Country Music Association, Inc. v. John Mayer
Claim Number: FA1009001344881
Complainant is Country Music Association, Inc. ("Complainant"), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is John Mayer ("Respondent"), Wyoming, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cmafest.info>, registered with GoDaddy.com Inc. (R171-LRMS).
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 3, 2010; the National Arbitration Forum received payment on September 7, 2010.
On September 7, 2010, GoDaddy.com Inc. (R171-LRMS) confirmed by e-mail to the National Arbitration Forum that the cmafest.info domain name is registered with GoDaddy.com Inc. (R171-LRMS) and that Respondent is the current registrant of the name. GoDaddy.com Inc. (R171-LRMS) has verified that Respondent is bound by the GoDaddy.com Inc. (R171-LRMS) 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 September 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@cmafest.info. Also on September 8, 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 13, 2010, pursuant to Complainant's request to have the dispute decided by a 1-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cmafest.info> domain name is confusingly similar to Complainant’s CMA mark.
2. Respondent does not have any rights or legitimate interests in the <cmafest.info> domain name.
3. Respondent registered and used the <cmafest.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Country Music Association, Inc., holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its CMA mark (e.g., Reg. No. 3,561,168 issued January 13, 2009). Complainant uses its CMA mark in connection with the presentation of country music awards, and advocacy for, and promotion of, the country music industry. Complainant also presents the CMA Music Festival, a multiple day event featuring music concerts, known to many fans and attendees as “CMA Fest.” Complainant provides information about its CMA Music Festival on its website resolving from the <cmafest.com> domain name.
Respondent, John Mayer, registered the disputed domain name on September 1, 2010. The disputed domain name resolves to a website that features graphics and content copied directly from Complainant’s <cmafest.com> website. Respondent’s website purports to allow Internet users to watch the CMA Music Festival but instead displays pop-up advertisements when users click the displayed links. Internet users are then asked to complete an offer in order to view video clips.
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."
In view of 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 draw such inferences it 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 that 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 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 asserts rights in its CMA mark based on its registration of the same with the USPTO (e.g., Reg. No. 3,561,168 issued January 13, 2009). The Panel finds that Complainant’s registration of its CMA mark with the USPTO satisfactorily proves Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant alleges that Respondent’s <cmafest.info> domain name is confusingly similar to Complainant’s CMA mark. Respondent’s disputed domain name adds the descriptive term “fest,” which likely refers to Complainant’s annual country music festival, and the generic top-level domain (“gTLD”) “.info.” The Panel finds that the addition of a term describing Complainant’s business, along with a gTLD, are not sufficient to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must first make a prima facie case in support of its allegations, then the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds that based on the arguments made in the Complaint, Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings. Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). However, the Panel will examine the record in light of the factors contained in Policy ¶ 4(c) to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Complainant asserts that Respondent is not commonly known by the <cmafest.info> domain name. The WHOIS information indicates the registrant of the disputed domain name is “John Mayer.” The Panel concludes that, as the WHOIS information fails to identify Respondent as commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts that Respondent’s website purports to allow Internet users to watch the CMA Music Festival, but instead displays pop-up advertisements when users click the displayed links. Complainant presumes, and the Panel agrees, that Respondent profits from the pop-up advertisements featured on the resolving website. The Panel therefore concludes that Respondent is not using the disputed domain name in connection with 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 De La Rue Holdings PLC v. Video Images Prods. L.L.C., FA 196054 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent was not using the <delaru.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent was using the domain name to “subject unsuspecting users to a barrage of unsolicited [pop-up] advertisements,” presumably for commercial benefit); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (holding that the respondent’s use of the <toyrus.com> domain name, a simple misspelling of the complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Complainant alleges that the disputed domain name resolves to a website that features graphics and content copied directly from Complainant’s <cmafest.com> website. The Panel finds that Respondent is attempting to pass itself off as Complainant. The Panel further finds that this is evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s disputed domain name resolves to a website that subjects Internet users to pop-up advertisements when they try to click on displayed links to Complainant’s CMA Music Festival. The Panel presumes that Respondent profits in some way from the pop-up advertisements featured on Respondent’s resolving website. As such, the Panel concludes that Respondent registered and is using the confusingly similar disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion as to the source, sponsorship, or affiliation with Complainant. The Panel finds that Respondent has demonstrated bad faith pursuant to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent used a misspelling of the complainant’s famous mark to attract Internet users to a series of advertisements); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name).
Complainant argues that Respondent registered the <cmafest.info> domain name on September 1, 2010, the same day that the CMA Music Festival aired on television. The Panel finds that Respondent’s registration amounts to opportunistic bad faith under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
Complainant asserts that Respondent’s disputed domain name features graphics and content from Complainant’s official website resolving from the <cmafest.com> domain name. The Panel finds that Respondent’s attempt to pass itself off as Complainant is further evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”).
The Panel finds Complainant has satisfied 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 <cmafest.info> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: October 21, 2010
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