Complainant is Blogmusik SAS of Paris, France, represented by Adèle Zangs, France.
Respondent is Carlos Antolinez Navarro of Bucaramanga, Santander, Colombia.
The disputed domain name <deezer.com.co> is registered with GoDaddy.com, LLC. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2013. On April 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 3, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 16, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2013. The Center received an informal email communication in Spanish from Respondent on April 16, 2013. Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on May 8, 2013.
The Center appointed Roberto Bianchi as the sole panelist in this matter on May 16, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Panel determined that the language of the proceeding be English. See section 6A below.
Complainant is a French company offering free and paying services of online music on-demand. Complainant has been operating these services since 2007, thus becoming a leading provider of these services in France and abroad. Complainant has developed an important presence on the Internet and acquired renown in the music industry and among Internet users. Complainant offers and distributes its services exclusively through the website “www.deezer.com”.
Throughout 2012 and 2013, Complainant launched its Deezer Services in more than 130 countries simultaneously, inter alia in Colombia.
Complainant owns the following trademark registrations for DEEZER:
- International Trademark No. 1024994, registered on October 9, 2009, covering advertising, etc., of class 35, telecommunications, etc., of class 38, educations and entertainment, etc., of class 41;
- Community Trademark No. 08650079, registered on May 3, 2010, covering advertising services, etc., of class 25, telecommunication services, etc. of class 38, entertainment online via the Internet and online publication of musical works, etc., of class 41;
- United States Trademark No. 3803079, registered on June 15, 2010, covering providing an Internet website portal featuring links to music-related merchandise for retail purposes, etc., of class 35, providing access to digital music websites, etc. of class 38, providing nondownloadable prerecorded music via a global communications network, etc. of class 41;
- French Trademark No. 3520218, registered on August 20, 2007, covering instruments, etc., of class 9, advertising, etc. of class 35, entertainment, etc., of class 41, computer programming, etc. of class 42.
The disputed domain name was registered on June 8, 2012.
On November 8, 2012 Complainant sent to Respondent a cease and desist letter, enjoining him to cease any use of the disputed domain name, and requesting him to transfer the disputed domain name to Complainant.
On November 9, 2012, Respondent replied to Complainant’s cease and desist letter, stating that he had bought the disputed domain name for a personal blog that had nothing to do with music, and which still was a project. Respondent then stated that if Complainant was willing to acquire the disputed domain name, he was ready to sell it
According to a look-up visit conducted by the Center on April 16, 2013, the website at the disputed domain name consists of a parking page provided by the Registrar. The corresponding website shows a legend stating, “Welcome to deezer.com.co”, and contains advertisements and links to various services offered by the Registrar.
In its Complaint, Complainant contends as follows:
The disputed domain name is identical or confusingly similar to the DEEZER mark in which Complainant has rights.
Complainant’s website “www.deezer.com” is a display window and main distribution channel of the Deezer services. It is therefore fundamental for Complainant to own the domain names corresponding to its trademark. This is why Complainant has also registered and is the owner of numerous domain names including the term “deezer”. The term and trademark DEEZER have become notorious throughout the world among Internet users who associate the word “Deezer” to Complainant’s music services. Moreover, in the past year, Complainant has enjoyed large worldwide media coverage since it has expended its Deezer Services across the world. The Deezer services were notably opened in Colombia on June 6, 2012, just two days before the registration of the disputed domain name. The disputed domain name identically reproduces the term “deezer” with the mere addition of the suffix “.com.co”. Complainant has a right in the mark DEEZER and the disputed domain name is identically reproducing the DEEZER trademark of Complainant.
Respondent has no rights or legitimate interests in respect of the disputed domain name. Respondent has only registered the disputed domain name to benefit from Complainant’s renown. Unlike Complainant, Respondent has never registered and/or demonstrated preparation to register the term “Deezer” as a trademark. To Complainant’s best knowledge, Respondent does not own any legal rights in the term “Deezer”, which could justify the registration and use of the disputed domain name. To Complainant’s best knowledge, Respondent has never been known within his country or worldwide under the term “Deezer”. Instead, Complainant not only has created the term and has been using it since 2007, but it also has registered several trademarks. Complainant acquired renown, notably in Colombia, in the past few months, through large media coverage of its international extension.
