Pandora Media, Inc. and Beats Electronics, LLC v. Diaconu Claudiu / Pandora Beats
Claim Number: FA1605001674549
Complainant is Pandora Media, Inc. and Beats Electronics, LLC (“Complainant”), represented by Gina L. Durham of DLA Piper LLP, California, USA. Respondent is Diaconu Claudiu / Pandora Beats (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pandorabeats.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2016; the Forum received payment on May 11, 2016.
On May 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pandorabeats.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 May 13, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 2, 2016 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@pandorabeats.com. Also on May 13, 2016, 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 June 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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.
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” The Complainants assert that a sufficient nexus has been established between the two companies and the disputed domain name. Complainants ask to be treated as one because both parties have trademark rights to marks combined to form the <pandorabeats.com> domain name. The remedy sought is a transfer to Complainant Pandora, as Complainant Beats has consented to the transfer to Complainant Pandora.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. InTasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Similarly, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.
The Panel here finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and will treat them as a single entity in this proceeding. Throughout the findings below, the Complainants will be collectively referred to as “Complainant.”
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant owns numerous United States Patent and Trademark Office (“USPTO”) trademarks for the PANDORA mark (e.g., Reg. No. 3,173,558, registered Nov. 21, 2006) and the BEATS mark (e.g., Reg. No. 3,862,142, registered Oct. 12, 2010). The marks are used in connection with online streaming music and radio services and other audio products. Respondent’s <pandorabeats.com> is confusingly similar to the PANDORA and BEATS marks as it combines the marks and adds the generic top level domain (“gTLD”) “.com.”
Respondent cannot demonstrate rights or a legitimate interest in the <pandorabeats.com> domain name. Respondent is not commonly known by the disputed domain name. Complainant has not licensed or otherwise permitted Respondent to use either the PANDORA or BEATS marks. Respondent is not making a bona fide offering of goods or services or a noncommercial fair use with the <pandorabeats.com> domain name. Respondent is using the disputed domain name to offer a competing, potentially illegal, online streaming music service.
The <pandorabeats.com> domain name was registered and is being used in bad faith. Respondent is taking advantage of the confusing similarity between its Domain names and Complainant’s PANDORA and BEATS marks in order to draw users to its commercial website, which offers a similar service, and to profit from the goodwill associated with these marks. Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s rights in the PANDORA and BEATS marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Pandora Media, Inc. of Oakland, CA, USA, and Beats Electronics, LLC, Culver City CA, USA. Complainant owns numerous domestic and international trademarks for the marks PANDORA and BEATS, which have been used continuously since at least as early as 2005 and 2008, respectively, in connection with the provision of online music streaming services as well as audio and music products related to the same.
Respondent is Diaconu Claudiu / Pandora Beats, Bucharest, Romania. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the <pandorabeats.com> domain name was registered on or about October 7, 2014.
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 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 (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.”).
Complainant owns numerous USPTO trademarks for the PANDORA mark (e.g., Reg. No. 3,173,558, registered Nov. 21, 2006) and the BEATS mark (e.g., Reg. No. 3,862,142, registered Oct. 12, 2010). The marks are used in connection with online streaming music and radio services and other audio products. Registration with the USPTO establishes a Complainant’s rights in a mark even when Respondent operates outside of the United States. See Viber Media S.à r.l. v. Kristaps Sirmais / SIA "FUN FACTORY", FA 1626671 (Forum Aug. 4, 2015) (“Accordingly, even though Respondent reportedly resides in Latvia, the Panel finds find that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i).”). The Panel here finds that Complainant’s USPTO registrations confer rights under Policy ¶ 4(a)(i).
Complainant asserts Respondent’s <pandorabeats.com> domain name is confusingly similar to the PANDORA and BEATS marks as it combines the marks while omitting space between the words, and adding the gTLD “.com.” Combining marks a complainant has demonstrated rights in while removing the space between the words and affixing the “.com” gTLD does not create a distinct domain name under Policy ¶ 4(a)(i). See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). The Panel here finds that Complainant has established its rights under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant asserts that Respondent is not commonly known by the <pandorabeats.com> domain name, nor is Respondent in possession of licensing rights that would allow him to use the PANDORA or BEATS marks in a domain name. The Panel notes that “Diaconu Claudiu” is listed as the registrant of record for the disputed domain name. The Panel also notes the record was not supplemented by evidence from Respondent that contradicts Complainant’s assertions. The Panel finds, based on the available WHOIS information and Respondent’s lack of evidence to the contrary, that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant argues that Respondent’s use of the <pandorabeats.com> domain name fails to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant has submitted evidence, which it claims shows Respondent using the disputed domain name to offer competing streaming music/audio services. Complainant posits that Respondent is using the confusing similarity between the PANDORA and BEATS marks and the <pandorabeats.com> domain name to divert internet users to its competing website for commercial gain. The Panel finds such behavior by the Respondent supports the conclusion that Respondent lacks rights under Policy ¶¶ 4(c)(i) and (ii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel here finds that Respondent lacks rights or a legitimate interest under Policy ¶ 4(a)(ii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant claims that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant contends that a likelihood of confusion exists because the websites resolving from the disputed domain names contains both marks at issue and offers services that compete with Complainant. Further, Complainant correctly notes that Respondent’s use of a disclaimer on the resolving webpage fails to negate any confusion. Prior panels have found that where a likelihood of confusion for commercial profit exists, a conclusion of bad faith under Policy ¶ 4(b)(iv) is also supported. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel here finds that Respondent’s use of the disputed domain name creates a likelihood of confusion for commercial profit that implicates bad faith under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <pandorabeats.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 20, 2016
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