Pandora Media, Inc. v. MASATAMI KITA
Claim Number: FA1506001622614
Complainant is Pandora Media, Inc. (“Complainant”), represented by Gina L. Durham of DLA Piper LLP (US), California, USA. Respondent is MASATAMI KITA (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pandora1.com> ('the Domain Name'), registered with eNom, Inc..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2015; the Forum received payment on June 3, 2015.
On June 4, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <pandora1.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 June 8, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2015 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@pandora1.com. Also on June 8, 2015, 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.
On July 7, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
On July 8, 2015 the Panel issues an additional submissions order asking the Complainant to provide dated evidence proving when the name of its Pandora One service was made public and when it was launched.
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's submissions can be summarised as follows:
Complainant owns numerous trade marks for its PANDORA word mark used in relation to broadcasting services including in the United States with first use claimed as July 16, 2005. It also owns common law trade marks including PANDORA ONE which it uses in relation to broadcasting services.
Respondent does not appear to use the Domain Name to sell products and/or offer services. When visiting the site at the Domain Name it reads ' This site has been hacked by Iraqi diver www.iraq-diver.net’. This message appears to have been displayed since 2010.
The addition of the .com suffix in no way distinguishes it from either the Complainant's PANDORA registered mark or its common law mark PANDORA ONE.
The addition of 1 to the Domain Name does not distinguish the same from the PANDORA marks. '1' indicates many things including an identification as the leading Internet radio service. Moreover, Complainant’s subscription service is offered under the PANDORA ONE mark which is phonetically and cognitively equivalent to the Domain Name. The Domain Name is likely to lead to the diversion of customers as they may come across it when searching for PANDORA ONE or they may mistakenly type it into the browser. Customers may mistakenly believe that the Complainant hosts its subscription service on the Domain Name and this would be detrimental to Complainant’s business by virtue of decreased customer trust and/or subscription revenue should consumers mistakenly believe that the Complainant have been subject to a hack by the Iraqi Diver.
The Respondent has not been commonly known or associated with the PANDORA marks, the Complainant has never authorised Respondent's use of the PANDORA Marks. There is no legitimate non-commercial or fair use of the Domain Name given its intentional display of a worrisome message or indifference to such an egregious security threat. Respondent has made no bona fide use of the Domain Name and there is a strong inference due to Respondent’s lack of control over and/or intentional display of a worrisome message that Domain Name is being used to misdirect customers and tarnish trust in the Complainant. As such Respondent has no rights or legitimate interest in the Domain Name.
The Domain Name misdirects customers who are attempting to locate the web site for PANDORA broadcasting services and the aforementioned displayed message thereon jeopardises the trust that consumers place in the Complainant. both of which undoubtedly serve to disrupt the business of a competitor.
The Domain Name was registered in April 2007 well after Complainant announced the launch of its Internet broadcasting services under the PANDORA mark and after it filed its first trade marks. The Respondent registered the Domain Name to sell it for profit to the Complainant as owner of the PANDORA trade mark. If there was a legitimate purpose other than to extract money from the Complainant the Respondent would have used the mark, but it has always remained inactive.
B. Respondent
Respondent failed to submit a Response in this proceeding.
C. Additional Submissions
On July 13, 2015 Complainant provided evidence that its PANDORA ONE subscriptions service was made public on May 19, 2009 and launched on May 20, 2009.
It also explained that it began using its PANDORA mark in commerce on July 16, 2005 and obtained registrations for it in fall 2006 and also that the Complainant was publicly touted as a leading broadcaster via news articles dated 2006 through 2007 before the creation date of the Domain Name. Further, Complainant’s first use of PANDORA ONE predates the use of the message displayed at the web site associated with the domain name which seems to have appeared around July 2010. Further changes in the server and IP Address suggest the Domain Name was sold or transferred to respondent on or around March 3, 2010 which is after use of both the PANDORA and PANDORA ONE marks.
Complainant owns numerous trade marks for its PANDORA word mark used in relation to broadcasting services including in the United States with first use claimed as July 16, 2005. It also owns common law rights in the name of its subscription service PANDORA ONE used since 2009.
The Domain Name was registered April 2007 and acquired by the current Respondent in March 2010. Respondent does not appear to use the Domain Name to sell products and/or offer services. When visiting the site at the Domain Name it reads ' This site has been hacked by Iraqi diver www.iraq-diver.net' and this appears to have been displayed since 2010.
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar
The Domain Name is confusingly similar to the Complainant's registered PANDORA trade mark because it incorporates that mark with only the generic and laudatory numeral '1' added and the gTLD .com.
See Warner Bros Entm't Inc. v Sadler FA 250236 (Nat. Arb. Forum May 19, 2004) (finding that addition of generic terms to Complainant's mark failed to alleviate the confusing similarity between the mark and the domain names).
The gTLD .com does not serve to distinguish the Domain Name from the PANDORA mark, which is the distinctive component of the Domain Name. See Red Hat Inc. v Haecke FA 726010 (Nat Arb Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
It is also confusingly similar to the Complainant’s common law mark PANDORA ONE for the purposes of the Policy, especially in aural use due to the similarity between the word ONE and the numeral 1 in meaning and sound.
Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with the Complainant’s PANDORA and PANDORA ONE marks in which it has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Respondent has not responded and given any reasons for its registration and use of the Domain Name. Respondent does not appear to be commonly known by the Domain Name. Complainant has not authorised the use of its mark and the Respondent does not appear to be connected with the Complainant in any way.
The Domain Name has been used to point to a website bearing the passive message 'This site has been hacked by Iraqi diver www.iraq-diver.net' which appears to have been displayed since 2010 following acquisition of the Domain Name by the Respondent and after Complainant obtained its registered marks and began using its PANDORA ONE name for its subscription service. Accordingly, no active use has been made of the Domain Name. Past panels have found that a failure to use a disputed domain name is sufficient to show a failure to provide a bona fide offering of goods and services or a legitimate non-commercial or fair use (See VICORP Rests., Inc. v Paradigm Techs Inc. FA 702527 (Nat. Arb. Forum June 21, 2006)
.
The Respondent has had a chance to explain the situation, but has chosen not to do so. The Panel thus concludes that there are no rights or legitimate interests in the Domain Name under para 4 (c) (i) or (iii) of the Policy.
Registration and Use in Bad Faith
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pandora1.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: <<July 20, 2015>>
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