National Academy of Recording Arts & Sciences, Inc. v. zheng yuzao
Claim Number: FA1203001436471
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is zheng yuzao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grammy-usa.com>, registered with XIN Net Technology Corporation.
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 March 26, 2012; the National Arbitration Forum received payment March 26, 2012. The Complaint was submitted in both English and Chinese.
On April 4, 2012, XIN Net Technology Corporation confirmed by e-mail to the National Arbitration Forum that the <grammy-usa.com> domain name is registered with XIN Net Technology Corporation and that Respondent is the current registrant of the name. XIN Net Technology Corporation verified that Respondent is bound by the XIN Net Technology Corporation registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 13, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of May 3, 2012, 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@grammy-usa.com. Also on April 13, 2012, the Chinese language Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 9, 2012, 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 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.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings Chinese. The Panel chooses to place the following language in the applicable place in the decision template, after review of the applicable rules on language of the proceedings under the UDRP:
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
2010, Shanhai Grammy Garments Co., Ltd of huge sums of money, and achieved a “Grammy” and graphic marks the Greater China region exclusive rights qualifications, the company wholeheartedly welcome the related strength of corporate and personal cooperation and common development, the Grammy (Grammy) brand China regional business. (Grammatical errors in the original.)
Complainant established that it has rights to the mark contained within the disputed domain name.
Respondent has no rights to or legitimate interests in the mark contained within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
The confusing similarity of the disputed domain name and Respondent’s use of the disputed domain permit an inference that Respondent had actual knowledge of Complainant’s rights to and legitimate interests in its protected mark.
Respondent registered and used the disputed domain name in bad faith.
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."
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.
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.”).
According to Complainant, Complainant began using the GRAMMY mark in 1959 in connection with its award and broadcast of the award show. Complainant provides the Panel with evidence of its trademark registrations with the USPTO (e.g., Reg. No. 887,642 registered March 10, 1970) and SAIC (e.g., Reg. No. 776,706 registered January 28, 1995) for its GRAMMY mark. After reviewing Complainant’s trademark registrations, the Panel finds that Complainant owns rights in its GRAMMY mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Norgren, Inc. v. sh ying zhe, FA 1318448 (Nat. Arb. Forum June 2, 2010) (holding that the complainant’s trademark registration with China’s SAIC was sufficient to establish rights in the mark under Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <grammy-usa.com> domain name differs from Complainant’s GRAMMY mark by the addition of the geographic term “usa” and the gTLD “.com.” The Panel notes that the disputed domain name also contains a hyphen. The Panel finds that the addition of a geographic term and a hyphen to a disputed domain name do not adequately distinguish the disputed domain name from a mark. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). The Panel also finds that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also 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.”). The Panel finds that Respondent’s <grammy-usa.com> domain name is confusingly similar to Complainant’s GRAMMY mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case to support its allegations that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once Complainant does so, the burden of proof shifts to Respondent to show that it does have such 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. Complainant satisfies its burden in this case and the burden [of proof] shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Respondent did not respond to Complainant’s allegations and, therefore, the Panel notes that Respondent did not present any evidence that it is commonly known by the <grammy-usa.com> domain name. Complainant claims that Respondent is not affiliated with Complainant and that Complainant did not license Respondent to use the GRAMMY mark. Complainant also contends that the WHOIS information, which lists “zheng yuzao” as the registrant of the disputed domain name, indicates that Respondent is not nominally or commonly known by the disputed domain name. Based on the evidence in the record and the lack of evidence from Respondent, the Panel finds that Respondent is not commonly known by the <grammy-usa.com> domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Complainant alleges that Respondent holds itself out as a licensee on the website resolving from the <grammy-usa.com> domain name. Complainant notes that Respondent posted the following statement on the resolving website:
2010, Shanhai Grammy Garments Co., Ltd of huge sums of money, and achieved a “Grammy” and graphic marks the Greater China region exclusive rights qualifications, the company wholeheartedly welcome the related strength of corporate and personal cooperation and common development, the Grammy (Grammy) brand China regional business. (Grammatical errors in the original).
Complainant contends that Respondent offers souvenir items that are identical to Complainant’s souvenir items. In support of this contention, Complainant provides a screenshot of the resolving website and a screenshot of its own souvenir website. A comparison of Complainant’s Annex 18 with Complainant’s Annex 17 supports Complainant’s allegation. Complainant additionally asserts that Respondent uses Complainant’s marks and pictures from Complainant’s award show and provides video clips of the telecast of Complainant’s award show, which Complainant argues is a commercial use that competes with Complainant’s business and further creates the impression that Respondent is associated with Complainant. The Panel finds that Complainant’s description of the resolving website is accurate and finds that Respondent is not making a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <grammy-usa.com> domain name. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
As noted under Policy ¶ 4(a)(ii), Complainant contends that Respondent’s <grammy-usa.com> domain name resolves to a website containing video clips of Complainant’s award telecast, pictures of Complainant’s award show, and souvenir items that are identical to Complainant’s souvenir items. Complainant alleges that Respondent is competing with Complainant by offering this content and that this competing use disrupts Complainant’s business. The Panel finds that Respondent disrupts Complainant’s business and that Respondent registered and uses the <grammy-usa.com> domain name in bad faith under Policy ¶ 4(b)(iii). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the GRAMMY mark. Any discussion of constructive knowledge is irrelevant because constructive knowledge does not support findings of bad faith. However, as Complainant argues, Respondent's offering of Complainant's own products and content indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent’s use of the domain name shows that Respondent had actual knowledge of Complainant's mark and rights. Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Respondent makes no contentions relative to 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 <grammy-usa.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 23, 2012.
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