WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Ambi Serviços de Internet Ltda. v. Privacy Administrator / Stanley Pace
Case No. D2018-1026
1. The Parties
The Complainant is Ambi Serviços de Internet Ltda. of Rio de Janeiro, Brazil, represented by Silveiro Advogados, Brazil.
The Respondent is Privacy Administrator of Bellevue, Washington, United States of America (“United States”) / Stanley Pace of Flower Mound, Texas, United States, represented by Law Office of Howard M. Neu, United States.
2. The Domain Name and Registrar
The disputed domain name <suamusica.com> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 9, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 15, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 29, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 11, 2018.
The Center verified that the Complaint together with the amendment to 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 June 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2018. The Center received email communications from the Respondent on June 25 and 26, 2018. Upon request of the Respondent, the due date for Response was automatically extended to July 5, 2018, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on July 5, 2018.
The Center appointed Steven A. Maier as the sole panelist in this matter on July 13, 2018. 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 Respondent has submitted that the Amended Complaint filed by the Complainant should be disallowed because it was filed after the date specified by the Center, which date had already been extended. However, the Panel is satisfied that the Respondent had a full opportunity to reply to the matters contained in both the Complaint and the Amended Complaint and notes that the Respondent himself obtained an extension for the filing of the Response. The Panel is satisfied therefore that the Respondent has suffered no material prejudice by reason of the delayed filing of the Amended Complaint and will consider both the contents of the Amended Compliant and the Respondent’s submissions in response to it.
4. Factual Background
The Complainant is a company registered in Brazil. It is the operator of an online music platform named “Sua Música”.
The Complainant is the owner of various Brazil registered trademarks for the mark SUA MÚSICA, comprising combined trademarks in which the letter “M” is presented as a pair of musical quavers with a legato symbol beneath. These trademarks are registered in five classes, with filing dates on or after September 2013 and registration dates on or after June 2016.
The Complainant also filed an application on April 6, 2017 for a United States trademark in a similar form.
The disputed domain name was first registered on January 15, 2008. It was acquired by the Respondent on February 19, 2011. The Panel notes at this point that, while the registration of the disputed domain name was transferred to a privacy service on January 22, 2018, the Respondent Stanley Pace remained the underlying registrant of the disputed domain name.
The disputed domain name has resolved to a Sedo “parking page” offering links to various websites, some with a musical connection, and stating that the disputed domain name may be for sale.
5. Parties’ Contentions
A. Complainant
The Complainant states that it operates one of the most popular online music platforms in Brazil, enabling users to listen to and download music from emerging artists. It also operates as a social network for these artists and their fans. The Complainant states that its website attracts over 40.5 million visitors per month and that it is in the top 3,500 visited websites worldwide according to the “Alexa” website.
The Complainant states that its service was founded by a young music and computer fan named Eder Rocha Bezerra, with the registration of the domain name <suamusica.com.br> on December 29, 2009. The Complainant states that its website was launched in September 2010 with significant public attention and that audience numbers have grown exponentially since that time. The Complainant produces evidence of its top ten downloads for each month between October 2010 and February 2011, which show a significant increase in downloads month on month with thousands of downloads by the end of this period.
The Complainant states that it began to make trademark applications in 2013 once its website and intellectual property started to be professionally managed. It states that it also investigated the disputed domain name in view of the obvious confusion to users between the disputed domain name and its own domain name <suamusica.com.br>. It claims that it discovered at that time that the disputed domain name was being used for a “parking page” including pay-per-click links which targeted the Complainant’s activities and users.
The Complainant produces evidence that in March 2016 it approached the Respondent via the Sedo parking page and offered USD 12,000 to buy the disputed domain name. The Respondent replied with a counter-offer of USD 84,000 and stated “I am also negotiating with other sedo users”. The Complainant states that it did not have the resources to afford this price.
The Complainant submits that the disputed domain name is identical or confusingly similar to a domain name in which it has rights. In particular, the Complainant contends that the disputed domain name reproduces the whole of its registered trademark SUA MÚSICA with the addition only of the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has not licensed or authorized the Respondent to use its SUA MÚSICA trademark, that the Respondent has no independent trademark rights in that name and that the Respondent has not been commonly known by that name. The Complainant contends that, instead, the Respondent is using the disputed domain name misleadingly to attract the Complainant’s fans to the Respondent’s own web page, including pay-per-click links. The Complainant submits that its trademark SUA MÚSICA is a coined term having no meaning in English, but in any event, that a registrant does not automatically have rights or legitimate interests in a domain name comprised of dictionary words.
