at www.spotify.com ("Complainant's Website") and through its various apps and web play services. Complainant has rights in the SPOTIFY mark through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. 3,561,218, registered January 13, 2009).  Respondent's <spotifydown.com> domain name is confusingly similar to Complainant's SPOTIFY mark, incorporating the entire mark and merely adding the term "down" and the ".com" generic top-level domain ("gTLD").

 

Respondent lacks rights and legitimate interests in the <spotifydown.com> domain name as it is not commonly known by the Domain Name and is neither an authorized user or licensee of the SPOTIFY mark.  Additionally, Respondent does not use the Domain Name for any bona fide offer of goods or services, nor for any legitimate noncommercial or fair use, but rather to host a website ("Respondent's Website") which reproduces images from the Complainant's software and purports to offer an unauthorized piece of software which provides users with the ability to download songs from Complainant's music library without the permission of the Complainant and in violation of copyright law.

 

Respondent registered and uses the <spotifydown.com> domain name in bad faith. The Respondent's Website offers software which allegedly allows users to download content from Complainant's music library. Such use is both disruptive to Complainant's business, a breach of copyright and likely leads to commercial gain for Respondent. Respondent had knowledge of Complainant's rights in the SPOTIFY mark at the time of registration.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the SPOTIFY mark.  The Domain Name is confusingly similar to Complainant's SPOTIFY mark.  Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments.  See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the SPOTIFY mark through its registration of the mark with the USPTO (e.g., Reg. 3,561,218, registered January 13, 2009). Registration with the USPTO can sufficiently establish rights in a mark under Policy ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a national trademark authority).

 

The Panel finds that the <spotifydown.com> domain name is confusingly similar to Complainant's SPOTIFY mark because it wholly incorporates Complainant's SPOTIFY mark while adding the generic word "down" and the ".com" gTLD to form the Domain Name. These changes are insufficient to distinguish the Domain Name from the SPOTIFY mark under Policy ¶ 4(a)(i). See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) ("Respondent's <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant's ANT FINANCIAL mark.  It incorporates the mark entirely.  It adds a hyphen, the descriptive terms "investor relations," and the ".com" gTLD, but these additions are insufficient to distinguish the Domain name from complainant's mark for the purposes of Policy ¶ 4(a)(i)."); see also Disney Enters. Inc. v. McSherry, FA 154589 (Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant's DISNEY mark because it incorporated Complainant's entire famous mark and merely added two terms to it); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name.  In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006) and 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.").  The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the SPOTIFY mark.  Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.  WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged.  See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA 1621573 (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 WHOIS lists "Mateusz Tomaszewski" as registrant of record. Coupled with Complainant's unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name resolves to the Respondent's Website which purports to offer software that allows for the download of songs hosted by the Complainant and offered for streaming on the Complainant's Website. This action damages Complainant's business and facilitates copyright infringement. The use of a domain name containing the SPOTIFY Mark to resolve to a website that, for commercial gain, assists and encourages individuals to, without authorisation, download copyrighted works hosted on Complainant's Website is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).  See Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) ("It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant's systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name."); see also Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) ("Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).").  

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The Panel finds on the balance of probabilities that, at the date of registration of the Domain Name, October 10, 2022, Respondent had actual knowledge of Complainant's SPOTIFY mark as the Respondent's Website makes references to Complainant's services. Indeed, its purported business model relies on the desire to illegally download copyrighted works made available for streaming on Complainant's Website.  In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii). 

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant's SPOTIFY Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website facilitating downloads from Complainant's website which damages Complainant's business and facilitates copyright infringement.  Use of a disputed domain name to encourage and assist users in hacking a Complainant's website may be evidence of bad faith per Policy ¶ 4(a)(iii).  See Twitter, Inc. v. Alvaro Martins / Domaina Admin / Whois Privacy Corp., FA 1721606 (holding that use of the disputed domain name to offer instructions on how to hack a <twitter.com> account and offer hacking services is evidence of bad faith); see also  Google Inc. v. Onur Koycegiz, FA 1741705 (Forum Aug. 25, 2017) (finding use of the <10youtube.com> domain name in association with a website that enabled download of content from Google's YouTube website in violation of Google's YouTube Terms of Service to constitute bad faith use and registration under the Policy).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <spotifydown.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Nicholas J.T. Smith, Panelist

Dated: March 4, 2025