National Academy of Recording Arts & Sciences, Inc. v. Abrams Cohen Phelps Phillips Stein
Claim Number: FA1009001344880
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Greenberg Traurig, LLP, Georgia, USA. Respondent is Abrams Cohen Phelps Phillips Stein (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <grammymaker.com> and <teengrammymaker.com> registered with GoDaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 3, 2010.
On September 7, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <grammymaker.com> and <teengrammymaker.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 14, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 4, 2010, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@grammymaker.com and postmater@teengrammymaker.com by e-mail. Also on September 14, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <grammymaker.com> and <teengrammymaker.com> domain names are confusingly similar to Complainant’s GRAMMY mark.
2. Respondent has no rights to or legitimate interests in the disputed domain names.
3. Respondent registered and used the disputed domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Academy of Recording Arts & Sciences, Inc., has used its GRAMMY mark since 1958 in connection with numerous goods and services in the music industry including the Grammy Awards. Complainant’s official website <grammy.com> offers information about Complainant’s Grammy Awards. Complainant holds numerous trademark registrations for its GRAMMY mark with United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,865,177 issued November 29, 1994).
Respondent, Abrams Cohen Phelps Phillips Stein, registered the disputed domain name <grammymaker.com> March 18, 2010, and <teengrammymaker.com> April 8, 2010. Respondent is using the disputed domain names to advertise the services of “Ramone Worldwide,” a music producer.
Paragraph 15(a) of 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."
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Complainant contends it has established rights in the GRAMMY mark. The Panel agrees. Previous panels have found that a trademark registration with a federal trademark authority is sufficient to establish rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Therefore, this Panel finds that Complainant has rights in its GRAMMY mark under Policy ¶ 4(a)(i) based on its registration of the mark with the USPTO (e.g., Reg. No. 1,865,177 issued November 29, 1994).
Complainant contends that Respondent’s disputed domain names are confusingly similar to Complainant’s GRAMMY mark. The disputed domain names contain the identical mark of Complainant and differ from Complainant’s mark only by the addition of the generic terms “teen” and “maker” and the addition of a generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic term does not distinguish the disputed domain names from Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel finds that the addition of a gTLD also does not distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s GRAMMY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant urges that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant makes a prima facie showing to support its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that this Complainant made a prima facie case to support its argument that Respondent has no rights or legitimate interests in the disputed domain names.
Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent has no rights or legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, this Panel still examines the record to determine whether evidence before the Panel suggests that Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain names. Complainant argues that it has not authorized or licensed Respondent to use its registered trademark in the domain names. The Panel finds no evidence in the record that would provide a basis for finding that Respondent is commonly known by the disputed domain name. The WHOIS information identifies Respondent as “Abrams Cohen Phelps Phillips Stein,” which is not similar to the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under a Policy ¶ 4(c)(ii) analysis. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain names to advertise the services of “Ramone Worldwide,” a music producer and to solicit new clients for Ramone Worldwide. The Panel finds that Respondent’s use of the confusingly similar disputed domain names to operate a website that advertises services and solicits Respondent’s own business is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s disputed domain names redirect Internet users to a website in order to advertise the commercial services of Ramone Worldwide and to solicit new clients. Complainant alleges that Respondent’s use of the disputed domain names disrupts its business because it diverts Internet users who are looking for services offered by Complainant to other websites that offer the services of Ramone Worldwide. The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s music industry business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel is permitted to make an inference under these facts that Internet users searching for Complainant may find Respondent’s confusingly similar websites and may become confused as to Complainant’s sponsorship of and affiliation with the disputed domain names and resolving websites. Respondent attempts to profit from this confusion by advertising Ramone Worldwide’s services and by soliciting new clients. The Panel finds that Respondent’s use of the disputed domain names supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
The Panel finds that Respondent registered and used the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grammymaker.com> and <teengrammymaker.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: October 28, 2010.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum