The Complainant is Spotify AB, Sweden, represented by Ports Group AB, Sweden.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States of America / Sibelius Toledo, Brazil. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2020. On September 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2020, 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 September 18, 2020 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 amended Complaint on September 22, 2020. The Center verified that the Complaint together with the amended 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 September 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2020. The Center appointed William A. Van Caenegem as the sole panelist in this matter on October 20, 2020. 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 sent an email to the Center dated October 27, 2020 stating that the disputed domain was cancelled and that he had taken immediate steps upon notification of the Complaint not to maintain the disputed domain name and had removed all information related to the name “Spotify”. The Complainant did not respond to this communication. 4. Factual Background The Complainant, Spotify AB, is a Swedish music streaming and media services provider. It provides users with an online audio streaming platform that includes more than 60 million songs. The Complainant has multiple trademark registrations, inter alia Swedish trademark registration No. 2006/05858 for SPOTIFY, registered as of August 8, 2006 and renewed for goods and services in Classes 9, 35, and 38; International trademark registration No. 921642 for SPOTIFY, designating among others the European Union and the United States of America, registered as of January 4, 2007 and renewed for goods and services in Classes 9, 35, 38, and 41; European Union Trade Mark No. 015603228 for SPOTIFY, registered as of October 14, 2016 for goods in Class 25; United States of America trademark registration No. 87108365 for SPOTIFY, registered as of July 2, 2019 for goods in Class 25; and Brazilian trademark registration No. 840012519 for SPOTIFY, registered as of February 3, 2015 for goods in Class 9. The disputed domain name was registered on October 23, 2018, and does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant points out that its Spotify app is the world’s most popular audio streaming subscription service with 299 million monthly active users as of July 2020, including 138 million paying subscribers. The Complainant has 4,405 employees and offices in several countries and had revenues of EUR 6.764 billion in 2019. The Complainant owns the trademark registrations for SPOTIFY mentioned above. According to the Complainant, the disputed domain name incorporates its trademark in its entirety, with the addition of the new generic Top-Level Domain (“gTLD”) “.link”. The gTLD must be disregarded under the confusing similarity test (the Complainant refers to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”, section 1.11). The disputed domain name is thus identical to the Complainant’s registered SPOTIFY trademark. The Complainant asserts that the Respondent was never authorized to use the SPOTIFY trademark or to incorporate it in any domain name. The Respondent is not in any way known by reference to the term “Spotify”, according to the online searches performed by the Complainant. The Respondent’s identity was disguised by a privacy service, the Complainant points out, but was obtained and disclosed by the Center. The Complainant says that the Respondent does not hold any trademark rights in the name “Spotify”, which the results of its further searches demonstrates. The Complainant also maintains that the name “Spotify” has become so strongly linked with the Complainant that the Respondent was undoubtedly aware of the Complainant when registering the disputed domain name. The Complainant points out that the Respondent makes no use of the disputed domain name, which resolves to an inactive webpage where the only information provided is that the disputed domain name is “not found” in Portuguese. The Complainant points to several UDRP panels that have decided that when respondents fail to make any use of a disputed domain name and solely point that domain name to an inactive page, they have no rights or legitimate interests in the domain name. Because the disputed domain name is identical to the Complainant’s SPOTIFY trademark, it carries with it a high risk of implied affiliation, according to the Complainant, so that no future uses could ever be considered fair. The Respondent therefore has no rights or legitimate interests in the disputed domain name. The Complainant says that Spotify AB was founded in 2006, and therefore the name Spotify has been associated with the Complainant for 14 years. The Complainant’s trademarks were registered many years before the creation of the disputed domain name, and the Complainant has trademark rights in SPOTIFY in Brazil, where the Respondent is located. Because the mark SPOTIFY is, according to the Complainant, well-known and distinctive, and its services have many millions of subscribers and users around the world, the Respondent was well aware of the Complainant’s activities and trademarks. The Complainant points out that the Respondent is active in the field of radio transmission services and that on a website resolving to another domain name he owns, there is a reference to SPOTIFY and the mark itself is displayed. The Complainant points out that the “.link” extension further reinforces the impression of a connection with the Complainant, because of the latter’s Spotify Connect platform feature. The Complainant asserts that the passive holding doctrine applies in the present circumstances, as its trademark has a strong reputation, there is no evidence of any actual or contemplated good faith use by the Respondent, and the Respondent has taken active steps to conceal its true identity. Moreover, the use of a domain name connected with a well-known trademark by someone with no connection to that trademark suggests opportunistic bad faith, according to the Complainant. Although he must have been fully aware of the infringing nature of his activities, the Respondent did not reply to a cease and desist letter sent by the Complainant. According to the Complainant, the Respondent thus registered and used the disputed domain name in bad faith. B. Respondent The Respondent did not substantively reply to the Complainant’s contentions. However, the Respondent submitted an informal communication on October 27, 2020, which indicated the Respondent’s lack of intention to maintain the disputed domain name. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has provided evidence of its registered trademark SPOTIFY, as described above. The disputed domain name is identical to the Complainant’s registered trademark SPOTIFY. Therefore the Panel holds that the disputed domain name is identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests There is nothing before the Panel to indicate that the Respondent has any rights or legitimate interests in the disputed domain name. The Respondent is not known by the term “spotify”, and has no legitimate basis, or authorization from the Complainant, for making any use of the Complainant’s mark. The Respondent has made no active use of the disputed domain name, which resolves to an inactive parking page. The communication the Respondent addressed to the Center on October 27, 2020 is not material to his continued holding of the disputed domain name and thus of no consequence here. Accordingly, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which has not been rebutted by the Respondent. Furthermore, the composition of the disputed domain name, being identical to the Complainant’s mark, carries a high risk of implied affiliation and cannot constitute fair use in this case. Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Complainant’s streaming services rendered under the mark SPOTIFY were accessed by nearly 300 million users as of July 2020. The SPOTIFY trademark is highly distinctive and was registered and used for a considerable number of years before the registration of the disputed domain name by the Respondent. The material put before the Panel by the Complainant further indicates that the Respondent was well aware of the Complainant, its marks, and its online streaming service at the time of registration of the disputed domain name. The passive holding of the disputed domain name suggests bad faith opportunism, as does the use of a privacy service in these circumstances. The fact that the Respondent purported to react by appropriate and immediate measures to the notification of Complaint in this proceeding is disingenuous and his correspondence failed to address the fact of his continued holding of the disputed domain name, which lies at the heart of this matter. The deactivation of the corresponding web presence, modest as it was, is thus of no consequence and does not counter the inferences of bad faith that result from the other material before the Panel. Therefore the Panel holds that the disputed domain name was registered and 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 William A. Van Caenegem
Sole Panelist
Date: November 2, 2020.
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