Spotify AB v. Joseph Rexford
Claim Number: FA2207002003015
Complainant is Spotify AB (“Complainant”), represented by Jacob P. Dini of Perkins Coie LLP, California, USA. Respondent is Joseph Rexford (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spotifygeek.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 5, 2022; the Forum received payment on July 5, 2022.
On July 6, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <spotifygeek.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 11, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 1, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@spotifygeek.com. Also on July 11, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send emails to the Forum, see below.
On August 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it operates a leading global streaming subscription service that provides users access to content from both artists and podcasters. Complainant allows its users to listen to, or watch, the content they love via computers, mobile devices, or other hardware. Complaint has used the SPOTIFY mark since at least as early as 2006, including by registering the <spotify.com> domain name on April 23, 2006, and operating a website about its business at that domain. Complainant fully launched its services in 2008, and within the first two years Complainant had ten million active users. Complainant’s platform now includes more than four billion playlists, 60 million tracks, and 1.5 million podcasts, all available to users in approximately 92 countries. Complainant’s community now has approximately 299 million monthly active users. Complainant claims rights in the SPOTIFY mark through its registration with multiple trademark agencies, including in the United States on July 2, 2019. The mark is well known.
Complainant alleges that the disputed domain name is identical or confusingly similar to its SPOTIFY mark as it incorporates the mark in its entirety and merely adds the generic term “geek” as well as the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its SPOTIFY mark in any way. Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor for a legitimate non-commercial or fair use. Instead, the resolving website displays Complainant’s mark and distinctive logo and advertises and offers for download an unauthorized modified version of Complainant’s application that infringes its copyrights in its application software. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the confusingly similar nature of the disputed domain name to create a false impression of affiliation with Complainant and to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark. Further, Respondent uses a privacy service to conceal its identity in the disputed domain name’s WHOIS information. Additionally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SPOTIFY mark. Finally, Respondent failed to respond to Complainant’s cease-and-desist letter. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its emails to the Forum, Respondent states: “hello please don't take my domain”; and “Hello Sir, I'm ready to cooperate please don't dispute my domain name. :(“.
Complainant owns the mark SPOTIFY and uses it to provide a subscription streaming service. The mark is well known.
Complainant’s rights in its mark date back to at least July 2, 2019.
The disputed domain name was on August 12, 2019.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The resolving website displays Complainant’s mark and distinctive logo and advertises and offers for download an unauthorized modified version of Complainant’s application that infringes its copyrights in its application software.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The disputed domain name incorporates Complainant’s SPOTIFY mark in its entirety, merely adding the generic/descriptive term “geek” and the “.com” gTLD. Under Policy ¶ 4(a)(i), incorporating a mark in its entirety and adding a generic/descriptive term and a gTLD does not sufficiently distinguish a domain name from a protected mark. See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its SPOTIFY mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Here, the WHOIS information for the disputed domain shows that the registrant is “Joseph Rexford”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The resolving website displays Complainant’s mark and distinctive logo and advertises and offers for download an unauthorized modified version of Complainant’s application that infringes its copyrights in its application software. Use of domain name to enable unauthorized use of a complainant’s copyrighted work for commercial gain does not qualify as either a bona fide offer, nor is it a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Licensing IP Int’l S.a.r.l. v. CM Techs., LLC, FA 1969296 (Forum Nov. 22, 2021) (holding that resolution of disputed domain to a “website that purports to allow visitors to download videos” in such a manner to “facilitate copyright infringement” is “not a bona fide offering of goods or services or legitimate non-commercial or fair use per Policy ¶¶ 4(c)(i) and (iii)”); see also Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (holding that use of website at disputed domain to “distribute unauthorised application programming interface (API) code, data and information for which Complainant is the copyright owner and which Complainant has not intended or authorised for distribution” was not a bona fide offering of goods and services). Therefore the Panel finds that the Respondent fails to use the disputed domain name to make a bona fide offering of goods or services, or a legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent uses the disputed domain name with intent to divert and attract Internet users for commercial gain. A respondent’s use of a domain name that is obviously connected to a complainant’s widely used mark indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Fossil, Inc. v. www.fossil-watch.org c/o Hostmaster, Case No. FA 335513 (Forum Nov. 9, 2004) (finding bad faith where respondent attempted to profit from the fame of complainant’s trademark by attracting internet traffic to his website); see also Twitter v. Domain Admin, Case No. FA1503001607451 (Forum Apr. 2, 2015) (bad faith shown by registrant’s scheme to divert web traffic from mark owner to respondent’s own website “to exploit visitors either by passing off goods, or infecting the visitor’s computer with malware or otherwise”); see also Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (holding that using complainant’s intellectual property to attract internet users to website to provide unauthorized access to complainant’s “copyrighted material and data” was bad faith under Policy ¶ 4(b)(iii) and (iv)). Thus the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Further, Respondent registered the disputed domain name with actual knowledge of Complainant’s mark: the resolving website displays Complainant’s mark and distinctive logo. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spotifygeek.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 9, 2022
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