National Academy of Recording Arts & Sciences, Inc. v. Ekolo Losso Mosima
Claim Number: FA1408001575982
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Ekolo Losso Mosima (“Respondent”), South Africa.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <africagrammy.com>, registered with Tucows Domains 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 20, 2014; the National Arbitration Forum received payment on August 20, 2014
On August 20, 2014, Tucows Domains Inc. confirmed by e-mail to the National Arbitration Forum that the <africagrammy.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 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 2014 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@africagrammy.com. Also on August 22, 2014, 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 September 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 makes the following assertions:
1. Respondent’s <africagrammy.com> domain name, the domain name at issue, is confusingly similar to Complainant’s GRAMMY mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns the GRAMMY mark through registrations with trademark agencies worldwide, including South Africa’s Department of Trade and Industry (Reg. No. 96/09316, registered July 11, 1996). Complainant has used the GRAMMY mark since 1959 for the presentation of GRAMMY awards, which recognize achievement in the music industry. The <africagrammy.com> domain name is confusingly similar to the GRAMMY mark.
Respondent is not connected to Complainant, and it not authorized to use the GRAMMY mark. The WHOIS information for the <africagrammy.com> domain name identifies “Ekolo Losso Mosima” as registrant. As such, Respondent is not commonly known by the domain name or any variant thereof. Respondent’s use of the disputed domain name does not confer rights in the name. Respondent uses the mark to promote an apparent music awards program titled “Africa Grammy Awards,” and provides related music information. Respondent’s use of the name to serve as a competing source of GRAMMY-branded awards and entertainment services does not amount to a protected use pursuant to Policy ¶ 4(c)(i) or (iii).
Respondent is in violation of Policy ¶ 4(b)(iii) as the <africagrammy.com> domain name disrupts Complainant’s own efforts by promoting an apparent music award program called “Africa Grammy Awards.” Respondent is using the disputed domain name to mislead Internet users into affiliating Complainant with the disputed landing page, and therefore is acting in bad faith. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the GRAMMY mark, which further evinces Respondent’s culpability. The <africagrammy.com> domain name was registered January 14, 2014.
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 has used the GRAMMY mark since 1959 for the presentation of GRAMMY awards, which recognize achievement in the music industry. Complainant owns rights in the GRAMMY mark through registrations with trademark agencies worldwide, including South Africa’s Department of Trade and Industry (Reg. No. 96/09316, registered July 11, 1996). Complainant’s trademark registrations, which include a holding in the jurisdiction where Respondent resides, establishes Complainant’s rights in the GRAMMY mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The <africagrammy.com> domain name is confusingly similar to the GRAMMY mark. The additions of the geographic term “Africa” and the generic top-level domain (“gTLD”) “.com” are insufficient to distinguish the name from the GRAMMY mark, which is included in full. Complainant cites to Bloomberg Finance L.P. v. africainvestor / Hubert Danso, FA 1519284 (Nat. Arb. Forum Oct. 19, 2013), where the panel found <bloombergafrica.com>, <bloombergafrica.net>, and <bloombergafrica.org> to be confusingly similar to the BLOOMBERG mark, explaining, “The Panel determines that Respondent’s addition of the word ‘Africa’ to its domain name is not sufficient to distinguish the domain name from Complainant’s mark under Policy ¶ 4(a)(i).” The Panel finds that the <africagrammy.com> domain name is confusingly similar to the GRAMMY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not connected to Complainant, and it not authorized to use the GRAMMY mark. Further, the WHOIS information for the <africagrammy.com> domain name, which identifies “Ekolo Losso Mosima” as registrant. Based on this available evidence, which is not supplemented by a response, the Panel finds that Respondent is not commonly known by the domain name or any variant thereof pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).
Respondent’s use of the disputed domain name does not confer rights in the name. Respondent uses the mark to promote an apparent music awards program titled “Africa Grammy Awards,” and provides related music and entertainment information. This unauthorized use of the name to serve as a competing source of GRAMMY-branded awards and entertainment services does not amount to a protected use pursuant to Policy ¶ 4(c)(i) or (iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is in violation of Policy ¶ 4(b)(iii) as the <africagrammy.com> domain name disrupts Complainant’s own efforts by promoting an apparent music award program called “Africa Grammy Awards.” Such competitive use demonstrates bad faith disruption pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. 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).”).
Respondent is using the disputed domain name to mislead Internet users into affiliating Complainant with the disputed landing page and therefore is acting in bad faith. Specifically, Respondent is using the disputed domain name to promote a competing music award program with related entertainment services for commercial gain. In Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), the panel found that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant. The Panel finds that Respondent has engaged in Policy ¶ 4(b)(iv) bad faith.
Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the GRAMMY mark, which further evinces Respondent’s culpability. In so arguing, Complainant points to letters from Complainant and Complainant’s counsel to Respondent informing them of the infringement. These letters were subsequent to Respondent’s registration of the domain name. Prior panels have found evidence of actual knowledge bad faith based on the fame of the mark at registration or the respondent’s use of the domain name. See, e.g., Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”); Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Since the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the GRAMMY mark at the time of registration, the Panel also finds evidence of Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <africagrammy.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 18, 2014
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