WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

CBS Lyrics, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Yongqiang Zhang

Case No. D2016-0807

1. The Parties

The Complainant is CBS Lyrics, Inc. of New York, New York, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Yongqiang Zhang, Yongqiang Zhang of Zhumadian, China.

2. The Domain Name and Registrar

The disputed domain name <metrolyricsf.xyz> (the “Disputed Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2016. On April 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 26, 2016, 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 April 26, 2016 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 April 29, 2016.

The Center verified that the Complaint and 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”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2016.

The Center appointed Isabel Davies as the sole panelist in this matter on June 3, 2016. 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 owns United States and a Canadian trademark registrations for the METROLYRICS Mark. The earliest registration exhibited dates from June 2013.

The Respondent registered the Disputed Domain Name on January 19, 2016.

5. Parties’ Contentions

A. Complainant

The Disputed Domain Name is Identical or Confusingly Similar to the Complainant’s METROLYRICS Mark

The Complainant states that MetroLyrics is an online lyrics database. It was the first lyrics website to provide users with licensed song lyrics and to compensate copyright holders for the content. Today, MetroLyrics provides users with the most comprehensive database of legal lyrics in the world, with over one million titles.

The Complainant states that MetroLyrics was launched in 2004, and has met with success in the marketplace. In 2008, MetroLyrics became one of the most trafficked lyrics website in the world, and one of the largest music Internet properties worldwide. In 2009, MetroLyrics further expanded its user base when it strategically partnered with AOL Music to provide integrated lyrics content to AOL Music users across all AOL Music properties. By that time, and according to news reports and press releases, MetroLyrics was reaching 31 million unique monthly visitors and had 100 million monthly page views. In 2011, the Complainant states that it purchased MetroLyrics and integrated it into the brands of CBS Interactive Music Group, a division of CBS Interactive Inc., to provide consumers with the opportunity to interact with content from the biggest names in the music industry.

The Complainant states that, due to MetroLyrics’ successes and immense popularity, the MetroLyrics brand is frequently referenced in the media and popular culture.

The Complainant states that it owns a United States and a Canadian trademark registration for the METROLYRICS Mark. The earliest registration exhibited dates from June 2013. The Complainant submits that these registrations serve as prima facie evidence of validity, which creates a rebuttable presumption that the METROLYRICS Mark is inherently distinctive.

The Complainant states that, as a result of its widespread use of the METROLYRICS Mark and the continuous and unsolicited media coverage MetroLyrics has received, as well as the high degree of consumer recognition of the METROLYRICS Mark and the popularity of the “www.metrolyrics.com” website, many millions of people around the world have been exposed to the METROLYRICS Mark, and the consuming public and the trade recognizes and associates the METROLYRICS Mark with the Complainant. Accordingly, the METROLYRICS Mark has acquired a high degree of public recognition and distinctiveness as a symbol of the source of high quality products and services offered by the Complainant, and embodies the valuable reputation and goodwill belonging exclusively to the Complainant.

The Complainant states that the Respondent registered the Disputed Domain Name on January 19, 2016. The Complainant states that it and its predecessors have used the METROLYRICS Mark continuously since well before January 19, 2016, the registration date for the Disputed Domain Name and that the U.S. and Canadian registrations referred to above were issued well before the Disputed Domain Name’s registration date. Thus, the Complainant states, it owns rights in the METROLYRICS Mark that predate the registration date of the Disputed Domain Name.

The Complainant submits that because the Disputed Domain Name includes the entirety of the METROLYRICS Mark, it is likely to confuse consumers as to its connection with the Complainant and it states that numerous courts and prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark.

The Complainant also submits that the fact that the Disputed Domain Name contains the additional letter “f” does not sufficiently distinguish it from Complainant’s METROLYRICS Mark. UDRP panels agree that such alterations or misspellings, also known as “typosquatting,” are insufficient to distinguish a domain name from a complainant’s mark.

The Complainant also submits that the inclusion of the generic Top-Level Domain (gTLD) “.xyz” in the Disputed Domain Name does not change the conclusion that there is confusing similarity and refers, inter alia, to Comerica Bank v. WhoisGuard Protected, WhoisGuard, Inc. / Ryan Murray, WIPO Case No. D2016-0062 (ordering transfer of <comerica.xyz> to the complainant, holding “the addition of the ‘.xyz’ gTLD does not differentiate the disputed domain name from Complainant’s COMERICA Mark”).

The Complainant submits also that, given the Respondent’s prominent use of the METROLYRICS Mark in the Disputed Domain Name, and the fact that the Respondent is scraping content from the Complainant’s “www.metrolyrics.com” website, it is clear that the Respondent is engaged in a concerted effort to divert users who are seeking to use the Complainant’s “www.metrolyrics.com” website to the Respondent’s own website. The distinctiveness of the METROLYRICS Mark, and the non-distinguishing addition of the letter “f” and the “.xyz” gTLD will cause users encountering the Disputed Domain Name to mistakenly believe that the Disputed Domain Name originates from, is associated with, or is sponsored by the Complainant.

As such, the Disputed Domain Name is confusingly similar to the METROLYICS Mark.

The Respondent Has No Rights or Legitimate Interests in the Disputed Domain Name

The Complainant states that, under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the Disputed Domain Name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the Disputed Domain Name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

The Complainant states that the Respondent cannot demonstrate or establish any rights or legitimate interests in the Disputed Domain Name because the Respondent does not use the Disputed Domain Name for bona fide offerings of goods or services or make a legitimate noncommercial or fair use of it. The Respondent has used the Disputed Domain Name, at different times, to: (a) display unauthorized content scraped from the Complainant’s website; (b) trigger pop-up advertisements or computer viruses or spam content; and/or (c) display an error message. None of these uses are bona fide, legitimate, or fair.

Further, the Complainant states, there is no relationship between it and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s METROLYRICS Mark. Nor does the Respondent’s WhoIs information or recently revealed identity demonstrate that the Respondent is commonly known by the Disputed Domain Name.

Accordingly, the Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

The Disputed Domain Name Was Registered and Is Being Used in Bad Faith

The Complainant submits that the Respondent’s registration and use of the Disputed Domain Name is a classic example of typosquatting. It is well established that typosquatting is evidence of bad faith.

Further, it contends that the Respondent registered and has used the Disputed Domain Name to prey on unsuspecting Internet users with pop-ups prompting downloads of computer viruses or spam messages and this is evidence of bad faith under the Policy.

Moreover, the Complainant submits, the Respondent undoubtedly registered the Disputed Domain Name with the METROLYRICS Mark in mind and with the intent to cause confusion. The METROLYRICS Mark is internationally recognized and is registered in the United States and Canada.

The Complainant and its predecessors-in-interest first made use of the METROLYRICS Mark in 2004, and the mark has been recognized and relied upon by online consumers throughout the world to identify and distinguish the “www.metrolyrics.com” website and the Complainant’s services from the goods and services of others for years. The Respondent did not register the Disputed Domain Name until January 19, 2016. The Respondent’s registration of the Disputed Domain Name years after Complainant and its predecessors-in-interest had first used its mark is sufficient to satisfy the bad faith requirement.

The Complainant also submits that the Respondent’s bad faith use of the Disputed Domain Name is further evidenced by the Respondent’s slavish copying of Complainant’s “www.metrolyrics.com” website, as nearly the entire content of the website associated with the Disputed Domain Name was scraped verbatim from the Complainant’s “www.metrolyrics.com” website. The website associated with the Disputed Domain Name is virtually indistinguishable from the Complainant’s website and gives the impression of the Complainant’s “www.metrolyrics.com” website. Screenshots of the website located at the Disputed Domain Name are exhibited to the Complaint.

Moreover, the Complainant submits, on information and belief, the Respondent is using the Disputed Domain Name to divert Internet traffic for the Respondent’s financial gain, based on the pop-up advertisements for related and unrelated products and services that have appeared when one visits the Disputed Domain Name. At times these contain spam or viral content. The Complainant exhibits examples of these.

The Disputed Domain Name also, at times, resolves to error messages that state “Site Not Found!” or “This site can’t be reached”. Printouts from the Disputed Domain Name showing this are exhibited. Even when such error messages are displayed, certain scraped content associated with the Disputed Domain Name is still archived on the Internet, as shown in the exhibits.

Based on the circumstances enumerated above, the Complainant submits that it is clear that the Respondent’s registration and use of the Disputed Domain Name is in bad faith and in violation of the Policy. The Respondent is a cybersquatter preventing the Complainant from commercially exploiting its mark on the Internet.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

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

(ii) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.

Identical or Confusingly Similar

The Panel accepts that MetroLyrics is an online lyrics database which was the first lyrics website to provide users with licensed song lyrics and to compensate copyright holders for the content and that, today, MetroLyrics provides users with the most comprehensive database of legal lyrics in the world, with over one million titles.

The Panel accepts that Metrolyrics was launched in 2004, and has since met with success in the marketplace and has received wide publicity.

The Panel accepts that the Complainant owns registered trademarks for METROLYRICS dating back to June 2013.

The Panel accepts that, as a result of its widespread use of the METROLYRICS Mark and the continuous media coverage received, the consuming public and the trade recognizes and associates the METROLYRICS Mark with the Complainant. Accordingly, the METROLYRICS Mark has valuable reputation and goodwill belonging exclusively to the Complainant.

The Panel accepts that the Complainant and its predecessors have used the METROLYRICS Mark continuously since well before January 19, 2016, the registration date for the Disputed Domain Name and that the U.S. and Canadian registrations referred to above were issued well before the Disputed Domain Name’s registration date. The Panel accepts that the Complainant owns rights in the METROLYRICS Mark that predate the registration date of the Disputed Domain Name.

The Panel finds that, because the Disputed Domain Name includes the entirety of the METROLYRICS Mark, it is likely to confuse consumers as to its connection with the Complainant. Courts and prior UDRP panels have recognized that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark as was stated, for example, in Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240.

The Panel accepts that the fact that the Disputed Domain Name contains the additional letter “f” does not sufficiently distinguish it from the Complainant’s METROLYRICS Mark and that UDRP panels have found that such alterations or misspellings, also known as “typosquatting,” are insufficient to distinguish a domain name from a complainant’s mark. This is noted in the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.10.

The Panel also accepts that the inclusion of “.xyz” in the Disputed Domain Name does not change the conclusion that there is confusing similarity as found in Statoil ASA v. Cameron Jackson, WIPO Case No. D2015-2226.

Given the Respondent’s prominent use of the METROLYRICS Mark in the Disputed Domain Name, and the fact that the Respondent is scraping content from the Complainant’s “www.metrolyrics.com” website, the Panel accepts that the Respondent is engaged in a concerted effort to divert users, who are seeking to use the Complainant’s “www.metrolyrics.com” website, to the Respondent’s own website. The Panel finds that the distinctiveness of the METROLYRICS Mark, and the non-distinguishing addition of the letter “f” and the “.xyz” gTLD will cause Internet users encountering the Disputed Domain Name mistakenly to believe that the Disputed Domain Name originates from, is associated with, or is sponsored by Complainant. As such, the Panel finds that the Disputed Domain Name is confusingly similar to the METROLYRICS Mark.

Rights or Legitimate Interests

The Panel accepts that the Respondent does not use the Disputed Domain Name for bona fide offerings of goods or services or make a legitimate noncommercial or fair use of the Disputed Domain Name. It accepts that the Respondent has used the Disputed Domain Name, at different times, to: (a) display unauthorized content scraped from the Complainant’s website; (b) trigger pop-up advertisements or computer viruses or spam content; and/or (c) display an error message. None of these uses are bona fide, legitimate, or fair as found, for example in Nobis Inc. v. Darren Smile, WIPO Case No. D2014-0069 and Actelion Pharmaceuticals, Ltd v. Whois Agent, Whois Privacy Protection Service, Inc / Jean-Paul Clozel, WIPO Case No. D2016-0068.

The Panel accepts that there is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s METROLYRICS Mark. Nor does the Respondent’s WHOIS information or recently revealed identity demonstrate that the Respondent is commonly known by the Disputed Domain Name.

The Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

Registered and Used in Bad Faith

The Panel accepts that the Respondent’s registration and use of the Disputed Domain Name is typosquatting which is evidence of bad faith. This was found, for example in Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.

The Panel accepts that the Respondent’s registration and use of the Disputed Domain Name to inflict pop-ups prompting downloads of computer viruses or spam messages on Internet users is evidence of bad faith.

In view of the use of the METROLYRICS Mark by the Complainant and its predecessors in title since 2004, the reputation of the Mark and the Complainant’s trademark registrations, the Panel accepts that the Respondent registered the Disputed Domain Name with the METROLYRICS Mark in mind and with the intent to cause confusion.

The Panel accepts that the Respondent’s bad faith use of the Disputed Domain Name is further evidenced by the Respondent’s slavish copying of the Complainant’s “www.metrolyrics.com” website, as nearly the entire content of the website associated with the Disputed Domain Name was scraped from the Complainant’s “www.metrolyrics.com” website. This was found in Viceroy Cayman Ltd. v. Next Reservation Ltd / Privacy Protection Service, Inc. d/b/a PrivacyProtect.org, WIPO Case No. D2014-0919.

The Panel accepts that the Respondent is using the Disputed Domain Name to divert Internet traffic for the Respondent’s financial gain, based on the pop-up advertisements that have appeared when Internet users visit the Disputed Domain Name as found in Thomson Broadcast and Media Solution Inc., Thomson v. Alvaro Collazo, WIPO Case No. D2004-0746.

The Panel therefore finds that the registration and use of the Disputed Domain Name is in bad faith.

7. Decision

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, <metrolyricsf.xyz> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: June 8, 2016