WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blogmusik SAS v. Michal Jania
Case No. D2014-2012
1. The Parties
The Complainant is Blogmusik SAS of Paris, France, represented internally.
The Respondent is Michal Jania of Trzemesnia, Poland.
2. The Domain Name and Registrar
The disputed domain name <deezerpremiumgratuitement.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 14, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 15, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing contact details.
The Center verified that the 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”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 20, 2014. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 10, 2014. The Respondent did not submit any formal response but sent an email to the Center on November 21, 2014.
The Center appointed Brigitte Joppich as the sole panelist in this matter on December 21, 2014. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant is a French company trading internationally under the name “Deezer” and operating an international online music on demand platform, with some services being offered for free and others being offered against payment. The Complainant has been offering its services since 2007. In 2009, the Complainant launched two services against remuneration: “Deezer Premium” and “Deezer Premium+”. The Complainant is offering its services on the Internet at the website available at “www.deezer.com”, which is also its main distribution channel. On September 14, 2014, the Complainant launched its services in the United States of America (“U.S.”), subject to broad media coverage.
The Complainant owns registered trademark rights in DEEZER and DEEZER PREMIUM, inter alia, through Community Trade Mark registration no. 008650079 DEEZER, registered on May 3, 2010, U.S. trademark registration no. 3803079 DEEZER, registered on June 15, 2010 (hereinafter referred to as the “DEEZER Marks”). Furthermore, the Complainant owns numerous domain name registrations including its DEEZER Marks.
The disputed domain name was registered on October 6, 2014 and is used in connection with a website in French referring to the Complainant’s DEEZER services and apparently offering DEEZER premium accounts to users in exchange for a subscription to third parties’ offers. The Complainant sent a cease and desist letter to the Respondent on November 3, 2014, which remained unanswered.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.
(1) The disputed domain name is confusingly similar to the DEEZER Marks as such marks are identically reproduced in the disputed domain name and as the additional terms “premium” and “gratuitement”, which means “free” in French, enjoy no distinctiveness. In fact, the combination implies that the user can get a Deezer Premium account free of charge. Furthermore, the addition of a suffix such as “.com” does not have an impact on the consideration of confusing similarity between a trademark and a disputed domain name.
(2) The Respondent has no rights or legitimate interest in respect of the disputed domain name as the Respondent does not own any rights in the terms “Deezer”, “Deezer Premium” or “deezerpremiumgratuitement” which could justify the registration and use of the disputed domain name, and as the Respondent has never been known in France or elsewhere under “Deezer”, “Deezer Premium” or “Deezer Premium Gratuitement”. The disputed domain name and the website are in French, which proves that the Respondent wants to target the French audience, France being the country of origin of the Complainant. In addition, the Respondent did not respond to the cease and desist letter showing that the Respondent has no good cause or defense for registering the disputed domain name. Furthermore, there is no evidence that the Respondent has used or has been preparing to use the terms “Deezer” and “Deezer Premium” or the disputed domain name for a bona fide offering of services and goods.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant argues that the disputed domain name was registered and is being used to prevent the Complainant from registering the disputed domain name and to make a commercial gain to the detriment of the Complainant. It further argues that it is impossible that the Respondent did not have the Complainant’s trademark in mind when registering the disputed domain name since the term “Deezer” was created by the Complainant, the terms “Deezer” and “Deezer Premium” have been used since 2007 and 2009 respectively to indicate the Complainant’s services against payment, and the terms “Deezer” and “Deezer Premium” have acquired renown throughout the world and are only being used by the Complainant. In addition, the Respondent’s website pretends to be an official website of the Complainant’s DEEZER services and therefore creates a likelihood of confusion between the Complainant and the Respondent.
On November 21, 2014, the Center received an email communication from the Respondent, stating that the website is not managed by him but was developed, hosted and used by another person.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s highly distinctive DEEZER Marks and is confusingly similar to such marks. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of additional generic terms, such as “premium” or “gratuitement”, which is French for “free”.
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name. Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Respondent’s use is not bona fide use under paragraph 4(c)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant’s DEEZER Marks as the disputed domain name was registered only some weeks after the Complainant launched its services in the U.S., an event broadly covered by the media, as the disputed domain name contains a French word and the content available at the Respondent’s website is in French, French being the language of the Complainant’s country of origin, and as the disputed domain name and the content at the website available at the disputed domain name clearly refer to the Complainant and its “Deezer Premium” service.
As to bad faith use, by fully incorporating the DEEZER Marks into the disputed domain name and by using such domain name in connection with a website apparently offering Deezer Premium accounts to users in exchange for a subscription to third parties’ offers, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain as set out under paragraph 4(b)(iv) of the Policy. It is well established that a respondent (as the registered owner of the domain name) is in general ultimately responsible for the information available at the website and for all content posted there, regardless of how and by whom such content was generated and regardless of who profits directly from the commercial use (cf. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition “WIPO Overview 2.0” at paragraph 3.8 with further references). The Panel is therefore satisfied that the Respondent also used the disputed domain name in bad faith.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <deezerpremiumgratuitement.com> be transferred to the Complainant.
Date: December 30, 2014