National Academy of Recording Arts & Sciences, Inc. v. Mike McCormick
Claim Number: FA1706001736194
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia. Respondent is Mike McCormick (“Respondent”), California.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <grammyfundraisingprizes.com>, <grammyfundraisingprizes.info>, <grammyfundraisingprizes.net>, and <grammyfundraisingprizes.org>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 16, 2017; the Forum received payment on June 16, 2017.
On June 18, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <grammyfundraisingprizes.com>, <grammyfundraisingprizes.info>, <grammyfundraisingprizes.net>, and <grammyfundraisingprizes.org> 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 June 19, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 10, 2017 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@grammyfundraisingprizes.com, postmaster@grammyfundraisingprizes.info, postmaster@grammyfundraisingprizes.net, postmaster@grammyfundraisingprizes.org. Also on June 19, 2017, 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 July 14, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses the GRAMMY mark in connection with its famous annual awards ceremony. Complainant registered the GRAMMY mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 887,642, registered Mar. 10, 1970), which demonstrates its rights in the mark.
2. The <grammyfundraisingprizes.com>, <grammyfundraisingprizes.info>, <grammyfundraisingprizes.net>, and <grammyfundraisingprizes.org> domain names[1] are confusingly similar to Complainant’s mark because each incorporates the GRAMMY mark in its entirety, adding only the generic terms “fundraising” and “prizes,” and a generic top-level domain (“gTLD”), none of which meaningfully distinguish the domain names from Complainant’s registered mark.
3. Respondent has no rights or legitimate interests in the domain names. Respondent is not commonly known by any of the four domain names, nor has Complainant authorized Respondent to use the GRAMMY mark for any purpose.
4. Respondent also fails to use the domain names in connection with any bona fide offering of goods or services, because the domain names redirect to a resolving site promoting Respondent’s seemingly illegitimate charity organization. Respondent capitalizes on the goodwill and notoriety of Complainant’s widely known mark by attempting to indicate an affiliation between Complainant and itself—when, in fact, there is none—which does not constitute a bona fide offering or legitimate noncommercial use of any kind.
5. Respondent registered and continues to use the domain names in bad faith. Respondent’s use of the domain names involves attracting Internet users to its “fundraising” site using Complainant’s notoriety, presumably so that it may financially profit. This results in a disruption of Complainant’s business by decreasing Internet traffic to its own legitimate site, and by potentially implicating Complainant in any harmful or offensive endeavors that Respondent may use the resolving site to conduct.
6. Further, Respondent must have had actual notice of Complainant’s rights in the GRAMMY mark because of its widespread notoriety, and exhibited bad faith behavior in choosing to register the domain names in spite of this notice. Finally, Respondent’s failure to respond to Complainant’s cease and desist letter indicates that Respondent has no intention to cooperate with Complainant to resolve the dispute, which is yet more evidence of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the GRAMMY mark. Respondent’s domain names are confusingly similar to Complainant’s GRAMMY mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <grammyfundraisingprizes.com>, <grammyfundraisingprizes.info>, <grammyfundraisingprizes.net>, and <grammyfundraisingprizes.org> domain names and that Respondent registered and uses the domain names 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 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 has registered the GRAMMY mark—relating to the world-renowned annual musical awards ceremony—with the USPTO as early as 1970 (e.g. Reg. No. 887,642, registered Mar. 10, 1970). Registration of a mark with the USPTO establishes rights in the mark for purposes of the Policy. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office).
The second component of Policy ¶ 4(a)(i) requires that complainants demonstrate that the domain name at issue is identical or confusingly similar to a mark in which the complainant has rights. Here, Complainant argues that the <grammyfundraisingprizes.com>, <grammyfundraisingprizes.info>, <grammyfundraisingprizes.net>, and <grammyfundraisingprizes.org> domain names are confusingly similar to its GRAMMY mark because they each contain the mark in its entirety, incorporating only three minor additions: the generic terms “fundraising” and “prizes,” and one of four gTLDs (“.com,” “.info,” “.net,” and “.org”). The Panel agree that none of these additions sufficiently distinguishes the domain names from the GRAMMY mark. The addition of generic words, particularly words like those at issue here, which are likely to be understood by Internet users as being related to Complainant’s awards ceremony, fail to sufficiently distinguish domain names from registered marks. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i)); see also AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark); 3M Co. v. Silva, FA 1429349 (Forum Mar. 30, 2012) (finding that the “.info” gTLD appended to Complainant’s marks is insufficient to distinguish the <littmanncardiologyiii.info> domain name); Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a gTLD to Complainant’s mark in the <p-zero.org> domain name is inconsequential under Policy ¶ 4(a)(i) analysis). Therefore, this Panel finds that the additions made to Complainant’s GRAMMY mark in the domain names do not serve to differentiate them for the purposes of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <grammyfundraisingprizes.com>, <grammyfundraisingprizes.info>, <grammyfundraisingprizes.net>, and <grammyfundraisingprizes.org> domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <grammyfundraisingprizes.com>, <grammyfundraisingprizes.info>, <grammyfundraisingprizes.net>, and <grammyfundraisingprizes.org> domain names as required by Policy ¶ 4(a)(ii). In addition to asserting that it has neither authorized nor licensed Respondent’s use of the GRAMMY mark for any purpose, Complainant contends that Respondent is not commonly known by the domain names within the meaning of Policy ¶ 4(c)(ii). When a respondent fails to submit a response, panels may look to the WHOIS records to establish the lack of affiliation between a registrant and a domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Here, the WHOIS information concerning each of the <grammyfundraisingprizes.com>, <grammyfundraisingprizes.info>, <grammyfundraisingprizes.net>, and <grammyfundraisingprizes.org> domain names identifies “Mike McCormick” as the registrant, which Complainant provides no evidence that Respondent is commonly known by any of the domain names. As such, the Panel concludes that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the domain names pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant asserts that Respondent lacks rights or legitimate interests in <grammyfundraisingprizes.com>, <grammyfundraisingprizes.info>, <grammyfundraisingprizes.net>, and <grammyfundraisingprizes.org> domain names because Respondent fails to use even one in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, each of the domain names resolves to Respondent’s personal web page, which purports to be a fundraising site. However, the record reflects that the random collection of information and content located therein indicates that the resolving site does not appear to be related to any legitimate undertaking. Further, the records supports Complainant’s contention that Respondent’s use of the GRAMMY mark in connection with this ‘fundraising organization’ is likely to lead Internet users to believe that an affiliation exists between Complainant and Respondent, when in fact none does. Attempting to create such an affiliation when none exists provides evidence of a lack of rights and legitimate interests in a domain name, and does not constitute a bona fide or legitimate noncommercial or fair use in any way. See Google Inc. v. Gridasov, FA 474816 (Forum July 5, 2005) (finding that the respondent’s use of a disputed domain name “[which] may annoy or harm the users in some way . . . is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”). Therefore, the Panel finds Complainant is not using the domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent uses the <grammyfundraisingprizes.com>, <grammyfundraisingprizes.info>, <grammyfundraisingprizes.net>, and <grammyfundraisingprizes.org> domain names to direct Internet users away from Complainant’s own legitimate webpage. Similar conduct has been found to be evidence of bad faith on the part of a respondent. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s own website). Further, Complainant contends Respondent uses the GRAMMY mark’s notoriety to attract Internet users so that it may create the illusion of an affiliation between Complainant and Respondent. Complainant argues that the illusion of an association likely allows Respondent to financially profit in some manner related to its use of the “Puck Fundraising Prizes” site. Capitalizing on the goodwill and notoriety of widely known marks in this way can provide evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Therefore, the Panel concludes that Complainant sufficiently alleged Respondent’s bad faith within the meaning of Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant notes that Respondent failed to respond to Complainant’s cease-and-desist letter. In so doing, Complainant contends Respondent has further shown its bad faith behavior. In some instances, like the present one, a failure to communicate with an opposing party in the face of a cease-and-desist communication provides additional evidence of bad faith. See Seiko Epson Corporation v. Asish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that respondent’s failure to respond to complainant’s demand letter exemplified bad faith). As such, the Panel concludes that Respondent’s behavior constitutes bad faith under Policy ¶ 4(a)(iii).
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 <grammyfundraisingprizes.com>, <grammyfundraisingprizes.info>, <grammyfundraisingprizes.net>, and <grammyfundraisingprizes.org> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 18, 2017
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