National Academy of Recording Arts & Sciences, Inc. v. High Profile Rentals
Claim Number: FA1305001498426
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Cassie C. Anderson of Greenberg Traurig, LLP, Georgia, USA. Respondent is High Profile Rentals (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <grammyawardscarservice.com> and <grammyawardsluxuryrentals.com>, registered with GODADDY.COM, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 6, 2013; the National Arbitration Forum received payment on May 6, 2013.
On May 8, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <grammyawardscarservice.com> and <grammyawardsluxuryrentals.com> domain names are registered with GODADDY.COM, LLC and that Respondent is the current registrant of the names. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 May 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 28, 2013 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@grammyawardscarservice.com, postmaster@grammyawardsluxuryrentals.com. Also on May 8, 2013, the 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 June 6, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has rights in the GRAMMY AWARDS mark, used in connection with the music industry. Complainant is the owner of registrations for the GRAMMY AWARDS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,827,248 registered March 30, 2004).
The <grammyawardscarservice.com> and <grammyawardsluxuryrentals.com> domain names are confusingly similar to Complainant’s mark. Both of the disputed domain names contain Complainant’s mark in its entirety. The <grammyawardscarservice.com> domain name differs due to the addition of the generic terms “car” and “service,” while the <grammyawardsluxuryrentals.com> domain differs due to the addition of the generic terms “luxury” and “rentals.” The additions do not distinguish the at-issue domain names from Complainant’s mark. Further, the addition of generic top-level domains does nothing to distinguish the disputed domain names from Complainant’s mark.
Respondent does not own any rights or have any legitimate interests in the <grammyawardscarservice.com> and <grammyawardsluxuryrentals.com> domain names. Respondent is not commonly known by either of the domain names. The WHOIS information identifies “High Profile Rentals” as the domain name registrant for both of the disputed domain names. Respondent’s use of the disputed domain names is not a bona fide offering a goods or services or a legitimate noncommercial or fair use. Respondent is using the disputed domain names to advertise Respondent’s “High Profile Luxury Rentals.” Respondent is not connected with Complaint or its mark.
Respondent registered and is using the <grammyawardscarservice.com> and <grammyawardsluxuryrentals.com> domain names in bad faith. Respondent’s registration and use of the disputed domain names constitutes a disruption to Complainant’s business. Respondent is intentionally attempting to attract Internet users to the disputed domain names by creating a likelihood of confusion with Complainant. Respondent is diverting traffic away from Complainant’s official sites and its official sponsors and partners. Respondent had constructive or actual notice of Complainant’s mark when Respondent registered the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for GRAMMY AWARDS.
Respondent is not affiliated with Complainant and had not been authorized to use the GRAMMY AWARDS mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in GRAMMY AWARDS marks.
The <grammyawardscarservice.com> and <grammyawardsluxuryrentals.com> domain names are used by Respondent to address a website advertising “High Profile Luxury Rentals.”
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.”).
Complainant’s USPTO registration for the GRAMMY AWARDS mark shows Complainant has rights in such mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Each at-issue domain names contain Complainant’s mark in its entirety less the spaces between the mark’s two terms. The <grammyawardscarservice.com> domain name is further differentiated by the addition of the generic terms “car” and “service,” while the <grammyawardsluxuryrentals.com> differs due to the addition of the generic terms “luxury” and “rentals.” To form the at-issue domain names Respondent appends a necessary top level domain name, here “.com,” to each. However, despite these differences the Panel finds that Respondent’s <grammyawardscarservice.com> and <grammyawardsluxuryrentals.com> domain names are each confusingly similar to Complainant’s GRAMMY AWARDS mark within the meaning of Policy ¶ 4(a)(i). 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); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either of the domain names.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in either of the at-issue domain names, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “High Profile Rentals” as the at-issue domain names’ registrant. Moreover, the record before the Panel contains no evidence suggesting that Respondent is otherwise commonly known by either of the at-issue domain names. The Panel thus concludes that Respondent is not commonly known by either at-issue domain name for the purposes of 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 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).
Respondent uses the at-issue domain names to address a website that advertises Respondent’s “High Profile Luxury Rentals,” the name under which Respondent provides its luxury car services. Using the at-issue domain names in this manner is neither bona fide offering a goods or services under Policy ¶4(c)(ii), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”) T
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names pursuant to Policy ¶4(a)(ii).
The at‑issue domain names were each registered and used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith regarding the domain names pursuant to paragraph 4(a)(iii) of the Policy.
Respondent’s <grammyawardscarservice.com> and <grammyawardsluxuryrentals.com> addresses a website that ostensibly provides luxury car services, including limousine services. Attendees of Complainant’s GRAMMY AWARDS-branded ceremonies are likely to use such services. Therefore, Respondent’s use of the confusingly similar domain names will likely lead Internet users to believe that Respondent’s services, offered on the <grammyawardscarservice.com> and <grammyawardsluxuryrentals.com> addressed website, are connected to, endorsed by, or sponsored by Complainant. These circumstances suggest the at-issue domain names are being used improperly to attract Internet users looking for Complainant to Respondent’s website for commercial gain and thus demonstrate bad faith registration and use of the <grammyawardscarservice.com> and <grammyawardsluxuryrentals.com> domain names pursuant to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Finally, the website addressed by the two domain names shows a picture of Complainant’s copyrighted gramophone statuette and uses the term “Official Site of the…” The website also displays Complainant’s GRAMMY AWARDS mark. The Panel thus concludes that Respondent had knowledge of Complainant’s well-known trademark when registering the at-issue domain names. Knowingly registering the trademark of another in a confusingly similar domain name indicates Respondent’s bad faith under the Policy. See 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 had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grammyawardscarservice.com> and <grammyawardsluxuryrentals.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 11, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page