Saavn, LLC v. David Dhawan
Claim Number: FA1309001518621
Complainant is Saavn, LLC (“Complainant”), represented by David P. Sharrow of Gunderson Dettmer Stough Villeneuve Franklin & Hachigian, LLP, New York, USA. Respondent is David Dhawan (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <saavn.us>, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2013; the National Arbitration Forum received hard copy of the Complaint on September 20, 2013.
On September 10, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <saavn.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On September 23, 2013, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 15, 2013 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn 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 "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 Policy, the 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’s Contentions
1. Policy ¶ 4(a)(i)
a. Complainant, Saavn, LLC, offers one of the most popular Internet-based streaming services for South Asian music in the world, with rights to over two million songs in 77 languages and a vast consumer base.
b. Complainant is the owner of the SAAVN trademark through registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,671,305 registered Aug. 25, 2009).
c. The disputed <saavn.us> domain name is identical to Complainant’s SAAVN trademark, because the domain name fully incorporates Complainant’s mark and merely adds the country-code top-level domain name (“ccTLD”) “.us.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known by its <saavn.us> domain name, because the WHOIS information identifies “David Dhawan” as the registrant of the disputed domain name, which does not resemble the disputed domain name.
b. Respondent previously used the disputed domain name to pass itself off as Complainant, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
c. The disputed <saavn.us> domain name currently resolves to a website that is a direct competitor of Complainant in the online streaming of South Asian music. This competing use is also not protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use.
3. Policy ¶ 4(a)(iii)
a. By fully incorporating Complainant’s SAAVN mark, the disputed domain name targets potential customers of Complainant. The disputed domain name directs these potential customers to a website that offers free, illegal downloads of South Asian music that directly competes with the music streaming services provided by Complainant under the SAAVN mark. Accordingly, Respondent’s registration and use of the <saavn.us> domain name disrupts Complainant’s business and constitutes bad faith pursuant to Policy ¶ 4(b)(iii).
b. The disputed domain name incorporates Complainant’s SAAVN mark to intentionally attract Internet users seeking Complainant’s music streaming services by creating a likelihood of confusion. Thus, Respondent has demonstrated bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
4. Respondent registered the disputed domain name on February 18, 2013.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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.”).
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant states that it provides one of the most popular Internet-based streaming services for South Asian music in the world, with rights to over two million songs in 77 languages and a vast consumer base. Complainant further states that it is the owner of the SAAVN trademark through registration of the mark with the USPTO (Reg. No. 3,671,305 registered Aug. 25, 2009). Complainant’s registration of a mark with the USPTO establishes its rights in the mark under Policy ¶ 4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under UDRP ¶ 4(a)(i)).
Complainant alleges that the <saavn.us> domain name is identical to Complainant’s SAAVN trademark, because the domain name fully incorporates Complainant’s mark and merely adds the ccTLD “.us.” The Panel notes that in Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002), a previous panel held that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name. In the instant proceeding, the Panel similarly reasons that the disputed domain name’s addition of the ccTLD “.us” is insufficient to distinguish the domain name from Complainant’s SAAVN mark. Accordingly, the Panel holds that the <saavn.us> domain name is identical to Complainant’s SAAVN mark pursuant to Policy ¶ 4(a)(i).
The Panel observes that although Complainant makes no contentions in regards to Policy ¶ 4(c)(i), there is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <saavn.us> domain name. Further, Complainant’s evidence that Respondent is using the mark to sell unauthorized competing downloads of South Asian music suggests that Respondent has no rights to this term.
Complainant alleges that Respondent is not commonly known by its <saavn.us> domain name under Policy ¶ 4(c)(iii), because the WHOIS information identifies “David Dhawan” as the registrant of the disputed domain name, which does not resemble the disputed domain name. Previous panels have held that a respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, to suggest that the respondent is known by the domain name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Therefore, the Panel holds that Respondent is not commonly known as <saavn.us> under Policy ¶ 4(c)(iii).
Complainant next alleges that Respondent previously used the disputed domain name to pass itself off as Complainant, which is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). A screenshot of the website resolving from the disputed domain name allegedly taken on July 19, 2013 prominently displays the SAAVN trademark and other content related to the streaming of South Asian music provided by Complainant under its SAAVN mark, including a section entitled “upcoming songs” and various images related to the South Asian music market. The Panel notes that in Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003), the panel held that the respondent’s use of the disputed domain name was not protected where the respondent used the domain name to pass itself off as the complainant online, which included unauthorized use of the complainant’s mark. The Panel holds that this behavior is not protected as a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv).
Complainant also alleges that the disputed domain name currently resolves to a website that is a direct competitor of Complainant in the online streaming of South Asian music, which is not a use that is protected as a bona fide offering of goods or services or a legitimate noncommercial or fair use. A screenshot provided by Complainant shows the disputed domain name resolves to a website entitled “Songslover” that promotes links entitled “Bollywood Songs,” “English Songs,” and “Upcoming Songs.” The Panel further observes that a description of the “Songslover” website states, “Download Latest Bollywood songs, Latest English songs, Video songs, Hindi songs, Hip Hop Albums, Punjabi Songs, Latest Singles Music.” Accordingly, the Panel determines that the website resolving from the <saavn.us> domain name is a direct competitor of Complainant in the online offering of South Asian music. Respondent’s use of a disputed domain name to resolve to a website that offers products that directly compete with the complainant’s products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Therefore, the Panel holds that this use of the <saavn.us> domain name is not protected under Policy ¶¶ 4(c)(ii) or 4(c)(iv).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant alleges that by fully incorporating Complainant’s SAAVN mark, the disputed domain name targets potential customers of Complainant and directs them to a website that offers free, illegal downloads of South Asian music that directly competes with the music streaming services provided by Complainant under the SAAVN mark. Complainant argues that Respondent’s use of the <saavn.us> domain name thus disrupts Complainant’s business and constitutes bad faith pursuant to Policy ¶ 4(b)(iii). The Panel agrees that the website resolving from the <saavn.us> domain name is a direct competitor of Complainant in the online offering of South Asian music. The Panel notes that it has previously been determined that a respondent who appropriates a complainant’s mark in a domain name to divert Internet users to the respondent’s competing business demonstrates bad faith disruption of the complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iii).”). Therefore, the Panel holds that Respondent has demonstrated bad faith registration or use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).
Complainant contends that Respondent has demonstrated bad faith registration or use pursuant to Policy ¶ 4(b)(iv) because the disputed domain name incorporates Complainant’s SAAVN mark to intentionally attract Internet users seeking Complainant’s music streaming services. As discussed above, the disputed <saavn.us> domain name is identical to Complainant’s SAAVN mark, and thus creates a likelihood of confusion with Complainant’s mark. The Panel notes that in MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000), the panel found bad faith where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services to those offered by the complainant under its mark. In the instant proceeding, the Panel determines that the disputed domain name is being used to host a webpage that offers online streaming of South Asian music similar to that offered by Complainant under its SAAVN mark. Accordingly, the Panel holds that Respondent has demonstrated bad faith registration or use of the <saavn.us> domain name pursuant to Policy ¶ 4(b)(iv).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <saavn.us> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 5, 2013
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