WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deezer SA v. Nico Patrick
Case No. DNL2016-0035
1. The Parties
Complainant is Deezer SA of Paris, France, internally represented.
Respondent is Nico Patrick of Paris, France, self-represented.
2. The Domain Name and Registrar
The disputed domain name <deezer.nl> (hereafter the "Domain Name") is registered with SIDN through 1st Gelox GmbH.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2016. On June 27, 2016, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On June 28, 2016, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amended Complaint on July 1, 2016. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the "Regulations").
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on July 5, 2016. In accordance with the Regulations, article 7.1, the due date for Response was July 25, 2016. Respondent sent an email communication to the Center on July 20, 2016. On the same date, Respondent confirmed that this was its complete Response.
On July 25, 2016, SIDN commenced the mediation process. On August 22, 2016, SIDN extended the mediation process until September 21, 2016. On September 23, 2016, SIDN informed parties that the dispute had not been solved in the mediation process.
The Center appointed Dinant T. L. Oosterbaan as the panelist in this matter on September 29, 2016. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
4. Factual Background
Complainant is a French company trading nationally and internationally under the name "DEEZER". Complainant offers an international online music on demand service, through free and paying services. Complainant has been operating these services since 2007 to become a leader in France and then internationally of online on demand music services. Complainant offers its services in more than 180 countries, including in the Netherlands.
Through its former subsidiary Blogmusik SAS, which company merged with and was absorbed into Complainant, Complainant has rights to a large number of French and international trademark registrations for DEEZER, including European Union trademark registrations for DEEZER No. 006891055, registration date December 16, 2009 and No. 008650079, registration date May 3, 2010. In addition, Complainant uses the domain name <deezer.com> as its main distribution channel.
The Domain Name, <deezer.nl>, was registered by Respondent on January 10, 2011. The Domain Name resolves to a website displaying pay-per-click links to various websites, including online music services of third parties.
5. Parties' Contentions
Complainant submits that the Domain Name is identical to the DEEZER trademarks as it contains the DEEZER trademarks in its entirety.
According to Complainant, in view of Complainant's trademarks, Respondent has no rights to or legitimate interests in respect of the Domain Name. Internet users are directed to a website which is a (parking) page displaying pay-per-click links to other websites, including third party websites offering online music services. Respondent uses the Domain Name without permission from Complainant for commercial gain.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith. Respondent is established in France and should have knowledge of the activities of Complainant. In addition, Respondent has offered the Domain Name for sale to Complainant.
According to Respondent, he uses the "Deezer" name for his business because of its "funny pronunciation".
Respondent submits that his website also leads to "non-online" music services and to non-music services.
Respondent also submits that Internet users are not misled, as there is no proof that Complainant is doing the same business in the Netherlands as it is doing in France.
According to Respondent, he did not try to sell the Domain Name but only made an invitation to Complainant to make an offer. Finally, Respondent submits that Complainant was a small startup in 2007 and at that time the Complainant did not have the ability to operate internationally, including in small countries like the Netherlands, and also later in 2011 when Respondent registered the Domain Name. Respondent submits that Complainant cannot "snatch a small online business which has been doing business in the Netherlands for over 5 years".
6. Discussion and Findings
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
a. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1(a) under II of the Regulations; and
b. the respondent has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to article 2.1(a) of the Regulations, Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or trade name in which Complainant has rights.
Complainant has established that it has rights to the European Union trademark DEEZER, which trademark is protected in the Netherlands. The Domain Name incorporates the entirety of the DEEZER trademark. The Top-Level Domain ".nl" may be disregarded for purposes of article 2.1(a) of the Regulations.
The Panel finds that the Domain Name is identical to Complainant's DEEZER trademark.
B. Rights or Legitimate Interests
In the Panel's opinion, Complainant has made out a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name.
Based on the record, the Panel finds that Respondent is not commonly known by the Domain Name nor has Respondent acquired trademark or other rights corresponding to the Domain Name.
It appears that by using the Domain Name, Respondent diverts Internet users to a website which is a pay‑per‑click site primarily in the English language featuring links to various (commercial) websites, including third-party websites, offering online music services.
Effectively amounting to a form of misrepresentation or impersonation, such use of the Domain Name corresponding to Complainant's trademark rights cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In the Panel's opinion, Respondent's assertion that the website to which the Domain Name resolves also leads to offline music services and non-music services is not relevant in this regard.
The Panel further notes that Respondent submits that Internet users are not misled as there is no proof that Complainant offers the same services in the Netherlands as it does in France. Likewise, in the Panel's opinion, this is not relevant. Whether in connection with online music services or otherwise, use of the Parties' respective domain names does not stop at physical borders.
Under these circumstances the Panel finds that Respondent has no rights to or legitimate interests in the Domain Name.
C. Registered or Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The "DEEZER" name was first used in commerce by Complainant in 2007, and the DEEZER European Union trademark was registered on December 16, 2009. These events thus predate Respondent's registration of the Domain Name in 2011. Considering the distinctiveness of Complainant's trademark and the fact that Respondent is located in France where the services of Complainant were first launched, the Panel finds that Respondent knew or should have known of Complainant's rights. The Panel finds Respondent's assertion that he chose the "Deezer" name for his business because of reasons unconnected to Complainant lacking in credibility.
Respondent uses the Domain Name for a website displaying pay-per-click links related to Complainant's area of activity. The Panel finds that Respondent intentionally attempts to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website, which constitutes use in bad faith pursuant to article 3.2(d) of the Regulations.
The Panel further notes that the Domain Name was effectively offered for sale in excess of the cost of registration. Following Respondent's reply ("If you like the name, feel free to let us know your offer") to Complainant's cease-and-desist message, Complainant apparently offered EUR 100 to which Respondent answered: "Absolutely NOT". The Panel finds that this exchange between parties further reinforces the conclusion of bad faith on Respondent's part.
The Panel's finding is not affected by any delay in filing the Complaint between 2011 (the registration date of the Domain Name) and 2016, as asserted by Respondent. Remedies under the Regulations are injunctive and aim to avoid ongoing or future confusion as to the source of communications, goods or services, especially as the European Union trademarks DEEZER of Complainant, which trademarks apply in the Netherlands, were already registered in 2009 and 2010, well before the registration date of the Domain Name.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <deezer.nl>, be transferred to Complainant.
Dinant T. L. Oosterbaan
Date: October 5, 2016