WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Azul Music Multimídia - Eireli v. Domains By Proxy, LLC / Domain Admin, Translation Failed
Case No. D2021-3011
1. The Parties
The Complainant is Azul Music Multimídia - Eireli, Brazil, represented by Pitanga Bastos Advogados, Brazil.
The Respondent is Domains By Proxy, LLC, United States of America (“United States”) / Domain Admin, Translation Failed, United States, represented by the Law Offices of Grant G. Carpenter, United States.
2. The Domain Name and Registrar
The disputed domain name <azulmusic.com> 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 September 13, 2021. On September 14, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 15, 2021, 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 September 17, 2021, 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 September 22, 2021.
The Center verified that the Complaint together with 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 September 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 13, 2021. The Response was filed with the Center on October 13, 2021.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on October 18, 2021. 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 Brazilian record label and music editor corporation established in 1993. Per the Complaint, over 20 million albums and songs produced by the Complainant are present in digital platforms, films, documentaries, soap operas, and advertising soundtracks, in Brazil and internationally.
The Complainant is the owner of a registered trademark for the terms “azul music” in Brazil, namely Brazilian Trademark Registration No. 821910272, AZUL MUSIC, word, registered on December 27, 2005, in class 9.
The Complainant further owns the domain name <azulmusic.com.br> (registered on September 22, 1998), which resolves to its corporate website that promotes the Complainant’s recorded albums and respective artists both in Portuguese and in English languages.
The disputed domain name was registered on August 12, 2017, and it is currently linked to a platform in English language of <PerfectDomain.com> that offers the disputed domain name, as well as other domain names, for sale. In this platform, the disputed domain name is offered for sale encouraging users to make an offer for it without a particular price; for other domain names, prices between USD 2,499 and USD 3,099 are indicated. In the description of the disputed domain name, a logo consisting of a two-way road within a circle is included, indicating that the disputed domain name is 4 years old, it is “a perfect fit for your business or personal project”, and various tags for the disputed domain name. According to the evidence provided by the Complainant, at the time of filing the Complaint, the disputed domain name was linked to the same platform being offered for sale for a price amounting to USD 2,599.
On August 5, 2021, the Complainant sent a cease and desist letter to the Respondent requesting the cancellation or transfer of the disputed domain name. On August 9, 2021, the Respondent’s representatives replied to the said communication indicating that the Respondent (without indicating its identity) is in the business of buying and selling descriptive and generic domain names, and refusing to meet the Complainant’s requests.
5. Parties’ Contentions
Key contentions of the Complaint may be summarized as follows:
The AZUL MUSIC mark is reputed in Brazil and worldwide. The Complainant is one of the most important phonographic producers and music editors in Brazil. Based on the extensive use of the AZUL MUSIC mark over the years (since 1993), the Complainant has developed substantial goodwill and brand recognition, being particularly relevant its use and reputation over the Internet, since digital distribution of the Complainant’s products requires its presence worldwide, being its domain name <azulmusic.com.br> a part of this process.
The disputed domain name reproduces in its entirety the mark AZUL MUSIC, being identical to this trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not commonly known by the disputed domain name, does not own any trademark application or registration for the terms “azul music”, and has not been authorized (by the Complainant) to use of the AZUL MUSIC mark. The Respondent has never used the disputed domain name in a bona fide offering of goods or services or in relation to a legitimate noncommercial or fair use.
The disputed domain name was registered and is being used in bad faith. The cease and desist warning letter sent to the Respondent was replied by its representatives without revealing the Respondent’s identity. The terms “azul music” are not descriptive or generic, although each of these terms may be generic in their respective languages, the combination of both terms in different languages (Portuguese and English) is distinctive. A simple search over the Internet for “azulmusic” show all results related to the Complainant. The passive holding of the disputed domain name, being inactive and redirected to a platform (“perfetdomain.com”) where it is offered for sale at a price of USD 2,599, indicates that the disputed domain name has been registered and is being used in bad faith in an attempt to free-ride on the Complainant’s goodwill and reputation. Other circumstance that corroborate the Respondent’s bad faith is the use of privacy services in order to conceal its identity in the registration of the disputed domain name (which was again not revealed in the response to the cease and desist letter).
The Complainant has cited various decisions under the Policy and various sections of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) that it considers supportive of its position, and requests the transfer of the disputed domain name.
