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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Blogmusik SAS v. Whois Agent / Whois Privacy Protection Service, Inc. / Gigi Patrut

Case No. D2015-0744

1. The Parties

1.1 The Complainant is Blogmusik SAS of Paris, France internally represented (the “Complainant”).

1.2 The Respondent is Whois Agent / Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States of America / Gigi Patrut of Bucharest, Romania (the “Respondent”).

2. The Domain Name and Registrar

2.1 The disputed domain name <mp3deezer.com> (the “Disputed Domain Name”) is registered with Name.com LLC (the “Registrar”).

3. Procedural History

3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2015. On April 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 27, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent, and contact information in the Complaint. The Center sent an email communication to the Complainant on May 1, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on May 5, 2015.

3.2 The Center verified that the Complaint together with the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

3.3 In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 6, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2015.

3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on June 4, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

4.1 The Complainant is a French registered company located in Paris France and trading internationally under the name of “Deezer”. The Complainant offers an international online music on demand service through free and paying services (the “Deezer Services”). The Complainant has been operating since 2007 and is said to have become a leader in France and then internationally in the online music on demand business. It is said that the Complainant has developed a formidable presence on the Internet and acquired renown in the music industry among Internet users. The Complainant offers its services on the Internet at the website available at “www.deezer.com” (the “Deezer Website”) on which it offers its Deezer Services and which serves as its main distribution channel. The Complainant is also owner of many intellectual property rights in the term “DEEZER” and has launched the Deezer Services in more than 180 countries, including in the United States of America on September 14, 2014 with extensive media coverage. The Complainant first registered its trademark DEEZER on August 20, 2007.

4.2 The Respondent according to the WhoIs database registered the Disputed Domain Name on December 1, 2014.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant owns numerous trademark registration certificates including the International Trademark DEEZER No.1024994, the Community Trademark DEEZER No. 008650079, the US Trademarks DEEZER No. 3803079 and No. 3803078 and the French Trademark No. 3520218 etc. as further listed in Annex 6 attached to these proceedings. The Complainant also owns numerous domain names corresponding to its trademark namely: <deezer.com>, <deezer.fr>, <deezer.es>, <deezer.jp>, <deezer.at>, <deezer.de>, <deezer.dk>, <deezer.it> and <deezer.me> etc. as further listed in Annex 7 attached to these proceedings.

5.2 The Complainant therefore contends that the Disputed Domain Name <mp3deezer.com> is confusingly similar or identical to the Complainant’s DEEZER trademark, in that the Disputed Domain Name wholly incorporates the Complainant’s highly distinctive DEEZER trademark. Furthermore, the Complainant argues that the Respondent’s addition of the term “mp3” to the Disputed Domain Name could mislead Internet users into believing that they could download the Complainant’s available musical catalogue in mp3 format. Thus the Complainant contends that the addition of the term “mp3” and or the suffix “.com” does not prevent a finding of confusing similarity. In support, the Complainant relies on a considerable number of previous UDRP decisions namely; Blogmusik SAS v. Yang Zhichao, WIPO Case No. DCO2013-0008 concerning the disputed domain name <deezer.co>, Blogmusik SAS v. Michal Jania, WIPO Case No. D2014-2012 and V&S Vin & Spirit AB v. Canal Prod Ltd., WIPO Case No. D2002-0437.

5.3 The Complainant argues further that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has only registered the Disputed Domain Name in order to exploit the fame of the Complainant’s DEEZER trademark for commercial gain. Further in this regard the Complainant asserts that the Respondent has never been known in France or worldwide as “deezer” or “mp3deezer” unlike the Complainant who created the marks in 2007 and 2009 and went on to register several trademarks in France and throughout the world. The Complainant also refers to the refusal or failure of the Respondent to respond to the Cease and Desist letter dated February 24, 2015 dispatched to the Respondent by the Complainant as further evidence of lack of rights or legitimate interests in the Disputed Domain Name. The Complainant also states that there is no evidence that the Respondent has used and or has been preparing to use the Disputed Domain Name for a bona fide offering of goods and services, instead as the evidence reveals, the Disputed Domain Name is only used to mislead Internet users into believing that the Respondent is offering streaming and downloading music services and thereby acting as a competitor to the Complainant. In addition, it is asserted that the Respondent has never been authorized to use and reproduce the Complainant’s DEEZER trademark.

5.4 With regards to bad faith registration and use, the Complainant’s first submission is that not only has the Respondent registered the Disputed Domain Name in bad faith and continued with bad faith use, the Respondent’s conduct also prevents the Complainant from registering the Disputed Domain Name to the Complainant’s detriment. Secondly, the Complainant contends that it is impossible that the Respondent did not have the Complainant’s trademark in mind when registering the Disputed Domain Name considering the Complainant has registered the trademark DEEZER since 2007 in France and as an international trademark since 2009. Thirdly, the Complainant alludes to the date of registration of the Disputed Domain Name in December 1, 2014 which is close to the September, 2014 date when the Complainant launched its Deezer Services in the United States of America with extensive media coverage as further evidence of bad faith on the Respondent’s part as it cannot be a mere coincidence. Fourthly, the Complainant states that even if the Respondent was unaware of the use being made of the Disputed Domain Name, the Respondent failed or refused to shut down access to the website following the dispatch of the Cease and Desist letter by the Complainant in further evidence of bad faith use. Fifthly, the Complainant contends that it is obvious that the intention of the Respondent when using the Disputed Domain Name is to make Internet users click on “Download” and be directed to online advertisements for commercial gain which can ultimately affect the reputation of the Respondent adversely since Internet users will be misled into believing that there is a link between the Complainant and the Respondent’s Disputed Domain Name.

