WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Spotify AB v. S.R. Vermeul

Case No. DNL2012-0021

1. The Parties

The Complainant is Spotify AB of Stockholm, Sweden, internally represented.

The Respondent is S.R. Vermeul of Hillegom, The Netherlands.

2. The Domain Name and Registrar

The disputed domain name <spotify.nl> (the “Domain Name”) is registered with SIDN through TransIP BV.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 12, 2012. On April 16, 2012, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On April 17, 2012, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).

In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 18, 2012. In accordance with the Regulations, article 7.1, the due date for Response was May 8, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on May 9, 2012.

The Center appointed Richard C.K. van Oerle as the panelist in this matter on May 23, 2012. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.

After reviewing the case file, the Panel issued the Administrative Panel Procedural Order No. 1 (the “Procedural Order”) on May 31, 2012, inviting the Complainant to submit further information. The text of the Procedural Order is attached as Appendix 1 to this Decision. On June 4, 2012, the Complainant responded to the Procedural Order.

On June 6, 2012, the Center informed the parties that the revised due date for the Decision in this case would be June 15, 2012, ultimately leading to the present date of the Decision.

4. Factual Background

The Panel will proceed on the facts as stated by the Complainant and will take into account the information provided by the Center and by SIDN.

The Complaint is based on, inter alia, International Registration 921642 of January 4, 2007 (with basic registration in Sweden, filed on December 8, 2006, and protection granted for the European Community), for the word mark SPOTIFY, for products in class 9 and services in classes 35, 38 and 41, (hereafter the “Trademark”).

The Domain Name was first registered on October 17, 2007. The date of the current registration is November 26, 2009, by new registration.

At the time of filing of the Complaint with the Center (April 12, 2012) the Trademark was registered in the name of Spotify Limited of London, United Kingdom of Great Britain and Northern Ireland (hereafter “Spotify Limited”). In response to the Procedural Order the Panel received a copy of a “Request For The Recording Of Change Of Ownership with WIPO”, received by WIPO on March 29, 2012, indicating that the Trademark had been transferred from Spotify Limited to the Complainant.

Use of the Domain Name

The Domain Name resolves to a webpage under the name “Spotify”, with as pay-off “dé beste sites gespot” (in English: “The best sites spotted”). It currently shows the homepage of the website “www.dontshootmycar.com”.

5. Parties’ Contentions

A. The Complainant

The Complainant is the owner of a number of trademarks around the world, including in The Netherlands. The Domain Name is identical to the Trademark, and, according to the Complainant, “being a mere addition of a generic and descriptive word to our novel word creation”.

The Domain Name is also deceptively similar to the registered business name of the Complainant’s subsidiary in The Netherlands, Spotify Netherlands N.V.

From cursory Internet and trademark searches it appears that the Respondent has no registrations of trademarks or other rights in the word “spotify”.

The Domain Name resolves to a website that is apparently being used to generate revenue via ad display. Internet users would reasonably expect to find the Complainant’s music services at the site. The Respondent is misleading, misdirecting users, and is deriving income from such. The Domain Name has been registered later than the Trademark and after the Complainant became known under its marks.

B. The Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with article 10.3 of the Regulations, since no Response has been filed by the Respondent, the Panel will have to decide on the basis of the Complaint. Based on this article, the Panel will have to grant the Complaint unless it seems unlawful or without merit. Therefore, the Panel will review the Complaint on this basis.

Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:

A. The domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and

B. The respondent has no rights to or legitimate interests in the domain name; and

C. The domain name has been registered or is being used in bad faith.

Considering these conditions, the Panel rules as follows:

A. Identical or Confusingly Similar

The Complainant has established that it is the owner of trademark rights protected under Dutch law for SPOTIFY.

It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark on the one hand, and the domain name on the other hand (see: Caterpillar Inc. v. H. van Zuylen Materieel, WIPO Case No. DNL2011-0073; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).

Numerous .nl panels have found that a domain name that wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Regulations (see, e.g., Stichting VVV Groep Nederland v. C. Henriquez, WIPO Case No. DNL2008-0040). Here in fact, the Domain Name incorporates the entirety of the SPOTIFY trademark without further additions.

As the Complainant’s trademark rights are sufficient to fulfill the first requirement of the Regulations, the Panel shall not address the extent to which the Complainant may be able to invoke rights in a relevant trade name in this case.

The Panel finds that the Domain Name is identical to the Complainant’s Trademark within the meaning of article 2.1(a) of the Regulations. Therefore the first criterion is met.

B. Rights or Legitimate Interests

The Complainant states that the Respondent has no rights in the term “spotify” and that the Domain Name resolves to a website that is apparently being used to generate revenue via ad display. The Complainant has found no good faith use or bona fide offering of goods or services on the website linked to the Domain Name. The Respondent did not file any Response and the Panel has not found any rights or legitimate interests that the Respondent may have in the Domain Name in the record, and will have to presume it has none.

The Panel therefore rules that the Complainant has met the second ground of the Regulations as set out in article 2.1(b).

C. Registered or Used in Bad Faith

Pursuant to article 2.1(c) of the Regulations, the Complainant must assert and establish that the Domain Name has been registered or is being used in bad faith.

The Complainant states that the Domain Name was registered and is being used in bad faith. Internet users would reasonably expect to find the Complainant’s music services at the website to which the Domain Name resolves. Internet users are attracted to the Respondent’s website through confusion with the Trademark, and the Respondent is deriving income from such use. The Complainant has provided a screenshot of the website to which the Domain Name resolves confirming such use.

The Panel deems that the Domain Name is being used for commercial gain, by attracting Internet users to the Respondent’s website through the likelihood of confusion with the Complainant’s Trademark within the meaning of article 3.2(d) of the Regulations. Consequently, the Panel finds that the Domain Name was registered and is being used in bad faith.

The Panel therefore rules that the Complainant has met the third ground of the Regulations as set out in article 2.1(c).

7. Decision

For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name <spotify.nl> be transferred to the Complainant.

Richard C.K. van Oerle
Panelist
Dated: June 20, 2012

Administrative panel procedural order No. 1

Complainant has been informed that the Center appointed Richard C.K. van Oerle as the panelist in this matter on May 23, 2012. Before rendering its decision, the Panel will invite Complainant to provide further information.

Complainant is Spotify AB, with address Birger Jarlsgatan 6, 11434 Stockholm, Sweden.

Complainant claims that it is entitled to a number of trademarks around the world, including in The Netherlands.

In the Complaint, Complainant refers to Annex 2 on which is listed (amongst others) International Registration 921642, with “owner Spotify AB”.

As Complainant did not provide the Panel with a copy of the registration itself, the Panel searched the register and found out that the information given by Complainant was incorrect. From the WIPO - Romarin - database of International Registrations it became clear to the Panel that the holder of said trademark registration is Spotify Limited, with address 30 Great Pulkteney Street London W1F 9NN, United Kingdom. Being provided with incorrect information could give grounds for dismissing the Complaint.

The Panel therefore invites Complainant to provide convincing evidence and arguments from which the Panel can conclude that the claim is nevertheless admissible.

If Complainant also relies on trade name rights in The Netherlands, Complainant should provide the Panel with information about its use of the trade name, as a result of which Complainant is know under the trade name in The Netherlands, as use of a name is the only way to establish trade name rights in The Netherlands.

In the submission to be made, Complainant will also have the opportunity to demonstrate that Respondent has no rights to or legitimate interests in the disputed domain name (a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, see article 2.1(b) of the Regulations) and substantiate that the disputed domain name has been registered or is being used in bad faith.

The submission should be received by the Center not later than on June 7, 2012.

Richard C.K. van Oerle
Panelist
Dated: May 31, 2012