The Complainant is Deezer SA of Paris, France, internally represented.
The Respondent is Yogi Lama, Buddha Tunes Ltd of Philadelphia, Pennsylvania, United States of America ("US").
The disputed domain name <deezer.pro> is registered with Gandi SAS (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 23, 2015. On October 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 26, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 30, 2015.
The Center appointed Andrew Brown QC as the sole panelist in this matter on December 8, 2015. 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 Complainant is a French company. It was formerly named "Odyssey Music Group SAS". The Complainant offers international online music on demand services (both free and paid) under the trademark DEEZER. It has operated the services since 2007.
In 2009, the Complainant launched two paid services: "Deezer Premium" and "Deezer Premium +".
On September 14, 2014, the Complainant launched its services in the US.
The disputed domain name was registered on September 12, 2014.
The website available at "www.deezer.com" is listed as owned by Blogmusik SAS. Blogmusik SAS was absorbed and merged into the Complainant on October 1, 2015. The Complainant offers its music on demand services via this website. Blogmusik SAS is also listed as owning <deezer.fr>, <deezer.es>, <deezer.de>, <deezer.dk>, <deezer.it>, <deezer.me>, <deezer.mn>, <deezer.mu>, <deezer.pl>, <deezer.com.bo>, <deezer.sc> and <deezer.tw>.
Blogmusik SAS is also listed as the owner of US trademark no. 3,803,079 for DEEZER, which was registered on June 15, 2010 in classes 35, 38 and 41. In particular, the class 41 registration covers "providing an internet website portal in the field of music; entertainment services, namely, providing nondownloadable prerecorded music via a global communications network and providing nondownloadable prerecorded music according to consumer preferences via a global communications network; provision of information relating to music; online journals namely, blogs featuring music, in class 41". The DEEZER logo mark (US trademark no. 3,803,078) was also registered on June 15, 2010 to Blogmusik SAS in classes 35, 38 and 41.
Blogmusik SAS is also listed as the owner of international trademark no. 1024994 for the DEEZER logo, registered on October 9, 2009 in classes 35, 38 and 41; and Community Trade Mark no. 8650079 for the word mark DEEZER, registered on October 29, 2009 in classes 35, 38 and 41. It is also listed as the owner of French trademark no. 3520218 for the logo DEEZER in classes 9, 35, 38, 41 and 42, registered on August 20, 2007.
On October 14, 2015 the Complainant became aware of the disputed domain name's registration. At that time, the disputed domain name was being used to lead visitors to the website of a competing music streaming service, Match.fm.
The Complainant sent a cease and desist letter to the Respondent on October 19, 2015. The Respondent responded on October 21, 2015 stating "The domain deezer.pro is not being used nor is it pointing to any other website. Do you have an interest in purchasing the domain name?" The Complainant then made enquiries as to the amount the Respondent would sell the disputed domain name for. The Respondent proposed USD 25,000.
As to the requirement in paragraph 4(a)(i) of the Policy, the Complainant contends that the disputed domain name is identical to trademarks in which it has rights, i.e. the DEEZER marks. The Complainant contends that previous UDRP decisions have recognized the Complainant's rights in the DEEZER mark. It also states that the mark has become notorious throughout the world.
In relation to the generic Top-Level Domain ("gTLD") ".pro", the Complainant contends that this does not influence the consideration of identity between the trademark and the disputed domain name. It states that the gTLD ".pro" does not prevent the overall impression that the disputed domain name is connected to the Complainant, particularly in circumstances where "pro" is often treated as short for "professional" and the Complainant offers a service dedicated to professionals called "Deezer Pro".
As to the requirement in paragraph 4(a)(ii) of the Policy, the Complainant states that it has never authorized the Respondent to use the terms "Deezer" or "Deezer.pro" and had not been in contact with the Respondent before sending the cease and desist letter. The Complainant also states that to the best of its knowledge, the Respondent does not own any rights in the terms "Deezer" or "Deezer.pro" and has never been known by those terms. It also states that there is no evidence that the Respondent has used and/or has been preparing to use the term "Deezer" or the disputed domain name for a bona fide offering of services and/or goods. As the website available at the disputed domain name was used to redirect traffic to a competitor music streaming website, the Complainant contends that the Respondent registered the disputed domain name in order to capitalize on the Complainant's reputation and therefore can have no rights or legitimate interests in the disputed domain name.
As to the requirement in paragraph 4(a)(iii) of the Policy, the Complainant contends that the disputed domain name was registered and is being used in bad faith for the following reasons:
a) The Respondent has no rights or legitimate interests in the trademark DEEZER and has continued to use the disputed domain name without any rights or legitimate interests even after the Complainant sent a cease and desist letter;
b) By registering the disputed domain name, the Respondent prevented the Complainant from registering the same name;
c) The Respondent must have known of the Complainant's trademark when registering the disputed domain name, as shown by the fact that the website available at the disputed domain name led to a music service and the fact that the Respondent's email address leads to the website "www.buddha.fm", a music streaming site.
d) Further, the Complainant contends that the fact that the disputed domain name was registered around the time that the Deezer services were launched and promoted in the US cannot have been a coincidence.
e) The Complainant contends that the fact that the Respondent has offered to sell the disputed domain name to the Complainant for USD 25,000 is evidence of bad faith.
f) The Complainant also contends that the addition of the term "pro" to DEEZER was intended to lead users to believe that the disputed domain name was owned by the Complainant, and therefore the Respondent's intention was to benefit from the Complainant's trademark to the Complainant's detriment.
g) The Complainant also emphasizes the fact that the Respondent stopped using the disputed domain name to redirect to a competitor music streaming service upon receiving the Complainant's cease and desist letter as evidence that it was aware that its use of the disputed domain name was in bad faith.
The Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant's contentions.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the disputed domain name in order to succeed in this proceeding:
(I) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(II) That the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(III) That the disputed domain name has been registered and is being used in bad faith.
The Complainant absorbed and merged with Blogmusik SAS on October 1, 2015. The Panel accepts that as at the date of the Complaint, the Complainant has established that it has trademark rights in US trademark no. 3,803,079 for the word mark DEEZER in respect of "providing an internet website portal in the field of music". The Panel also accepts that the Complainant has rights in US trademark no. 3,803,078, of international trademark no. 1024994, Community Trade Mark no. 8650079 and French trademark no. 3520218.
The gTLD ".pro" in the disputed domain name may be disregarded due to it being a technical requirement of registration. The Panel therefore finds that the disputed domain name is identical to US trademark no. 3,803,079 and Community Trade Mark no. 8650079, both registered for the word mark DEEZER. It has also been used in respect of services for which the DEEZER trademarks are registered, i.e., to link to an Internet website portal in the field of music.
Even if the ".pro" gTLD is considered, the disputed domain name is confusingly similar to the Complainant's trademarks and identical to one of the services offered by the Complainant, as the Complainant has provided evidence that it offers a "Deezer Pro" service for professionals.
The Panel accordingly finds that the disputed domain name is identical to a trademark in which the Complainant has rights and finds that paragraph 4(a)(i) of the Policy is satisfied in favor of the Complainant.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish that it has rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:
(i) That before notice of the dispute, the respondent used or made demonstrable preparations to use the disputed domain name or a name corresponding to a disputed domain name in connection with a bona fide offering of goods or services; or
(ii) That the respondent has been commonly known by the disputed domain name, even if it had acquired no trade mark or service mark rights; or
(iii) That the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark at issue.
The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name lies with the Complainant.
The Complainant states, and the Panel accepts, that the Complainant has not authorized the Respondent to use the DEEZER mark.
For the reasons provided by the Complainant and summarized in the Parties' Contentions section, the Panel finds that the Complainant has satisfied the burden of showing a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not rebutted the Complainant's prima facie case and both the absence of any reply to the Complaint and the way that the Respondent has used the disputed domain name does not support a finding of rights or legitimate interests.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant.
Pursuant to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, are evidence of the registration and use of a disputed domain name in bad faith:
(i) Circumstances indicating that the respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant who is the owner of the trade mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or
(ii) That the respondent has registered the disputed domain name in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) That the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) That by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The Panel is satisfied that the disputed domain name was registered and is being used in bad faith for the following reasons:
(a) The Panel finds that at the time of the Respondent's registration of the disputed domain name, the Respondent must have been aware of the Complainant's rights in the trademark DEEZER and thereby registered the disputed domain name in bad faith. This arises for the following reasons:
(i) The Complainant's trademark is a distinctive one because it is a made up term. It is not a term that any person would use descriptively.
(ii) The disputed domain name was registered at a time when the Complainant's DEEZER services were being heavily promoted in the US.
(iii) The most cursory search prior to the Respondent registering the disputed domain name would have instantly revealed the Complainant and its DEEZER service and websites.
(iv) The "Registrant Organization" field for the WhoIs result for the disputed domain name is "buddha tunes ltd". The Complainant has provided evidence that "buddha tunes ltd" is a company which operates a music streaming website at "www.buddha.fm".
(b) Further, the Panel finds that the Respondent has registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of its out-of-pocket costs related to the disputed domain name. The Respondent has offered to sell the disputed domain name to the Complainant for USD 25,000, which the Panel finds to very substantially exceed any reasonable out-of-pocket costs the Respondent may have incurred in relation to the disputed domain name.
(c) As to use, the Complainant has provided evidence that the website at the disputed domain name was used to redirect to a competitor music streaming website. The Panel therefore finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's DEEZER mark.
(d) Finally, the Panel is entitled to draw inferences adverse to the Respondent as a result of the Respondent's failure to file any response to the Complaint.
Accordingly, the Panel finds that paragraph 4(a)(iii) of the Policy is satisfied in favor of the Complainant.
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.pro> be transferred to the Complainant.
Andrew Brown QC
Sole Panelist
Date: December 21, 2015