National Academy of Recording Arts & Sciences, Inc. v. FAHIM RAHMAN
Claim Number: FA1708001744642
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is FAHIM RAHMAN (“Respondent”), Bangladesh.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grammyawards-live.com>, registered with eNom, 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 Forum electronically on August 15, 2017; the Forum received payment on August 15, 2017.
On August 15, 2017, eNom, LLC confirmed by e-mail to the Forum that the <grammyawards-live.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 August 16, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 5, 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@grammyawards-live.com. Also on August 16, 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 September 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant promotes artistic progress and achievements in the field of music and other recordings. Complainant registered the GRAMMY AWARDS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,202,214, registered June 23, 2006).
Respondent’s <grammyawards-live.com> is confusingly similar to Complainant GRAMMY AWARDS mark because it incorporates the mark in its entirety, eliminates spacing, adds the generic term “live,” a hyphen, and the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in <grammyawards-live.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the GRAMMY AWARDS mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Instead, Respondent’s <grammyawards-live.com> purports to illegally stream the GRAMMY Awards telecast and resolves to a website that directly competes with the Complainant’s business.
Respondent registered and used the <grammyawards-live.com> domain name in bad faith. Respondent had actual knowledge of Complainant’s famous mark because the disputed domain resolved to illegally stream Complainant’s telecast. Respondent registered the disputed domain in an attempt to give the impression of being affiliated with or sponsored by the Complainant. Additionally, Respondent failed to respond to Complaint’s cease and desist letters.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registration for GRAMMY AWARDS.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the GRAMMY AWARDS mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent uses the at-issue domain name to address a website that fraudulently gives the impression to internet visitors that they are dealing with Complainant and further offers a service, namely live internet viewing of the Grammy Awards, which retransmits and unfairly competes with Complainant’s televised program.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the GRAMMY AWARDS mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. It is insignificant that Respondent may be located in Bangladesh. See Expedia, Inc. v. Tan, FA 991075 (Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
The <grammyawards-live.com> contains Complainant’s entire mark less its space, followed by a hyphen, the generic term “live” and the generic top-level domain, “.com”. Respondent’s additions to Complainant’s mark do not distinguish the domain name from the mark for the purposes of the Policy. Therefore, the Panel concludes that Respondent’s <grammyawards-live.com> domain name is confusingly similar to Complainant’s GRAMMY AWARDS mark under Policy ¶ 4(a)(i).See Disney Enter. v. Kudrna, FA 686103 (Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
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 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
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 the at‑issue domain name.
WHOIS information identifies the registrant of the <grammyawards-live.com> domain name as “FAHIM RAHMAN” and there is no evidence that tends to prove that Respondent is commonly known by the at-issue domain name. The Panel therefore concludes that Respondent is not commonly known by the <grammyawards-live.com> domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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).
Furthermore, Respondent’s uses the at-issue domain name to address a website promoting an unauthorized streaming service whereby internet users may watch the Grammy Awards when televised by Complainant. Using the domain name in this manner, to commandeer Complainant’s intellectual property, is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the <grammyawards-live.com> domain name under Policy ¶ 4(c)(iii). See ABS-CBN International v. JAN PAUL MANCHING, FA 1575590 (Forum Sept. 21, 2014) (finding that where the infringing domain name resolved to a website that streamed complainant’s programming and also used the complainant’s ABC-CBN mark, all without complainant’s permission, such use could not constitute a bona fide offering of goods under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also, Airbnb, Inc. v. Nima Rahnemoon, FA 1737766 (Forum July 25, 2017) (“It is clear from the evidence that Respondent has used the site attached to the Domain Name to promote illegal unauthorized use of Complainant’s systems… As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name.”).
Given the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstance are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
As mentioned above regarding rights and legitimate interests, Respondent uses the at-issue domain name to offer an online streaming facility designed to impermissibly netcast Complainant’s televised GRAMMY AWARDS. Respondent capitalizes on the confusingly similar <grammyawards-live.com> domain name to trade on the goodwill resident in Complainant’s GRAMMY AWARDS trademark and to create a false sense of association between Respondent’s <grammyawards-live.com> domain name and Complainant’s trademark. Respondent’s objective is to bolster traffic to its <grammyawards-live.com> pirate website. This fact pattern demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Further, by attempting to divert potential customers away from Complainant so that it might benefit from Complainant’s intellectual property by unfairly competing with Complainant, Respondent shows bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Finally, it is apparent given the fame of Complainant’s trademark and the manner in which Respondent uses the mark as part of its confusingly similar domain name, that Respondent had actual knowledge of Complainant’s rights in GRAMMY AWARDS prior to registering <grammyawards-live.com>. The GRAMMY AWARDS mark is famous worldwide and Complainant has trademark rights in such mark. Respondent is intent on using the <grammyawards-live.com> domain name to misappropriate and circulate Complainant’s televised content concerning the Grammy Awards. Therefore, it is inconceivable that Respondent would not have known of Complainant and its trademark before registering the <grammyawards-live.com> domain name. It is thus clear that Respondent registered the at-issue domain name because of its trademark value rather than in spite of it. Importantly, Respondent’s actual knowledge of Complainant’s trademark is sufficient for a finding 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grammyawards-live.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 13, 2017
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