National Academy of Recording Arts & Sciences, Inc. v. zhangjian / jian zhang
Claim Number: FA1208001456997
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is zhangjian / jian zhang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grammycn.com>, registered with Bizcn.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 7, 2012; the National Arbitration Forum received payment on August 7, 2012. The Complaint was received in English and Chinese.
On August 9, 2012, Bizcn.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <grammycn.com> domain name is registered with Bizcn.com, Inc. and that Respondent is the current registrant of the name. Bizcn.com, Inc. has verified that Respondent is bound by the Bizcn.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 15, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of September 4, 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@grammycn.com. Also on August 15, 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 September 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant made the following contentions.
i. USPTO (e.g., Reg. No. 908,384 registered March 10, 1970) and
ii. SAIC (e.g., Reg. No. 776,706 registered January 28, 1995).
Complainant’s official website and banner advertisements.
9. Respondent knew of Complainant’s rights in the GRAMMY mark prior to registering the disputed domain name.
10. Respondent’s use of Complainant’s copyrighted material disrupts Complainant’s business of promoting entertainers and songwriters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1.Complainant is a United States company that presents the internationally-famous Grammy Awards for the music industry and has used its GRAMMY mark for that and related purposes since 1959.
2.Complainant owns trademark registrations for the GRAMMY mark with the United States Patent and Trademark Office ("USPTO") and Chinese State Administration for Industry and Commerce (“SAIC”) as follows:
i. USPTO (e.g., Reg. No. 908,384 registered March 10, 1970) and
ii. SAIC (e.g., Reg. No. 776,706 registered January 28, 1995).
3.Respondent registered the disputed domain name on April 19, 2012 and has caused it to resolve to a website featuring content from Complainant’s official website and banner advertisements without permission from Complainant.
LANGUAGE OF THE PROCEEDINGS
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.
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 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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims that it has rights in the GRAMMY mark through various trademark registrations that it owns, including those with the USPTO (e.g., Reg. No. 908,384 registered March 10, 1970) and the SAIC (e.g., Reg. No. 776,706 registered January 28, 1995). The Panel finds that Complainant has affirmatively established its rights in the GRAMMY mark under Policy ¶ 4(a) (i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a) (i).”).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s GRAMMY mark. Complainant contends that the <grammycn.com> domain name is confusingly similar to the GRAMMY mark. Complainant notes that the disputed domain name contains the entire GRAMMY mark in addition to the country-code “cn,” for China, and the gTLD “.com.” The Panel finds that the addition of geographic terms and a gTLD do not remove the disputed domain name from the realm of confusing similarity. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“[I]t is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); moreover it was decided in National Academy of Recording Arts & Sciences, Inc. v. baoxing c/o yu lin, FA 1277623 (Nat. Arb. Forum Sept. 24, 2009), as Complainant points out, that the domain name <grammyusa.com> was confusingly similar to The Recording Academy’s GRAMMY mark because “the addition of a geographic abbreviation or term does nothing to dispel any confusing similarity between a disputed domain name and a mark, as the term merely suggests that Complainant does business at that location”; see also 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.”). Therefore, the Panel finds that the <grammycn.com> domain name is confusingly similar to Complainant’s GRAMMY mark under Policy ¶ 4(a) (i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s GRAMMY trademark and to use it in its domain name, adding only the letters ”cn” which are widely known to be the country code for China, thus raising the false suggestion that the domain name is an official domain name of Complainant for use in China;
(b) Respondent has then decided to use the domain name to resolve to an
unauthorized website featuring content relating to the Grammy awards from Complainant’s official website and banner advertisements;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant contends that Respondent, “zhangjian / Jian Zhang” per the WHOIS information, is not commonly known as “Grammy,” or “grammycn,” or “grammycn.com.” Complainant also asserts that it has not licensed Respondent to use its copyrighted materials. The Panel notes that Respondent has not come forward with evidence indicating that it is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <grammycn.com> domain name under Policy ¶ 4(c) (ii). 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);
(e) Complainant asserts that Respondent’s use of the <grammycn.com> domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Further, Complainant argues that Respondent’s disputed domain name resolves to a website featuring content from Complainant’s official website and banner advertisements. See Complainant’s Annex 18. Complainant contends that such use disrupts its official business of supporting and advertising for entertainers and songwriters. The Panel finds that such use of Complainant’s GRAMMY mark does not amount to a bona fide offering of goods or services under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii). 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.”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s domain name resolves to a website featuring content from Complainant’s official website and banner advertisements. See Complainant’s Annex 18. Complainant contends that such use disrupts its official business of supporting and advertising for entertainers and songwriters. Complainant notes that it has not licensed Respondent to use any of its copyrighted material to promote artists and songwriters in competition with Complainant. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii) as Respondent is offering Complainant’s products and services without authorization to do so. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b) (iii).”).
Secondly, Complainant also asserts that Respondent’s bad faith registration and use may be shown through Respondent’s actual knowledge of Complainant’s rights in the GRAMMY mark prior to registering the disputed domain name. Complainant notes that the GRAMMY mark is famous worldwide. Complainant also notes that Respondent has used content from Complainant’s website and television broadcasts on the resolving website, thus showing that Respondent had knowledge of the GRAMMY mark. As the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the GRAMMY mark, the Panel finds such knowledge to be evidence of bad faith registration and use under Policy ¶ 4(a) (iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the GRAMMY mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grammycn.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: 12 September 2012
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