WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deezer SA v. Zhuhai Yingxun Keji Limited / Personal Contactor: Rayan Dacot
Case No. D2019-2728
1. The Parties
The Complainant is Deezer SA, France, represented internally.
The Respondent is Zhuhai Yingxun Keji Limited, China / Personal Contactor Rayan Dacot, France.
2. The Domain Name and Registrar
The disputed domain name <deezer-france.com> is registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2019. On November 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 12, 2019, 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 20, 2019 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 22, 2019.
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 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2019.
The Center appointed Fabrice Bircker as the sole panelist in this matter on January 6, 2020. 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 a French company which operates, under the name DEEZER, music and show streaming services in more than 180 countries.
The website offering these services is available through the domain name <deezer.com>.
The Complainant invokes rights on the International trademark registration No. 1024994 for DEEZER (semi-figurative) which has been registered on October 9, 2009 in Classes 35, 38 and 41, and which covers among others Australia, Iceland, Japan, Norway, Republic of Korea, China and Russian Federation.
The disputed domain name <deezer-france.com> was registered on June 14, 2019.
It redirects toward a website named “Deezer France” which reproduces elements of the Complainant’s website and which offers to the Complainant’s clients the possibility to obtain a “premium account” for free by merely providing their email addresses.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant contends that the disputed domain name <deezer-france.com> consists of the juxtaposition of the word “Deezer”, which is identical to its DEEZER trademark and to its <deezer.com> domain name, with the word “France” which corresponds to the country where it has been created and where it mainly operates its business.
Rights or Legitimate Interests
The Complainant asserts that to its knowledge the Respondent does not hold a trademark on the name Deezer, and has never operated a business under this name.
The Complainant also contends that it has never licensed its trademark to the Respondent.
Registered and Used in Bad Faith
The Complainant contends that by using the disputed domain name, the Respondent intentionally attempts to attract Internet users to its website by creating a likelihood of confusion with the DEEZER trademark.
The Complainant adds that the purpose of the Respondent’s website is to steal its customers’ credentials (login / password) by reproducing the homepage of its website.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements:
(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 disputed domain name has been registered and is being used in bad faith.
Besides, paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) of the Rules provides that “[i]f 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”.
At last, Respondent’s failure to reply to Complainant’s contentions does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules, see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the foregoing provisions into consideration the Panel finds as follows:
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark.
The Complainant invokes rights on the semi-figurative DEEZER International trademark registration No. 1024994 which has been registered on October 9, 2009 in Classes 35, 38 and 41.
To evidence its rights, the Complainant produces a copy of the registration certificate of the invoked trademark.
In this respect, the Panel notably notes that the name and the address of the owner mentioned on this document do not correspond at all to those of the Complainant.
However, it is well established that the general powers of a panel as articulated inter alia in paragraphs 10 and 12 of the Rules include, among others, the possibility to undertake limited factual researches into matters of public record if the panel considers such information useful to assessing the case merits and reaching a decision. These limited factual researches notably include accessing trademark registration databases (see for instance, WIPO Overview 3.0, section 4.8).
Therefore, the Panel has performed a search in the “Madrid Monitor” database (which is the official and publicly available database related to international trademarks registrations) to see the exact status of the International registration No. 1024994.
It results from this search that the Complainant actually appears on the registry of the International trademarks as the holder of the invoked trademark, which has recently been renewed and which has been accepted to protection in many territories.
In these circumstances, the Panel can conclude that the Complainant has trademark rights on DEEZER.
Besides, there is no difficulty in considering that the disputed domain name <deezer-france.com> is confusingly similar to the DEEZER trademark.
Indeed, the disputed domain name reproduces the Complainant’s trademark and it is of constant practice among the UDRP panels that:
- generic Top-Level Domains (“gTLDs”) may be ignored for the purpose of assessing the confusing similarity, because they only play a technical function;
- the mere addition of a geographical term does not prevent a finding of confusing similarity under the first element when the Complainant’s trademark remains clearly recognizable, what is the case in the present procedure.
Consequently, the Panel concludes that the requirements of paragraph 4(a)(i) of the Policy are satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to or legitimate interests in the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent], [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.
In the present procedure, the Complainant contends that it has never given its trademark in license to the Respondent.
Besides, there is nothing in the record of the case likely to indicate that the Respondent may be commonly known by the disputed domain name.
Furthermore, the disputed domain name is used to impersonate the Complainant and to collect its clients’ personal data (cf. discussions in paragraph C. below). Obviously such a use is neither a bona fide offering of goods or services, nor a legitimate noncommercial use or fair use.
In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The burden now shifts to the Respondent to show that it does have some rights or legitimate interests.
The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation that demonstrates any rights or legitimate interests in the disputed domain name.
As a consequence, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name, that is to say that the second element in paragraph 4(a) of the Policy is established.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the disputed domain name in bad faith.
In the present case, the Complainant merely states: “By using the domain name <deezer-france.com>, the Respondent intentionally attempts to attract Internet users to the Respondent’s web site by creating a likelihood of confusion with Deezer’s trademark and service. The purpose of the Respondent’s website is to steal customers’ credentials (login / password) by reproducing the Deezer homepage”.
These statements are wholly unsupported by any piece of evidence (even not a single screenshot is produced by the Complainant).
However, in the present case the Complainant’s statements are not rebutted by the Respondent.
In addition, as indicated in paragraph A. supra, the general powers of a panel include, among others, the possibility to undertake limited factual researches into matters of public record if such information is useful to assessing the case merits and reaching a decision. In this respect, it is well established that UDRP panels can notably visit the parties’ websites (see for instance, WIPO Overview 3.0, section 4.8).
Furthermore, UDRP panels have also been prepared to draw certain inferences in light of the particular facts and circumstances of the case e.g., where a particular conclusion is prima facie obvious (WIPO Overview 3.0, section 4.2).
Therefore, the Panel has visited the Complainant’s website and the website linked to the disputed domain name.
It appeared obvious that the website to which the disputed domain name redirects reproduces not only the Complainant’s trademark (even with its figurative element) but also many elements of the Complainant’s website, and proposes to the Complainant’s clients to upgrade their account for free by merely communicating their email addresses.
As a consequence, the Panel is ready to consider that it results from:
- these conditions of use of the disputed domain name (which redirects toward a website impersonating the Complainant);
- the fact that the Complainant’s trademark consists in a fanciful word whose reproduction in a domain name cannot reasonably be due to a mere coincidence;
- the fact that the Respondent is domiciled in the country where the Complainant mainly operates its business;
- the composition of the disputed domain name (in that it combines the Complainant’s trademark with the name of the main country where it is mainly active);
- the Respondent’s silence in this procedure;
- that the disputed domain name has more than likely been registered by the Respondent in bad faith, that is to say with the Complainant’s trademark in mind.
Besides, as the disputed domain name is used in an unauthorized way to collect personal data belonging to the Complainant’s clients by impersonating the latter, the Panel can also consider that it is used in bad faith.
In sum, this case clearly falls within the scope of Paragraph 4(b)(iv) of the Policy, namely: by using the disputed domain name, [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 complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] website or location or of a product or service on [the Respondent’s] website or location.
As a consequence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are satisfied.
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 <deezer-france.com> be transferred to the Complainant.
Date: January 16, 2020