WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Blogmusik SAS v. leo viet
Case No. D2015-0649
1. The Parties
Complainant is Blogmusik SAS of Paris, France, represented internally.
Respondent is leo viet of Toulouse, France.
2. The Domain Name and Registrar
The disputed domain name <deezerpro.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2015. On April 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center, Complainant filed an amended List of Annex to the Complaint on April 14, 2015.
The Center verified that the Complaint together with the amended List of Annex to 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 8, 2015.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on May 12, 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
Complainant is Blogmusik SAS, a French company that created and registered in particular the French trademark DEEZER No. 3520218 applied on August 20, 2007, the International trademark DEEZER No. 1024994 registered on October 9, 2009, the United States of America trademarks DEEZER Nos. 3803079 and 3803078 both registered on June 15, 2010 and the Community trademark DEEZER No. 008650079 registered on May 3, 2010.
Complainant uses the said trademarks for the Deezer Services corresponding to online on demand music services. Complainant is also the owner of several domain names including the term “deezer”, such as <deezer.com>, <deezer.fr>, <deezer.es>, <deezer.jp>, <deezer.at>, <deezer.de>, <deezer.dk>, <deezer.it>, <deezer.me>, <deezer.mn>, <deezer.mu>, <deezer.pl>, <deezer.com.bo>, <deezer.bo>, <deezer.sc> and <deezer.tw>. Complainant has also registered several domain names including the term “deezer” in addition to a common term, such as <deezersession.com>, <deezermedia.com> and <deezertalents.com>.
The Disputed Domain Name <deezerpro.com> was registered on October 23, 2014 with the Registrar GoDaddy.com, LLC. The Disputed Domain Name refers to a website offering various products and services, and in particular a package of the best 2014 mobile applications for Android Google Play and the Top 10 Android Games, at low prices and discounts, and offers payment through PayPal services.
On December 3, 2014, Complainant discovered the registration by Respondent of the Disputed Domain Name <deezerpro.com>. Complainant sent a cease and desist letter to Respondent on December 11, 2014, informing him that he was violating Complainant’s intellectual property rights. However, Complainant did not receive any response from Respondent.
5. Parties’ Contentions
Complainant contends that the Disputed Domain Name should be transferred to Complainant as all the three elements required in paragraph 4(a) of Policy are fulfilled.
Indeed, Complainant contends that the Disputed Domain Name is confusingly similar to Complainant’s trademark as it includes the entire term “deezer”. The mere addition of the common term “pro” or the generic Top-Level Domain (“gTLD”) “.com” does not prevent any likelihood of confusion.
Complainant also argues that Respondent lacks rights or legitimate interest in the Disputed Domain Name, and should have known that Complainant owned rights on the DEEZER trademark.
Finally, Complainant asserts that Respondent registered and is using the Disputed Domain Name in bad faith considering that Respondent could not ignore Complainant’s rights in the term “deezer”, especially after receiving the cease and desist letter from Complainant. Respondent has only registered and used the Disputed Domain Name in order to mislead the users and to benefit from the goodwill of Complainant’s trademark.
Respondent did not reply to Complainant’s contentions and is therefore in default.
6. Discussion and Findings
In order to obtain the transfer of the Disputed Domain Name, Complainant should, according to paragraph 4(a) of the Policy, prove all the following three elements:
(i) The Disputed Domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Paragraph 14 of the Rules addresses the principles to be used in case of default:
“(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.
(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Consequently, failure on the part of a respondent to file a response to the complaint permits an inference that complainant’s allegations are true. It may also permit a panel to infer that respondent does not deny the facts that complainant asserts (see Harrods Limited v. Harrod’s Closet, WIPO Case No. D2001-1027; see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).
A. Identical or Confusingly Similar
Complainant contends that the Disputed Domain Name is confusingly similar to the trademark DEEZER in which Complainant has rights pursuant to paragraph 4(a)(i) of the Policy.
It was reminded to the Panel that Complainant owned several DEEZER trademarks since 2007 and 2010, and in particular several domain names including the term “deezer”. Further, it was specified to the Panel that the domain name <deezer.com> was the main distribution channel of the Deezer Services as Complainant’s core business is to offer online music on demand through such website.
Former UDRP panel decisions have also acknowledged that Complainant has rights in the term “deezer” and agreed to transfer domain names that were including the term “deezer” (see Blogmusik SAS v. Yang Zhichao, WIPO Case No. DCO2013-0008 (<deezer.co>); see also Blogmusik SAS v. Bachta Peter, WIPO Case No. DCH2011-0038 (<deezer.ch>); and also Blogmusik SAS v. Carlos Antolinez Navarro, WIPO Case No. DCO2013-0007 (<deezer.com.co>)).
Complainant contends that the Disputed Domain Name is confusingly similar to its DEEZER trademark as it entirely incorporates the term “deezer” and the addition of the descriptive term “pro” does not prevent any likelihood of confusion.
The additional term “pro” is not prima facie distinctive as to distinguish the Disputed Domain Name from Complainant’s trademark (see Durst Phototechnik AG v. Jens Jensen, WIPO Case No. D2010-0373: “The Panel finds that the Disputed Domain Name incorporates the Complainant’s mark and that the additional words ‘pro’ and ‘usa’ are not prima facie sufficiently distinctive to distinguish the Disputed Domain Name”).
As prior UDRP panels have recognized, the incorporation of a trademark in its entirely in a domain name is sufficient to establish that a domain name is identical or confusingly similar to complainant’s registered mark for purposes of the Policy. The addition of other terms in the domain name, even derogatory ones, does not affect a finding that the domain name is identical or confusingly similar to complainant’s trademark for purposes of the Policy (see Chubb Security Australia PTY Limited v. Mr. Shahim Tahmasebi, WIPOCase No. D2007-0769; see also Société Air France v. Virtual Dates, Inc., WIPOCase No. D2005-0168; and also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
The gTLD “.com” may not be taken into account in order to evaluate the identity or similarity between the Disputed Domain Name and Complainant’s trademark. See A & F Trademark, Inc., Abercrombie & Fitch Store, Inc., Abercrombie & Fitch Trading Co., Inc. v. Party Night, Inc., WIPO Case No. D2003-0172. Indeed, the addition of the gTLD “.com” to the Disputed Domain Name typically does not avoid confusing similarity. See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; see also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Moreover, the gTLD “.com” is generally without legal significance since use of a gTLD is technically required to operate the Disputed Domain Name and it does not serve to identify the source of the goods or services provided by the registrant of the Disputed Domain Name (see Statoil ASA v. Martins Ogemdi, WIPO Case No. D2015-0001).
Therefore, and considering all the above, the Panel finds that the Disputed Domain Name <deezerpro.com> is confusingly similar to the DEEZER trademark in which Complainant has rights, and thus that paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. ¶
Even though the Respondent has defaulted, it is still Complainant’s burden to prove that Respondent lacks rights or legitimate interests in the Disputed Domain Name (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047: ruling for a defaulting respondent where complainant failed to show that respondent lacked rights or legitimate interests in the domain name at issue).
However, because the nature of a registrant’s rights or legitimate interests, if any, in the domain name lies most directly within the nature of registrant’s own knowledge, the consensus view is that this burden is a light one for Complainant. (See Education Testing Service v. TOEFL, WIPOCase No. D2000-0044; see also Grove Broadcasting Co. Ltd v. Telesystems Communications Limited, WIPO Case No. D2000-0703).
Complainant needs only to make a prima facie case on this element, at which point the burden of production shifts to Respondent to present evidence that he has some rights or legitimate interests in the Disputed Domain Name (see Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPOCase No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; and also Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252).
Complainant has made a prima facie case that Respondent lacks any right or legitimate interest in the Disputed Domain Name.
Indeed, Complainant denies having granted any authorization to Respondent to register or use the Disputed Domain Name. Respondent has never been commonly known by the terms “deezer” or “deezer pro”, unlike Complainant who has acquired renown over its DEEZER trademarks all over the world.