Key contentions of the Response may be summarized as follows:
The Complainant has failed to provide any evidence that its trademark is well known. On the contrary, the evidence provided indicates that the Complainant is not widely known in Brazil or internationally. The Complainant’s <SoundCloud.com> page only has 350 followers, whereas other Brazilian record label (Som Livre) has around 496,000 followers. The Complainant’s page on “Dicogs.com” shows no engagement of the users, not having any review. The Complainant’s profile on “Music2Deal.com” does not seem to be actively used, not offering any music and being its sections “personal profile” and “company profile” blank. The Complainant’s profiles on CDUniverse.com and “PrestoMusic.com”, only show that the Complainant operates a record label, but do not indicate that it is widely known.
The Complainant and its trademark are not famous or widely known. The AZUL MUSIC mark is not included in a Brazilian government’s list of highly-renown marks in Brazil. The small number of followers of the Complainant’s social media pages, compared with the global Brazilian population (around 216 million people) and the followers of another Brazilian record label (Som Livre), reflects that the Complainant and its trademark is not famous. Various websites related to the music industry, which maintain a database of record labels, do not refer to the Complainant (like “LabelsBase.net”, or “TheBestOfBrazil.info”), and Wikipedia.org page for Brazilian record labels does not include the Complainant.
For the purposes of the first criterion of the Policy, the Respondent concedes that the disputed domain name is identical to the Complainant’s trademark.
The Respondent has rights and legitimate interests in the disputed domain name, because is in the business of acquiring and selling generic and descriptive domain names. The holding for resale of domain names consisting of dictionary words or common phrases, like the disputed domain name, wholly comprised of the highly generic dictionary words “azul” and “music,” the former in Spanish and Portuguese, and the latter in English, constitutes a bona fide use inferring a legitimate interest. The Respondent owns thousands of common generic and descriptive dictionary word or phrase domain names in a variety of languages and is in the business of buying and selling such names. The Respondent obtained and used the disputed domain name to profit from the generic and descriptive value of the terms “azul music”, without knowledge of or intention to take advantage of the Complainant’s rights. The Respondent is a resident of the United States, where the Complainant’s brand is not known, and had no knowledge of Complainant’s rights prior to the cease and desist letter and the filing of the Complaint.
The Complainant’s brand is composed of two generic dictionary words used in a descriptive manner, which are used by many other individuals and companies, some of whom are more widely known than the Complainant. For example, Soul Azul Music LLC (a music production service in New York City, United States), Azul Music LLC (a music store located in Aromas, California, United States, which goes by the name “Azul Music Shop”), and a number of musicians, including Zohar Cohen (of Tel Aviv, Israel) who apparently goes by “Azul”, Azul Zapata (an Argentinian-American musician), and Azul Barrientos (a Mexican-American musician). The fact that the terms “azul” and “music” are in different languages does not affect the generic nature of the disputed domain name, as: (a) many millions of multilingual people speak Spanish or Portuguese and English; (b) many millions of English speakers who may not speak Spanish or Portuguese still know that “azul” means “blue;” and (c) many millions of Spanish and Portuguese speakers who do not speak English still know what “Music” means in English. Further, although not particularly common, “Azul” is a name that is reasonably common in the United States and Argentina.
The Complainant has failed to show bad faith registration or use of the disputed domain name. The Complainant’s trademark is not well known in Brazil or internationally. The Respondent’s offering for sale of the disputed domain name (that consists of generic terms) is no evidence of bad faith, given the large number of possible uses and the high demand for domain names consisting of generic dictionary terms. The fact that the Respondent did not transfer the disputed domain name to the Complainant as a result of its cease and desist letter, only evidences that the Respondent was aware of its legal rights. Equally, the Respondent’s attorney is under no obligation to answer any questions regarding the identity of its client, and the Respondent was not even aware that the Complainant asked about its identity. The use of a privacy service is no evidence of bad faith, as nowadays is a common practice for all major registrars to offer a free privacy service (oftentimes automatically included) for their registrants, and a search over the Internet would not have revealed the Complainant’s rights. A search for the terms “azul music” (separated with a space) includes only three out of ten results on the first page referring to the Complainant, and none of the four featured videos that show up at the top of the results’ page have any connection to the Complainant. The search provided by the Complainant for these terms joint together (“azulmusic”) show results referring to other companies (Soul Azul Music), and videos that do not refer to the Complainant (for the song Azul by J. Balvin). In the Respondent’s business, reviewing the WIPO Brand Database and databases provided by companies like Trademarkia.com is considered reasonable due diligence to confirm that a domain name does not match any international trademark registration, and when registering the disputed domain name, the Respondent confirmed that there were no trademarks in either of those databases for “azul music.” (The Panel notes that a search contemporaneous with this Decision shows this to be the case.)