Respondent asserted to Complainant that he registered the disputed domain name to create a personal blog. However there is no evidence that Respondent has ever created such blog since the disputed domain name always directed users to a parking page. Accordingly, Respondent cannot legitimately claim that it has any other interest in the disputed domain name but to make a commercial gain to the detriment of Complainant. Moreover, there is no evidence that Respondent has used and/or has been preparing to use the term “Deezer” and/or the disputed domain name for a bona fide offering of services and/or goods. The disputed domain name has never directed the users to an active web page offering goods and/or services that could qualify as a bona fide offering of goods and/or services. The term “Deezer” has no specific meaning that could legitimate the registration and/or use of the disputed domain name by Respondent. It is obvious that Respondent has registered and used the disputed domain name only to direct users to a parking page and to sell the disputed domain name in order to capitalize on the notoriety of Complainant.
The disputed domain name was registered and is being used in bad faith. The disputed domain name was registered not only to prevent Complainant from registering it but also to make a commercial gain to the detriment of Complainant.
Although Respondent has never been authorized to use and reproduce the trademark DEEZER, Respondent has registered and keeps using the disputed domain name without any legitimate rights and/or interests and even though Complainant has enjoined him to stop reproducing and using its trademark. It is impossible that Respondent did not have Complainant’s trademark in mind when he registered the disputed domain name since the term “Deezer” was created by Complainant and is only being used by him. Moreover, at the date of registration of the disputed domain name, June 8, 2012, Complainant was enjoying large media coverage since the Deezer Services were launched in Colombia on June 6, 2012. The proximity of the dates is sufficient evidence of Respondent’s bad faith as it cannot be a coincidence. The disputed domain name has only been registered to benefit from the renown and the value attached to the trademark DEEZER in order to attract traffic to Respondent’s website and sell the disputed domain name to Complainant’s detriment.
The use of the disputed domain name can also be considered as being in bad faith. The disputed domain name is and has always been directing users to a parking page where numerous commercial links are available. As a result, Respondent is receiving commercial revenue from the use of a term in which it does not have any rights or legitimate interests and without Complainant’s authorization. It is obvious that the only intention of Respondent when using the disputed domain name is to make a commercial gain by attracting users on its website thanks to the reputation of Complainant. By pretending to have registered the disputed domain name to create a personal blog whereas the disputed domain name is directing users to a parking page, Respondent is providing another indication as to his bad faith in the registration and use of the disputed domain name. Such use of the disputed domain name can directly affect Complainant’s reputation since it misleads users into believing that there is an association between Complainant and Respondent. When entering the disputed domain name into a browser, users are expecting to be directed to a web page published by Complainant. Therefore, they can be led to believe that Complainant is not exploiting the Deezer Services in the country, which can disrupt Complainant’s business. Moreover, through the exact reproduction of Complainant’s trademark within the disputed domain name, without any authorization, Respondent is unlawfully creating a likelihood of confusion within the mind of the public as to a possible endorsement of Respondent’s website by Complainant. This use is even more reprehensible since the commercial links appearing on the website at the disputed domain name include links to other online music services and notably what appear to be illegal music services.
Respondent has offered to sell the disputed domain name. This situation creates a risk to see the disputed domain name bought by one of Complainant’s competitors with wrongful intentions.
Respondent did not formally reply to Complainant’s contentions as required under Rules, paragraph 5(b)(i) (“Respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name (This portion of the response shall comply with any word or page limit set forth in the Provider’s Supplemental Rules.)”). However, Respondent is not formally in default because he did send two email communications in the present proceeding.
On April 16, 2013, Respondent sent the following text to the Center (without copy to Complainant):1
1. I demand that all documents or accusations be sent to me in Spanish. Otherwise I will not be able to understand what is being said or written.
2. Exercising my right to buy as any other citizen, I purchased the domain name in question, so I see no problem in exercising my right to buy. May I recall that “.com.co” domain names are from Colombia, and that I am a citizen of Colombia, not a French citizen like the company struggling for my domain name.
3. I have owned this domain name for almost two years without knowing that this music company existed. I do not see why they oppose to reaching an agreement, having in mind that I have paid for this domain and that I have not done anything illegal.
I remain open to any enquiry.”
On April 29, 2013, Respondent sent the following email communication to the legal counsel of Complainant:2
“Good afternoon. … I am pretty tired of receiving emails with claims and accusations of all kinds about the domain name deezer.com.co that I bought legally, without engaging into any fraudulent transaction. Therefore I tell you that if you want to keep this domain name for you then go ahead, but I believe it is illogical I am not receiving any kind of compensation, not even the costs of purchase I incurred and the additional expenses according to dispute terms.
I hope this matter will be resolved soon because it is very cumbersome.
Thank you for your attention.”
Under the Policy, paragraph 4(a), a complainant must make out its case that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In its email communication to the Center on April 16, 2013, Respondent requested that all documents related to this proceeding be sent to him in Spanish. However, the Panel notes that the language of the registration agreement is English, and that there is no evidence of any agreement of the Parties as to the language of the proceeding. Accordingly, pursuant to the Rules, paragraph 11(a), the Panel determines that the language of the present proceeding and of the decision on the merits shall be English.
Complainant has shown to the satisfaction of the Panel that it has rights in the DEEZER trademark. See various trademark registrations at section 4 supra. Respondent does not contest Complainant’s rights in the mark.
Since the disputed domain name incorporates the DEEZER mark in its entirety, adding the second level domain “.com”, and the ccTLD “.co”, the Panel concludes that the disputed domain name is identical to Complainant’s mark.
In its Complaint, Complainant specifically denies that each of the circumstances of the Policy, paragraph 4(c), may be applicable. In particular, it asserts that Respondent registered the disputed domain name exclusively to benefit from the renown of Complainant’s DEEZER mark.
In its email communication of April 16, 2013, to the Center, Respondent stated that he had registered the disputed domain name because it was his right to do so. In the Panel’s opinion, this argument does not provide a basis for asserting rights or legitimate interests in a domain name. See Tetra Laval Holdings & Finance S.A. v. Vahid Moghaddami, AzarNet.Co, WIPO Case No. D2010-0268 (“The argument […] that the disputed domain names were available at the time of registration, is a truism merely stating how the registration of domain names is possible in general, and cannot in and by itself explain why a particular registration should be seen as legitimate. See TRW Inc. v. Autoscan Inc., WIPO Case No. D2000-0156, where the panel said that “[i]f mere registration of the domain name was sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy”).
On November 9, 2012, Respondent replied to Complainant’s cease and desist letter, stating that he had bought the disputed domain name for a personal blog that had nothing to do with music, and which still was a project. However, the Panel could not find any contention or evidence that Respondent ever used the disputed domain name for such a purpose, or that he engaged into any demonstrable preparations under the Policy, paragraph 4(c)(i). Nor has Respondent claimed or demonstrated that he is commonly known by the disputed domain name pursuant to the Policy, paragraph 4(c)(ii), which clearly does not apply in this case. Nor has Respondent made any fair or noncommercial use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Instead the only present use of the disputed domain name is a “parked” web page provided by the Registrar for free, and where advertisements and links to services commercially provided by the Registrar are posted. Accordingly, the application of the Policy, paragraph 4(c)(iii), must also be excluded.
Given that Respondent failed to provide any other explanation for having registered the disputed domain name, which is identical to the DEEZER mark of Complainant, the Panel concludes that Respondent lacks any rights or legitimate interests in the disputed domain name.
In the Panel’s opinion, Complainant has shown that its DEEZER mark and services are well known and recognized by Internet users, and that the mark and services enjoyed such status at the time of the registration of the disputed domain name in June 2012. Also, the first fifteen results of an independent Google search for the term “Deezer” conducted on May 30, 2013, by the Panel directed to Complainant’s “www.deezer.com” website and services, or referred to Complainant and its online on-demand music services. Similar results were obtained in the Google search limited to 2012, the year of the registration of the disputed domain name. Also, Respondent failed to provide the slightest explanation for such registration, other that he intended to publish a personal blog that had nothing to do with music.
All this lead the Panel to conclude that Respondent in all likelihood must have known, and targeted Complainant and its mark and services when he registered the disputed domain name, i.e. the registration was in bad faith.
As to use in bad faith, by submitting printouts taken from the website at the disputed domain name on October 8, 2012, Complainant has shown that the website has included links to other online music services in France and elsewhere, i.e. from competitors of Complainant. Respondent has not contested this fact. The circumstance that Respondent’s website at the disputed domain name was “parked” for free by the Registrar does not prevent the Panel to conclude that Respondent by using - or by allowing the use by third parties - of the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to his website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his website or location or of a product or service on his website or location, which is a circumstance of registration and use in bad faith under the Policy, paragraph 4(b)(iv).
In the Panel’s opinion, the fact that the commercial links to competitors of Complainant posted on the “www.deezer.com.co” website might be selected and provided by the Registrar or other entity does not excuse Respondent, because in allowing such postings he caused that the renown of the DEEZER mark could be used for commercial gain (to the benefit of Respondent or of anybody else).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <deezer.com.co> be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: May 30, 2013
1 Unofficial translation from the original in Spanish.
2 Unofficial translation from the original in Spanish.