B. Respondent

5.5 The Respondent did not respond to the Complainant’s contentions within the time frame stipulated by the Rules.

6. Discussion and Findings

6.1 The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to succeed, namely that:

i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the Complainant has rights;

ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii) the Respondent has registered and is using the Disputed Domain Name in bad faith.

A. Identical or Confusingly Similar

6.2 The Panel is satisfied that the Complainant has since 2007 owned intellectual property rights in the DEEZER trademark. The Complainant’s trademark records attached to these proceedings clearly supports this finding. The Panel therefore finds that the Disputed Domain Name <mp3deezer.com> is confusingly similar to the Complainant’s trademark DEEZER. The Disputed Domain Name obviously incorporates entirely the Complainant’s highly distinctive DEEZER trademark. The Panel finds, as has been held in numerous other UDRP decisions that the addition of the term “mp3” and or the Top-Level Domain suffix “.com” does absolutely nothing to prevent a finding of confusing similarity. See in support the following cases inter alia confirming the Complainant’s rights in the DEEZER trademark, and its highly distinctive nature namely; Blogmusik SAS v. Michal Jania, supra concerning the disputed domain name <deezerpremiumgratuitement.com>, Durst Phototechnik AG v. Jens Jensen, WIPO Case No. D2010-0373, and V&S Vin & Spirit AB v. Canal Prod Ltd., supra. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

6.3 The Panel finds that the Respondent has failed to provide any evidence that demonstrates that the Respondent has any rights or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(c) of the Policy. There is no evidence of a business relationship between the Respondent and the Complainant nor is there any evidence of authorisation or a licensing agreement permitting the Respondent to use the Complainant’s trademark. Furthermore, as the Complainant asserts, the Respondent has never been known in France or in anywhere else worldwide in connection with the trademark DEEZER or the expression “mp3deezer”. More significantly, there is no evidence that the Respondent has used and or has been preparing to use the Disputed Domain Name for a bona fide offering of goods and services, instead, the Respondent is pretending to offer streaming and downloading music service and thereby acting as a competitor to the Complainant. As the Disputed Domain Name resolves to a website directing Internet users to online advertisements for commercial gain and is used mainly to mislead Internet users into believing that they would be able to download the Complainant’s music catalogue in mp3 format, such conduct cannot be described as a legitimate and noncommercial use of the Disputed Domain Name. See Oki Data Americas Inc. v ASD Inc., WIPO Case No.D2001-0903. It is well established that in cases where the Complainant establishes a prima facie case against the Respondent, that the Respondent in turn, bears the burden of proving that it has rights or legitimate interests in relation to the Disputed Domain Name. As the Respondent did not respond to the Complainant’s Cease and Desist letter nor responded to the Complainant’s contentions in this matter, the Respondent has failed to discharge its burden in this instance. See in support previous UDRP decisions such as Croatia Airlines d.d.v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455 and PepsiCo Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. In the circumstances, the Panel is satisfied that the Complainant has established the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

6.4 It follows that the Panel finds from the evidence adduced thus far, that the Respondent registered the Disputed Domain Name in bad faith and continued with bad faith use. In arriving at this finding the Panel has taken into account and considered the following factors. The Panel finds that it is inconceivable that the Respondent could not have been aware of the Complainant’s extensive and world wide established rights in the DEEZER trademark since 2007 when registering the Disputed Domain Name in December 2014. Secondly, the Respondent has used the Disputed Domain Name in bad faith solely to mislead and confuse Internet users into believing that they can download the Complainant’s music catalogue in mp3 format and to divert Internet users and the Complainant’s customers to websites populated with online advertising links for commercial gain. Such acts are clear evidence of bad faith use. See in this regard Paris Hilton v. Deepak Kumar, WIPO Case No. D2010-1364 and Stoxx AG v. 247 Holding Group, WIPO Case No. D2012-1582. Thirdly, the Panel has drawn adverse inferences from the refusal and or failure of the Respondent to respond to the Complainant’s Cease and Desist letter, dated February 24, 2015 and the Respondent’s failure to respond to the Complainant’s allegations in this proceeding as further evidence of bad faith use. The Panel is therefore satisfied that the Complainant has established the elements of paragraph 4(a)(iii) of the Policy.

7. Decision

7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <mp3deezer.com> be transferred to the Complainant.

Ike Ehiribe
Sole Panelist
Dated: June 20, 215

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