The Panel should declare that the Complaint was filed in bad faith in an attempt of Reverse Domain Name Hijacking (“RDNH”). No reasonable person could believe that the Complainant was not aware that the phrase “azul music” has various meanings beyond the Complainant’s trademark. A reasonable investigation would have revealed the weaknesses of the Complaint under the Policy. A simple Google search of “azul music” would have made it clear that these terms have numerous meanings and are being actively used by various individuals and organizations. Accordingly, the Complainant clearly ought to have known it could not succeed prior to the filing of the Complaint, unreasonably ignored established Policy precedent related to the registration and use of generic and descriptive domain names, and provided evidence that contradicts its allegations as well as intentionally incomplete evidence attempting to mislead the Panel.
The Respondent has cited various decisions under the Policy and various sections of the WIPO Overview 3.0 that it considers supportive of its position, and requests the Panel to deny relief to the Complainant.
6. Discussion and Findings
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the case examining the three elements in paragraph 4(a) of the Policy,1 taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
A. Identical or Confusingly Similar
The Complainant has rights in the AZUL MUSIC mark by virtue of its trademark registration in Brazil, and this trademark is incorporated in its entirety in the disputed domain name.
Accordingly, the Panel finds (in accordance to both Parties) that the disputed domain name is identical to the Complainant’s trademark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that demonstrating 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 primarily if not exclusively within the respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests.
The Respondent has alleged being in the business of acquiring and selling generic and descriptive domain names consisting of dictionary words or common phrases in a variety of languages, owning thousands of common generic and descriptive dictionary word or phrase domain names. The Respondent has further alleged having acquired the disputed domain name as part of its business, in consideration of a claimed generic or descriptive value of the terms “azul music”, without any knowledge of or intention to take advantage of the Complainant’s trademark.
The Panel, under its general powers articulated, inter alia, in paragraph 10 of the Rules, has consulted the website where the disputed domain name is offered for sale, corroborating that the disputed domain name is offered for sale together with other domain names in the same platform, under the section “Similar Domains for Sale”. This section includes various rotating domain names that apparently consist of words or combinations of words included in the dictionary that do not seem to correspond to any particular trademark belonging to a third party (like <fairmint.com>, <yoyowo.com>, <startpiano.com>, <infoswing.com>, <firestops.com>, <palmtrust.com>, <kokobobo.com>, <innovationpool.com>, etc.). However, the Panel has corroborated through searches over the Internet for these domain names that most of them may refer to third parties individual’s or company’s names and/or third parties trademarks. For example, there is an author called Ani Kokobobo, with various books available in Amazon.com, a company providing investment holdings under the name “Palm Trust”, as well as various companies under the trade name “Innovation Pool” in various locations, a company in the United States that operates under the mark FAIRMINT providing financial services, and a trademark for children clothing and accessories (selling in various countries), which varies only in one letter to one of the domain names included in the Respondent’s platform, namely the trademark YOYOSO.
The Panel further notes that the Respondent appears to mix up the concepts of a term being “generic” or “descriptive” and a term “being included in the dictionary”. The Respondent alleges that being the words “azul” and “music” included in the dictionary and having each of them an understandable meaning (either by the Spanish/Portuguese and/or English speaking population), these words (individually but especially as combined), should be considered generic being possible to register any domain name including these words (that is to say not being possible to claim any exclusive rights over them). This is a common oversight addressed by section 2.10 of the WIPO Overview 3.0, which the Panel finds important to partially reproduce: “The fact that a particular term has a dictionary meaning is sometimes confused with the notion of a “generic” term. When used in a non-dictionary distinctive sense (i.e., in a manner that bears no relation to the goods or services being sold), such dictionary terms can function as “arbitrary” trademarks […].” Classic examples of such “dictionary” (sometimes misunderstood, as here, as “generic”) terms being in fact strong (in these cases, famous) trademarks are ORANGE for telecoms and APPLE for computers.
