The Complainant is Pandora Media, Inc. of Oakland, California, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Jared Burnup of Clintonville, Wisconsin, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2016. On October 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 13, 2016, 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 October 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2016. A brief informal communication from the Respondent was received by the Center on November 9, 2016.
The Center appointed Lynda Braun as the sole panelist in this matter on November 24, 2016. 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. 4. Factual Background
The Complainant, incorporated as a California corporation in January 2000 and reincorporated as a Delaware corporation in December 2010, is an Internet radio service that provides music and comedy content to customers through connected devices. The Complainant is a publicly-traded company on the New York Stock Exchange with more than 2,200 employees.
Unlike traditional radio stations that broadcast the same content at the same time to all of their listeners, the Complainant enables each listener to create personalized stations. The Complainant has more than 80 million monthly active users who listen to the Complainant’s Internet radio service for an average of 22 hours per month. This audience has now created more than 9 billion stations with music from more than 350,000 artists.
The Complainant is the owner of several trademark registrations for PANDORA in the United States, specifically United States Registration No. 3173558, registered on November 21, 2006 for broadcasting services and entertainment services, and United States Registrations Nos. 4031781 and 4031782, both registered on September 27, 2011 for Internet broadcasting services and entertainment services. In addition, the Complainant owns over 50 other trademark registrations for PANDORA or that incorporate the term PANDORA in many countries worldwide (collectively, the “PANDORA Mark”). In addition, the Complainant is the owner of the domain name , which resolves to “www.”, the Complainant’s official website through which the Complainant advertises and promotes its services.
The Respondent registered the Disputed Domain Name on September 17, 2016. The Disputed Domain Name resolves to a pay-per-click website containing sponsored links to third party commercial websites primarily related to services that belong to competitors of the Complainant.
The Respondent is a serial cybersquatter who has been involved in several proceedings under the Policy and in each one has been ordered to transfer the domain names in issue. See, e.g., LEGO Juris A/S v. Jared Burnup,WIPO Case No. D2013-1689, Eveready Battery Company, Inc. v. Jared Burnup,WIPO Case No. D2013-1037. In addition, the Complainant has submitted evidence in the Complaint that the Respondent currently owns numerous domain name registrations that contain or incorporate well-known trademarks owned by third parties. 5. Parties’ Contentions A. Complainant
In summary, the following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademark.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not submit a formal response to the Complaint. In the email communication of November 9, 2016, the Respondent appears to be saying that two unrelated domain names were “already” sold “through a brandbucket rep.” 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to prevail in this proceeding:
(i) The Disputed 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 Disputed Domain Name; and
(iii) The Disputed Domain Name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.
It is uncontroverted that the Complainant has established rights in the PANDORA Mark based on both long and continuous use as well as its 50 trademark registrations in the United States and worldwide for the PANDORA Mark. The Disputed Domain Name consists of the PANDORA Mark followed by the descriptive word “subscription”, and followed by the generic Top-Level Domain (“gTLD”) “.com”.
Numerous UDRP decisions have reiterated that the addition of a descriptive or generic word to a trademark is insufficient to avoid confusing similarity. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; Hoffman-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923; Nintendo of America, Inc. v. Fernando Sascha Gutierrez,WIPO Case No. D2009-0434. This is especially true where, as in the present case, the descriptive word “subscription” is associated with the Complainant and its business. See, e.g., Gateway, Inc. v. Domaincar,WIPO Case No. D2006-0604 (finding the domain name confusingly similar to the trademark GATEWAY because the domain name contained “the central element of the Complainant’s GATEWAY marks, plus the descriptive word for the line of goods and services in which the Complainant conducts its business”).
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant. B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its PANDORA Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain and thus, has no rights or legitimate interests in the Disputed Domain Name.
Moreover, the Respondent’s registration and use of the Disputed Domain Name to resolve to a website with commercial links to third-party advertisements for other products and services, including those of the Complainant’s competitors, does not constitute a bona fide offering of goods or services or noncommercial fair use under the Policy. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415 (use of a domain name to post landing pages and pay-per-click links does not confer rights or legitimate interests in that domain name when resulting in a connection to goods or services competitive with those of the trademark holder).
Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant. C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the Complainant’s Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name after the Complainant first used the PANDORA Mark.
The continuous and public use of the PANDORA Mark would make it disingenuous for the Respondent to claim that he was unaware of the Complainant’s trademark rights. See Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights and publicity in the complainant’s trademarks). Thus, the timing of the Respondent’s registration and use of the Disputed Domain Name indicates that it was made in bad faith.
Second, the Panel finds that the Respondent used the Disputed Domain Name in bad faith by attempting 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 PANDORA Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its well-known PANDORA Mark. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law”).
Moreover, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark suggests bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the PANDORA Mark.
Finally, the fact that the Respondent has a history and pattern of bad faith registration of domain names incorporating the trademarks of third parties is further indication that the Respondent registered and used the Disputed Domain Name 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, , be transferred to the Complainant.
Lynda M. Braun
Sole Panelist
Date: November 29, 2016
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