The Complainant submits that the disputed domain name was acquired by the Respondent and is being used in bad faith.
The Complainant alleges that the Respondent knew of the Complainant’s website when he acquired the disputed domain name. The Complainant points to the rise in popularity of its website between October 2010 and February 2011 as detailed above. The Complainant also contends that a simple Google search would readily have disclosed the existence of its platform, since any search against the disputed domain name would have led only to the Complainant’s Brazilian website, regardless of the location where the search was carried out.
The Complainant alleges that the Respondent is a skilled and vastly experienced domainer who has been the subject of “dozens of domain name disputes” and has a track record of adverse findings under the UDRP.1 The Complainant also alleges that the Respondent has been found by a previous panel under the UDRP to be a “well-known cybersquatter” (Apple Inc. v. Stanley Pace (a.k.a. Jordan Smith, Chris Carter, sunhei.org, Keith Besterson, Shahamat, Staci Michele and Courtney Culbertson) and Fundacion Private Whois, WIPO Case No. D2013-1313)2.
The Complainant alleges that, at the time the Respondent acquired the disputed domain name, he was clearly aware of the Complainant’s online reputation and power of attraction, and that all circumstances lead to the conclusion that he seized an opportunity to unduly profit at the Complainant’s expense. The Complainant states, in particular, that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct (paragraph 4(b)(ii) of the Policy).
The Complainant asserts that the disputed domain name has no meaning in English, being the Respondent’s native language, and states that this adds to the inability of the Respondent to show any credible reason for having registered the disputed domain name.
The Complainant also points to the Respondent’s counter-offer to sell the disputed domain name to the Complainant for USD 84,000. The Complainant submits that it is irrelevant that the counter-offer followed from the Complainant’s own offer to purchase the name, and also that the request for the “exorbitant” and “implausible” sum of USD 84,000 demonstrates that the Respondent must have registered the disputed domain name with the initial intention of profiting from the registration (Waldin LLC v. David Sun, China DNS WIPO Case No. D2016-0894). Referring again to the Respondent’s record of adverse findings under the UDRP, the Complainant alleges that the Respondent acquired the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy).
The Complainant submits that the Respondent has also used the disputed domain name in bad faith. In addition to offering to sell it to the Complainant for an excessive sum, the Complainant submits that the Respondent has used the disputed domain name for the purpose of pay-per-click links which target the Complainant’s customers. The Complainant states that nearly all of the Respondent’s links have related to the Complainant’s main services and have even included links to one of the Complainant’s competitors, Apple iTunes.
The Complainant adds that bad faith should be inferred from the Complainant’s decision to transfer the disputed domain name to a privacy service in January 2018. The Complainant submits its is difficult to think of a reason why a legitimate registrant might wish to hide their identity, and also speculates that the timing of the transfer was related to the Complainant’s application for a United States trademark in 2017.
The Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent states that, while he purchased the disputed domain name in a GoDaddy domain name auction on February 19, 2011, the disputed domain name was first registered on January 15, 2008, some five years before any trademark registration on the part of the Complainant.
The Respondent states that the Complainant’s Brazilian trademarks for the stylized mark SUA MÚSICA were registered in 2016 and its United States trademark application was not made until April 2017. He submits that, in those circumstances: “[t]here was absolutely no way that Respondent, living in Texas, USA, could know or should know of Complainant’s trademarks as they were non-existent at the time that he registered the domain name.”
The Respondent submits that the term “sua música” comprises Portuguese words meaning “your music” and is not, therefore, a coined term as the Complainant suggests. The Respondent denies that these words are famous or have any special meaning, or that the Respondent has used them otherwise than in their generic meaning.
The Respondent states that he is in the business of acquiring domain names and using them for business purposes. The Respondent says that he owns 60,000 domain names and that when the disputed domain name became available he purchased it as a “premium generic domain” without knowledge of the Complainant or its later-acquired mark.
The Respondent disputes the Complainant’s submission that the language of the disputed domain name is significant. The Respondent states that he speaks both Spanish and Portuguese and that he has registered over 9,000 Spanish or Portuguese domain names. He cites by way of example <avogado.com> (“lawyer” in Portuguese), <efectivo.com> (“cash” in Portuguese), and <tudo.net> (“everything” in Portuguese), all of which he says were registered prior to the disputed domain name. The Respondent says that:
“Knowing Spanish and Portuguese has been a great asset in identifying some of the best generic Portuguese domains that have ever been auctioned.”
The Respondent submits that his offer to sell the disputed domain name to the Complainant, in response to the Complainant’s opening offer, does not evidence bad faith on the part of the Respondent but merely the value of the disputed domain name to the Respondent.
The Respondent acknowledges that there have been findings against him in other cases under the UDRP, but points out there have been numerous other cases in which findings were made in his favour. The Respondent further submits that findings in other cases, even of “serial cybersquatting”, are not conclusive that he has acted in bad faith in the present case.
The Respondent submits that his use of the disputed domain name for a “parking page” including pay-per-click links does not evidence bad faith in circumstances where he cannot be shown to have targeted the Complainant’s trademark.
The Respondent denies having transferred the disputed domain name to a privacy service for any improper motive and states that this was merely a consequence of his current registrar’s default setting.
The Respondent submits that the Complaint cannot succeed in view of his acquisition of the disputed domain name some years prior to the Complainant’s registration of any trademark. He also seeks a finding that the Complainant has abused the UDRP process and should be found to have engaged in reverse domain name hijacking.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
A. Identical or Confusingly Similar
The Complainant has established that it has registered trademark rights in Brazil for the mark SUA MÚSICA comprising a stylized form of those words. The disputed domain name comprises the term “suamusica” together with the gTLD “.com”, which is typically disregarded for the purposes of comparison under the first element of the Policy. The Panel finds in the circumstances that the disputed domain name is to all intents and purposes identical to the Complainant’s trademark. While the Complainant’s trademark was not registered until 2016, some years after the Respondent acquired the disputed domain name, this is not material to the comparison carried out under paragraph 4(a)(i) of the Policy, which is directed only to the Complainant’s current standing to bring the Complaint.
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the specific context of this case, the Panel finds that the disputed domain name comprises the two words “sua música” in the Portuguese language, which translate into English as “your music”. The Panel finds these to be dictionary words which are not inherently distinctive and cannot accept the Complainant’s submission that they are a coined term.
It does not follow from this, however, that the Complaint has no enforceable legal rights in respect of the name or mark “Sua Música”. In particular, the Complainant may be able to establish such rights if it can show that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services (see paragraph 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Furthermore, the fact that any distinctive (or “secondary”) meaning may only exist in a particular geographical area, or market niche, does not preclude the Complainant from establishing unregistered trademark rights (ibid).
In this case, the Complainant has submitted persuasive evidence that it launched a music sharing website in Brazil under the name “Sua Música” in October 2010, operating from a website at “www.suamusica.com.br”, and that the popularity of that website had grown quickly, and was continuing to grow, in early 2011. These circumstances are sufficient, in the view of the Panel, to have vested the Complainant with a level of enforceable legal rights in the name “Sua Música” by that date, e.g.,the right to oppose another party from launching a competing business under the same name. The Panel also notes that the Complainant has now registered rights in this mark.
Clearly, however, the term “sua música” does not necessarily refer to the Complainant or its website and the fundamental question for the Panel is therefore the following: did the Respondent register the disputed domain name in the knowledge of the Complainant’s mark and with the intention of taking unfair advantage of it, or alternatively in ignorance of the Complainant’s trademark and with the intention only of using the disputed domain name in connection with its dictionary meaning? The answer to these questions informs both the issues of rights or legitimate interests and alleged bad faith on the part of the Respondent.
The Panel accepts the Respondent’s submission that the findings against him in other cases under the UDRP are not conclusive that he lacks rights or legitimate interests or has acted in bad faith in the present case: however, neither is this factor irrelevant to the Panel’s overall consideration of the circumstances (see e.g., paragraph 4(b)(ii) of the Policy). What is of greater significant to the Panel is that the Respondent is an experienced domainer who, by his own admission, has exercised specific judgement in selecting the individual domain names he has purchased. As set out above, he has submitted that:
“[k]nowing Spanish and Portuguese has been a great asset in identifying some of the best generic Portuguese domains that have ever been auctioned.”
While the Respondent is correct that no trademark registration was obtained by the Complainant until 2016, it does not follow from this that, as the Respondent submits: “[t]here was absolutely no way that Respondent, living in Texas, USA, could or should know of Complainant’s trademarks…” The Panel has found that the Complainant was operating a successful and growing music sharing website under the name “Sua Música” by the date on which the Respondent purchased the disputed domain name finds it implausible that, in exercising his commercial judgement in respect of what he calls a “premium generic domain”, he would not have not have carried out a basic Google (or similar) search against the name in question. The Panel also notes in this regard that a number of panels under the UDRP have held professional domainers to a higher level of obligation than ordinary members of the public to avoid infringing existing third party rights (see e.g.,paragraph 3.2.2 of the WIPO Overview 3.0).
While the Complainant asserts that a basic Google search would have revealed the Complainant’s website, the Panel has undertaken its own enquiry, comprising a Google search time limited to February 19, 2011, being the date on which the Respondent acquired the disputed domain name. That search returned the Complainant’s website among the top search results, and while the Panel accepts that the presentation of the results may be somewhat different now from a search undertaken at the time, it concludes nonetheless that the Complainant’s website would have featured prominently in any contemporaneous search against the term “sua musica”.
The Panel is not persuaded by the Respondent’s counter-argument that he identified the disputed domain name as a “premium generic domain”, in a similar category as the other (single word) Portuguese domain names to which he has referred, and with no knowledge whatsoever of the Complainant or its website.
The Panel therefore concludes, on balance, that the Respondent is more likely to have registered the disputed domain name in the knowledge of the Complainant’s website and service, and in the hope of profiting from the disputed domain name at the expense of the Complainant, than with the intention of using the disputed domain name without knowledge of the Complainant and exclusively in connection with its dictionary meaning. In these circumstances, the Respondent’s use of the disputed domain name for pay-per-click links and/or to offer the disputed domain name for sale does not give rise to rights or legitimate interests in respect of the disputed domain name. The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
It is well established in decisions under the UDRP that a complainant cannot succeed unless it can satisfy the conjunctive requirement that the disputed domain name in question was both registered and is being used in bad faith. In this case the disputed domain name was first registered in January 2008, almost two years before the Complainant began to use the name “Sua Música”. Had the ownership of the disputed domain name not changed, or had the original registration merely been renewed, this would have been the end of the matter as the original registrant could not have known of the Complainant’s use of a mark that had not at that time commenced. However, it is equally well established under the Policy that:
“… the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith.”
Accordingly, the relevant date for consideration in this case is the date of the Respondent’s acquisition of the disputed domain name, namely February 19, 2011. For the reasons set out above, the Panel finds it to be more likely than not that the Respondent acquired the disputed domain name on that date in the knowledge of the Complainant’s website and service, and in the hope of profiting from the disputed domain name at the expense of the Complainant. The Panel also finds the Respondent’s use of the disputed domain name since the date of its acquisition, including its offer to sell the disputed domain name to the Complainant for USD 84,000, to be consistent with that intention. The Panel concludes in all the circumstances, on the balance of probabilities, that the Respondent acquired the disputed domain name primarily for the purpose of selling the disputed domain name registration to the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the disputed domain name (paragraph 4(b)(i) of the Policy) and/or in order to prevent the Complainant from reflecting its mark in a corresponding domain name, the Respondent having engaged in a pattern of such conduct (paragraph 4(b)(ii) of the Policy).
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
7. Decision
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, <suamusica.com> be transferred to the Complainant.
Steven A. Maier
Sole Panelist
Date: July 18, 2018
1 The Complainant cites a number of decision under the UDRP, including at least one (Shutterstock, Inc. v. GiHwan Oh / Oh Gi Hwan) WIPO Case No. D2017-1444, domain name <shutterstocks.com>, in which the Respondent does not appear to have been a party.
2 The panel in that case concluded that “… Mr. Pace appears to have a long history of cybersquatting.”