The Panel considers that the combination of words “azul music”, and particularly the word “azul”, bears no direct relation or resemblance to the services provided by the Complainant, being a perfect and valid identifier of their origin, fulfilling all trademark’s functions, i.e., it is not “generic” or inherently descriptive of the Complainant’s services. The fact that exists, in the same industry, a few other companies or individuals providing related services, for example, a music store or various singers, including in their names or in their brands that term “azul”, may point to the term being mildly suggestive but does not affect, in the Panel’s view, the distinctive character of this term vis-a-vis the Complainant (who it is noted has registered marks for many years now). In this respect, the Panel consider that the Respondent’s business may be legitimate and the Respondent may have legitimate interests in the disputed domain name as well as in respect to any other domain names included in its platform, in case the Respondent acted in good faith, not targeting any particular trademark. This is a matter to be analyzed more properly under the third element of the Policy.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain names have been registered and are being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel wishes to clarify that, whilst previous decisions under the Policy do not have the status of precedent, similar cases are generally decided similarly, and it is commonly accepted that, absent factors to the contrary in a particular dispute, trading in domain names is a legitimate activity that has grown into a substantial market over the years.
The Complainant alleges that its trademark AZUL MUSIC is well known in Brazil and internationally, providing in support of this allegation some evidences related to its presence in various music digital platforms. The Panel considers that the evidences provided by the Complainant may show its presence over the said music platforms and the use of its trademark over the Internet, however, are insufficient to consider that the Complainant’s trademark is well known in Brazil and internationally. The further notes in this regard the Respondent’s allegations that the presence of the Complainant and its trademark AZUL MUSIC over the main social media platforms does not show a number of followers that may lead to consider them particularly popular or well known. At the time of this decision, the Panel has corroborated that the Complainant’s Facebook page has about 2,500 followers, its Twitter page has less than 400 followers, and its Instagram page has less than 800 followers
The Panel further notes that the evidence provided by the Complainant is insufficient to assess whether the mark AZUL MISIC was notorious at the time of the registration of the disputed domain name (in 2017) in Brazil or in any other jurisdiction, not being referred to that time any evidence provided.
The Panel, under its general powers articulated, inter alia, in paragraph 10 of the Rules, has conducted various searches over the Internet for the mark AZUL MUSIC finding some results and some presence over the Internet related to this trademark. However, these current results do not allow the Panel to evaluate the actual presence over the Internet of the Complainant’s trademark at the time the disputed domain was registered, and are not sufficient to consider that the mark then or has nowadays a particularly notable presence over the Internet.
Additionally, the Panel notes that, according to the evidence provided by the Complainant, at the time of filing the Complaint, the disputed domain name was offered for sale among other domain names and for a similar price to other domain names in the same platform. The disputed domain name was offered for sale for USD 2,599, and other domain names included in the same platform are offered for sale for prices between USD 2,499 and USD 3,099.
The Panel further notes that there is no evidence in the file which suggests the Respondent would have had any particular knowledge of or any contact or connection to the Complainant. Furthermore, no evidence in the file suggests that the AZUL MUSIC mark was well known or had diffusion generally or in the United States at the time of the registration of the disputed domain name, or any other circumstance that may lead to consider that the Respondent acted in bad faith. In this regard, the Panel finds that nothing in this case suggests that the Respondent knew or should have known about the Complainant and its trademark and that the Respondent may had the intention to target the Complainant when it registered the disputed domain name. The Panel does note that while the Respondent asserts to have searched on various online trademark databases and not found the Complainant (which is still the case), it stops short of specifically disclaiming knowledge of the Complainant and points to the fact that the Complainant bears the burden of showing bad faith; that burden has not been met here.
Accordingly, the Panel concludes that Complainant has not met its burden under the third element.
The Panel wishes to clarify that this decision is limited to the scope of the Policy, relating only to cases of "cybersquatting", where both the registration and use of the domain name in disputed is carried out in bad faith (with the knowledge and intention of taking advantage of or damaging the trademark of a third party). Therefore, this decision should not be understood as an approval of the Respondent conduct, not preventing the Complainant, in its discretion should it consider that appropriate, from going to a court of competent jurisdiction.
D. Reverse Domain Name Hijacking (“RDNH”)
While the Complaint is this case is denied, the Panel does note that the Complainant has been in business since 1993 and moreover that the Internet renders the reach of businesses potentially global. At the same time, the Complainant has not shown why the Respondent should be charged with knowledge of the former. While this is fatal to its burden under the Policy, there is nothing in the file to indicate that the case was brought with bad faith intent (rather insufficient facts or at least arguments and supporting evidence to support its claim).
For the foregoing reasons, the Complaint is denied.
Reyes Campello Estebaranz
Date: November 1, 2021
1 Paragraph 4(a) of the Policy lists the three elements, which a complainant must satisfy in order to divest a respondent of a domain name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith.