Spotify AB v. achal / fiber softwares
Claim Number: FA1509001637464
Complainant is Spotify AB (“Complainant”), represented by John L. Slafsky of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is achal / fiber softwares (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <spotifypremium.info>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2015; the Forum received payment on September 11, 2015.
On September 15, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <spotifypremium.info> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 September 16, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@spotifypremium.info. Also on September 16, 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 October 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant has rights in the SPOTIFY mark through numerous trademark registrations throughout the world including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,561,218, registered January 13, 2009).
Respondent’s disputed domain name is confusingly similar to the SPOTIFY mark in which Complainant has rights. Merely adding the generic term “premium” and the generic top-level domain (“gTLD”) “.info” does not differentiate the domain name from the mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been licensed or otherwise permitted to use the SPOTIFY mark in any manner, nor is there any indication that Respondent has been commonly known by the disputed domain name. Further, Respondent’s use of the disputed domain name, to prominently display Complainant’s SPOTIFY mark on a website that appears to attempt to infect users computers with malware, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
Respondent has registered and is using the disputed domain name in bad faith. Respondent attracts and confuses internet users, through the use of Complainant’s SPOTIFY mark, and exploits this confusion for commercial gain through infecting users’ computers with malware. In addition, Respondent’s bad faith is evident from the fact that Respondent had actual knowledge of Complainant’s rights in the SPOTIFY mark at the time of registration.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, in two emails to the Forum Respondent respectively responds: “ If spotify wants to own this domain, I can transfer it right away” and “[y]ou can take down this domain. I am not responsible for activities done on this domain.”
Complainant has rights in the SPOTIFY mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a website that prominently displays Complainant’s SPOTIFY mark and that appears to attempt to infect users’ computers with malware.
Through its informal email response Respondent implies that it consents to transfer the at-issue domain name.
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.”).
Preliminary Issue: Consent to Transfer
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case there is a clear indication that Respondent agrees to transfer the at-issue domain name to Complainant and therefore the Panel follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Nat. Arb. Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name to the complainant.
As more fully discussed in the cases referenced above, as a necessary prerequisite to Complainant obtaining the requested relief, even where Respondent consents to such relief, Complainant must nevertheless demonstrate that it has rights in a mark that is confusingly similar or identical to the at-issue domain name. Here, Complainant’s ownership of a USPTO trademark registration for the SPOTIFY trademark demonstrates its rights in such mark for the purposes of Policy ¶4(a)(i). Complainant’s rights exist notwithstanding that Respondent may operate outside the jurisdiction of the trademark’s registrar. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also, Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Furthermore, in forming the at-issue domain name the descriptive term “premium” is added to the text “spotify” and the top-level domain name “.info” is appended to the resulting string. Nevertheless, the differences between the at-issue domain name and Complainant’s SPOTIFY trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <spotifypremium.info> domain name is confusingly similar to Complainant’s SPOTIFY mark. See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also, Microsoft Corp. v. Zournas, FA 1093928 (Nat. Arb. Forum Dec. 10, 2007) (“the Panel finds that Respondent’s <windows.info> domain name is identical to Complainant’s WINDOWS mark as the addition of a gTLD is a necessary addition in the creation of any domain name and therefore an indistinguishing characteristic under Policy ¶ 4(a)(i).“)
In light of the foregoing, Respondent’s express consent to-forfeit the confusingly similar at-issue domain name in response to the Complaint compels the Panel to order that Respondent’s <spotifypremium.info> domain name be transferred to Complainant. The Panel finds no reason to provide further analysis under Paragraph 4(a)(ii) and/or 4(a)(iii) in its decision.
Having determined that Respondent’s domain name is confusingly similar to a mark in which Complainant has trademark rights under the ICANN Policy ¶4(a)(i), and having established that Respondent has effectively consented to the relief Complainant requests, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <spotifypremium.info> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: October 18, 2015
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