National Academy of Recording Arts & Sciences, Inc. v. hafize dilek oz
Claim Number: FA1608001689748
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is hafize dilek oz (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grammytravelservice.com>, registered with Tucows Domains Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 18, 2016; the Forum received payment on August 18, 2016.
On August 18, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <grammytravelservice.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 2016 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@grammytravelservice.com. Also on August 19, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Respondent’s <grammytravelservice.com> domain name is confusingly similar to Complainant’s GRAMMY mark.
2. Respondent does not have any rights or legitimate interests in the <grammytravelservice.com> domain name.
3. Respondent registered and uses the <grammytravelservice.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds a registration for its GRAMMY mark with the Turkish Patent Institute (“TPI”) (Reg. No. 908,384, registered Oct. 6, 2008). Complainant uses the mark in connection with the presentation of the internationally-famous GRAMMY Awards, which are broadcast all over the world including in Respondent’s country of origin, Turkey.
Respondent registered the <grammytravelservice.com> domain name on April 13, 2011, and uses it to offer services related to the GRAMMY Awards.
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(f), 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 (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 asserts that it has rights in the GRAMMY mark based on its registration with the TPI. Prior panels have held that registration with a governmental authority confers rights in a mark under Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).) Accordingly, the Panel finds that Complainant’s Turkish registration of the GRAMMY mark establishes rights under Policy ¶ 4(a)(i).
Respondent’s <grammytravelservice.com> domain name contains Complainant’s GRAMMY mark, and simply adds the generic words “travel service” and the gTLD “.com.” These changes do not distinguish Respondent’s domain name from Complainant’s mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it). Thus, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s GRAMMY mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 (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 (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.”).
Complainant argues that Respondent has no rights or legitimate interests in respect of the <grammytravelservice.com> domain name. Complainant contends that Respondent is not commonly known by the disputed domain, and has no license, permission, or authorization to use its mark. The WHOIS lists “hafize dilek oz” as registrant of the disputed domain name, which does not indicate a connection with the disputed domain name. Coupled with the fact Respondent has not submitted anything for the Panel’s consideration in this proceeding, the Panel finds that Complainant has satisfied its burden under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant contends that Respondent has not used the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Respondent engages in unauthorized commercial use of the disputed domain name. Panels have found that such commercial use does not indicate rights and legitimate interests where respondent has appropriated the mark of a complainant. See Vanderbilt Univ. v. U Inc., FA 893000 (Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant). The Panel finds that Respondent has no rights or legitimate interests in the <grammytravelservice.com> domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent clearly intended to create a connection with Complainant to disrupt Complainant’s business and to profit from Internet user confusion, bad faith under Policy ¶¶ 4(b)(iii) and (iv). The Panel notes the Respondent’s reference to “Travel Service established the day of the Grammys…” which shows an intention to trade off Complainant’s GRAMMY mark. A prior panel has noted bad faith where “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor.” Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000). The Panel agrees that Respondent has used Complainant’s GRAMMY mark in the disputed domain name to disrupt Complainant’s business and to obtain a commercial benefit. See Disney Enters., Inc. v. Noel, FA 198805 (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).”). Thus, the Panel finds that Respondent has exhibited bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the GRAMMY mark prior to registration of the domain names because of Respondent’s reference to Complainant on its resolving website. The Panel agrees and finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
The Panel finds that 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 <grammytravelservice.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 25, 2016
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