In particular, Complainant has demonstrated that Respondent did not use the Disputed Domain Name in connection with either a bona fide offering of goods and services or use in a legitimate noncommercial or fair manner. On the contrary, the Disputed Domain Name precisely refers to a website offering, among other things, a package of the best 2014 mobile applications for Android Google Play and the Top 10 Android Games, at low prices and discounts, and offers payment through PayPal services. Thus, Respondent has used the Disputed Domain Name with intent for commercial gain to misleadingly divert consumers or even to tarnish Complainant’s trademarks.
Therefore, circumstances show that paragraph 4(c) of the Policy defensive arguments for Respondent to demonstrate his rights or legitimate interests in the Disputed Domain Name could not have been validly raised.
Similarly, Respondent has no trademark in the “deezer” sign which has no specific signification or common meaning as to legitimate the registration and/or the use of the Disputed Domain Name by Respondent.
On the contrary, the DEEZER trademark has been recognized as highly distinctive in a former UDRP decision (See Blogmusik SAS v. Michal Jania, supra).
Complainant has succeeded in making a prima facie case of Respondent’s lack of any right or legitimate interest and Respondent has failed to come forward to rebut such allegations.
As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate.
Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name and paragraph 4(a)(ii) of the Policy is fulfilled.
C. Registered and Used in Bad Faith
Finally, Complainant contends that pursuant to paragraph 4(a)(iii) of the Policy, Respondent has registered and used the Disputed Domain Name in bad faith.
A non-exhaustive list of what factors constitute bad faith registration and use is set out in paragraph 4(b) of the Policy, including paragraph 4(b)(iv) of the Policy, which indicates that bad faith exists where Respondent, by using the Disputed Domain Name, has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location (see Ebay Inc. v. Wangming, WIPO Case No. D2006-1107).
In particular, Complainant contends that the adjunction of the term “pro” to the trademark has only been chosen by Respondent in order to lead the users to believe that the corresponding website offers specific Deezer services dedicated to professionals. Actually, the said website offers various products, contents, services, and especially applications for Android’s mobile phones, which have no connection with Complainant.
Such deception is clearly made in order to create a likelihood of confusion in the mind of the public and take advantage of the goodwill of the trademark DEEZER, and thus could be prejudicial to Complainant’s reputation (see The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571;see also NCRAS Management, LP v. Cupcake City and John Zuccarini, WIPOCase No. D2000-1803;and also Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489).
It is well-established that bad faith is easier to prove when the trademark included in the Disputed Domain Name is well-known (see AT&T Corp. v. LaPorte Holdings, Inc., WIPOCase No. D2004-1088).
Based on Complainant’s submissions, which were not rebutted by Respondent, Respondent must have known of Complainant’s well-known DEEZER trademark when he registered the Disputed Domain Name, especially since there has been recent large media coverage around the launching of the DEEZER trademark in the United States of America in September 2014 (see Pfizer Inc. v. NA, WIPO Case No. D2005-0072).
It has also been asserted in the past that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark can be itself sufficient evidence of bad faith registration and use (see Allianz, Compañia de Seguros y Reaseguros S.A. v. John Michael, WIPO Case No. D2009-0942: “the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements”).
Furthermore, Respondent continues to use the Disputed Domain Name even though he received a cease and desist letter from Complainant, whereby he has been informed of his infringement to Complainant’s rights. Considering that Respondent has no rights or legitimate interests in the Disputed Domain Name, such facts support a finding of bad faith registration and use (see AT&T Corp. v. LaPorte Holdings, Inc., supra, <mobileatt.com>):“[b]ad faith can be presumed based on the fame of Complainant’s marks, such that the Respondent was aware or should have been aware of Complainant’s well-known marks and claims of rights thereto”.).
It is alleged by Complainant that there is no explanation for Respondent to have chosen to use the unique “deezer” sign in the Disputed Domain Name other than to trade-off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response by Respondent, this claim is undisputed and asserts the bad faith in Respondent’s behavior (see Statoil ASA v. Martins Ogemdi, supra).
Therefore, the Panel finds that Complainant has succeeded in proving that Respondent has registered and is using the Disputed Domain Name in bad faith, and therefore that paragraph 4(a)(iii) of the Policy is fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <deezerpro.com> be transferred to Complainant.
Date: May 25, 2015