Claim Number: FA0811001232078
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”),
represented by Joel R. Feldman, of Greenberg Traurig, LLP, Georgia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grammyu.com>, registered with Name.net LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 3, 2008.
On November 4, 2008, Name.net LLC confirmed by e-mail to the National Arbitration Forum that the <grammyu.com> domain name is registered with Name.net LLC and that the Respondent is the current registrant of the name. Name.net LLC has verified that Respondent is bound by the Name.net LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 26, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on November 26, 2008.
An Additional Submission was received from Complainant on December 1, 2008, and was determined to be timely and complete according to Supplemental Rule 7.
On December 5, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. The <grammyu.com> domain name is confusingly similar to Complainant's mark.
2. Respondent has no rights or legitimate interest in the <grammyu.com> domain name.
3. Respondent has registered and used the <grammyu.com> domain name in bad faith.
Respondent has not contested the transfer of the disputed domain name but instead agrees to transfer the domain name in question to Complainant.
C. Additional Submissions
Complainant, in its Additional Submission, has explicitly not consented to the transfer of the <grammyu.com> domain name without a decision on the merits by the Panel.
The disputed domain name is used to point to a landing page generating “click-through” fees that Respondent receives when Internet users click through to the third-party websites.
Respondent argues that the disputed domain name was acquired by an automated system with a focus on expired domains and that all names are reviewed for trademark issues using both automated software and human review. Respondent does not know why the system failed to catch the disputed domain name at issue here.
Respondent first became aware of Complainant and its asserted rights upon receipt of the Complaint.
When Respondent became aware of Complainant and its claims, it immediately contacted Complainant to resolve the matter by a voluntary transfer of the Domain, without charge or condition.
Complainant responded that, while it prefers to resolve matters without litigation, it was unable to do so in this matter as a result of Respondent’s privatization of the registry information for <grammyu.com>. As a result, Complainant incurred significant fees in preparing and filing the Complaint. Complainant was nevertheless willing to forgo the benefits of a favorable decision if Argo were to:
(1) reimburse Complainant for its legal fees and filing fees of $5,000;
(2) agree not to register any new domain names that incorporate GRAMMY"; and
(3) agree to transfer any currently-owned domain names that incorporate GRAMMY.
Preliminary Issue: Consent to Transfer
Although Respondent consents to transfer the <grammyu.com> domain name to Complainant, the Panel cannot, in view of the particular elements of fact of this case, decide to forego the traditional UDRP analysis and order an immediate transfer of the <grammyu.com> domain name.
The Panel notes that Complainant, in its Additional Submission, has explicitly not consented to the transfer of the <grammyu.com> domain name without a decision on the merits by the Panel.
Also, the Panel finds that the “consent-to-transfer” approach is but one
way for cybersquatters to avoid adverse findings against them. In Graebel
Van Lines, Inc. v.
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy.
As Respondent choose the privatization of the registry information for <grammyu.com>, used the domain name in a landing page generating “click-through” fees that Respondent receives when Internet users click through to the third-party websites, and refused to accept the transfer conditions of Complainant which the Panel qualifies as reasonable, the Panel chooses to decide the case on the merits. In that respect, it is irrelevant that Respondent had never been involved in a UDRP case and has never before received a claim or demand regarding any domain name it holds.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has rights in the GRAMMY mark pursuant to Policy ¶ 4(a)(i) due to its registration with the United States Patent and Trademark Office (“USPTO”) on November 29, 1994 (Reg. No. 1,865,177). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
The disputed <grammyu.com> domain name is confusingly similar to its GRAMMY mark. The <grammyu.com> domain name differs from Complainant’s mark in two ways: (1) the letter “u” has been added to the end of the mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added to the end of the mark. The Panel finds that adding one letter to a mark does not sufficiently distinguish a domain name from that mark. See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that <oicq.net> and <oicq.com> are confusingly similar to the complainant’s mark, ICQ). The Panel also finds that the addition of a gTLD does not sufficiently distinguish a domain name from the mark it incorporates, because every domain name must include a top-level domain. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel finds that these changes to the GRAMMY mark do not minimize or eliminate the resulting likelihood of confusion, and that therefore, Respondent’s <grammyu.com> domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <grammyu.com> domain name, nor has it ever been the owner or licensee of the GRAMMY mark. The WHOIS record for the disputed domain name lists Respondent as “Argo Technologies LLC.” The Panel therefore finds that Respondent is not commonly known by the <grammyu.com> domain name pursuant to Policy ¶ 4(c)(ii). See MRA Holding, LLC v. Costnet, FA 140454 (Nat. Arb. Forum Feb. 20, 2003) (noting that “the disputed domain name does not even correctly spell a cognizable phrase” in finding that the respondent was not “commonly known by” the name “girls gon wild” or <girlsgonwild.com>); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Respondent is using the <grammyu.com> domain name to bring Internet users to a website that features links to third-party websites unrelated to Complainant. The Panel finds that Respondent’s use of the <grammyu.com> domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that using a domain name to direct Internet traffic to a website featuring pop-up advertisements and links to various third-party websites is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant presumably receives compensation for each misdirected Internet user); see also Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) (finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grammyu.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: December 19, 2008
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