WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Shazam Entertainment Limited v. Whoisguard, Inc. / Tommy Isacs
Case No. D2015-2002
1. The Parties
The Complainant is Shazam Entertainment Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Bristows, United Kingdom.
The Respondent is Whoisguard, Inc. of Panama / Tommy Isacs of New York, New York, United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain name <shazam-share.com> (the “Disputed Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2015. On November 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 6, 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 November 6, 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 amendment to the Complaint on November 11, 2015.
The Center verified that the Complaint together with the amendment 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 12, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 2, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 3, 2015.
The Center appointed John Swinson as the sole panelist in this matter on December 9, 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
The Complainant is Shazam Entertainment Limited, a media and entertainment application company which was incorporated in 2000 in the United Kingdom.
The Complainant owns a number of registered trade marks for SHAZAM, the earliest of which was filed on October 5, 2006 in the United States (the “Trade Mark”).
The Complainant owns a music and media content recognition application which it operates under the Trade Mark. The Complainant states it has invested millions of dollars in building this application, and has built substantial goodwill in the Trade Mark since 2000. The software application operated under the Trade Mark is one of the most downloaded applications of all time, and has over 100 million active users each month.
The Complainant owns a domain name which incorporates the Trade Mark, being <shazam.com>. It has operated this domain name since at least as early as 2002.
The Respondent is Tommy Isacs, an individual of the United States. The Respondent did not file a Response, and consequently little information is known about the Respondent.
The Respondent registered the Disputed Domain Name on November 6, 2014.
The website at the Disputed Domain Name features links to various stories and news articles, and it appears that the Respondent receives referral fees when a user clicks on such links, using website traffic referral services such as SkyLikes.
5. Parties’ Contentions
The Complaint had little detail or supporting arguments. The Complainant makes the following contentions.
Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark. The only difference between the Disputed Domain Name and the Trade Mark is the addition of the non-distinctive word “share”. The dominant and distinctive element of the Disputed Domain Name is “shazam”. The Disputed Domain Name instantly evokes the Complainant and suggests a connection with the Complainant.
Rights or Legitimate Interests
The Respondent should be considered as having no rights or legitimate interests in respect of the Disputed Domain Name. Given the reputation of the Trade Mark, it is inconceivable that the Disputed Domain Name could have been registered without knowledge of the Trade Mark. The Disputed Domain Name could only have been selected in order to create an impression of an association with the Complainant or to misleadingly divert consumers.
The Complainant has not licensed or otherwise authorized the Respondent to use the Trade Mark or any domain name incorporating the Trade Mark.
Registration and Use in Bad Faith
The Disputed Domain Name was registered and is being used in bad faith.
The Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Trade Mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
The Complainant wrote to the Respondent on February 10, 2015 in an attempt to resolve the dispute but the Respondent did not respond.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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.
The onus of proving these elements remains on the Complainant even though Respondent has not filed a Response.
A. Procedural Issues
The Respondent’s failure to file a response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark. The Trade Mark has been wholly incorporated into the Disputed Domain Name and combined with a descriptive term (i.e., “share”). The term “share” can be easily associated with music and entertainment applications (although the Complainant does not appear to provide a traditional file sharing service). Also, it is likely that an Internet user would interpret this addition as subordinate to the Trade Mark, which is the dominant and distinctive part of the Disputed Domain Name (see, e.g., DPD Dynamic Parcel Distribution GmbH & Co.KG. v. Barath Singh, WIPO Case No. D2014-1823 and the case cited therein). These factors serve to increase the confusing similarity.
The Complainant succeeds on the first element of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. The website at the Disputed Domain Name features links to various stories and articles, using website traffic referral services such as SkyLikes, from which the Panel infers the Respondent is receiving referral revenue. In the circumstances, the Respondent’s use is not bona fide.
- The Complainant has not authorized, licensed or otherwise permitted the Respondent to use the Trade Mark or the Disputed Domain Name.
- There is no evidence that the Respondent has been commonly known by the Disputed Domain Name, or has trade marks which incorporate the Disputed Domain Name.
- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Name without intent for commercial gain. The Panel considers it likely that the Respondent is generating advertising or referral revenue from the various links posted on the website at the Disputed Domain Name.
- The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Complainant has been operating its music and media content recognition application under the Trade Mark since approximately 2000. It is not disputed that the Complainant has a built a significant reputation in the Trade Mark since that time, with over 100 million active users of its application each month.
In light of the significant undisputed reputation of the Complainant and the Trade Mark, it is likely that the Respondent had knowledge of the Trade Mark at the time he registered the Disputed Domain Name. Where the reputation of a complainant in a given mark is significant and the mark has strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel can reasonably infer that the Respondent sought to make use of the reputation of the Complainant and the Trade Mark and registered the Disputed Domain Name in bad faith.
While the links on the website are not all associated with the Complainant or its industry, they are also not associated with any other legitimate use of the term “shazam” (for example, Shazam is a comic book character, also known as Captain Marvel), nor do they give any indication as to why the Respondent selected the Disputed Domain Name (as opposed to any other domain name). The Panel considers that the Respondent is using the Disputed Domain Name to intentionally attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Mark as to the source of the website or services on his website. This is an indication of bad faith under paragraph 4(b)(iv) of the Policy.
In these circumstances, the use of a privacy service also supports a finding of bad faith (see e.g., The Uder Company Pty Ltd and Stay In Bed Milk & Bread Pty Ltd (trading as Aussie Farmers Direct) v. PrivacyProtect.org, Domain Admin, ID # 10760, WIPO Case No. D2012-0924 and cases cited therein).
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element 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 <shazam-share.com> be transferred to the Complainant.
Date: December 21, 2015