Country Music Association, Inc. v. John Heck
Claim Number: FA1704001728878
Complainant is Country Music Association, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is John Heck (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cmafestmeetandgreets.com>, registered with Google 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 25, 2017; the Forum received payment on April 25, 2017.
On April 27, 2017, Google Inc. confirmed by e-mail to the Forum that the <cmafestmeetandgreets.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google 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 April 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@cmafestmeetandgreets.com. Also on April 28, 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.
A timely Response was received and determined to be complete on June 12, 2017.
Complainant’s timely additional submission was received on June 15, 2017.
On June 15, 2017 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
All submissions were considered by the Panel.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Country Music Association, Inc., is a country music trade organization with headquarters based in Atlanta, Georgia, USA. In connection with this business, Complainant uses the CMA, CMA MUSIC FESTIVAL, and CMA FEST marks to promote its goods and services. Complainant has rights in the marks based upon either registration with the United States Patent and Trademark Office (“USPTO”) (e.g., CMA—Reg. No. 3,561,168, registered Jan. 13, 2009; CMA MUSIC FESTIVAL—Reg. No. 3,255,554, registered June 26, 2007) or via secondary meaning given to the mark (CMA FEST) to bring about common law rights. <cmafestmeetandgreets.com> is confusingly similar as it contains Complainant’s CMA and CMA FEST marks in their entirety and appends the descriptive term “meetandgreets” as well as the generic top-level-domain (“gTLD”) “.com.”
Respondent lacks rights and legitimate interests in <cmafestmeetandgreets.com>. Respondent is not commonly known by <cmafestmeetandgreets.com> nor has Complainant authorized Respondent to register a domain name reflecting its marks. Respondent failed to use <cmafestmeetandgreets.com> in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a page advertising competitors of Complainant and offering Complainant’s goods and services for sale.
Respondent registered and uses <cmafestmeetandgreets.com> in bad faith. Respondent disrupts Complainant’s business through the sale of Complainant’s goods and other related goods in direct competition with Complainant. Respondent confuses Internet users by diverting users seeking Complainant to Respondent’s resolving website for Respondent’s commercial gain. Further, Respondent must have had actual notice of Complainant’s rights in its CMA-based marks. Finally, Respondent’s inclusion of a disclaimer on its webpage does not preclude a finding of bad faith on the part of Respondent.
B. Respondent
Respondent’s <cmafestmeetandgreets.com> domain name is not confusingly similar to Complainant’s CMA FEST mark as CMA FEST is a generic term that Complainant cannot establish a secondary meaning for the purposes of establishing common law rights.
Respondent asserts it has rights and legitimate interests in <cmafestmeetandgreets.com>. Respondent sells formatted versions of freely available information from Complainant. Additionally, Respondent uses the disputed domain name to provide goods and services that users would expect from accessing the website – services related to music festivals. Further, Respondent’s domain name contains a link on every page that directs users to Complainant’s webpage. Respondent uses the domain name to provide services related to Complainant, and this, connected with the fact Respondent directs users to Complainant’s website, helps Complainant acquire more traffic on its own website.
Respondent argues <cmafestmeetandgreets.com> offers adjunct materials not in competition with Complainant. Further, every individual page on the resolving webpage for the disputed domain name contains a disclaimer.
C. Complainant’s Additional Submission
Respondent’s argument that CMA Fest is not a mark exclusive to CMA is without merit. Respondent concedes that CMA is the owner of the CMA and CMA FESTIVAL marks. Respondent’s argument that the composite mark CMA FEST, which fully incorporates the federally-registered CMA mark and adds the descriptive term “FEST” is not exclusive to CMA, defies legal jurisprudence and logic.
A trademark retains its exclusivity even when a generic or descriptive term is added to it. Respondent’s addition of non-distinctive elements to the distinctive CMA element is immaterial to the FORUM’S analysis of confusing similarity.
There is no authority to support Respondent’s proposition that other uses of CMA’s trademarks online by third parties exonerate Respondent’s infringing bad-faith use.
The infringing Domain Name is commercial in nature and Respondent cannot avail itself of provisions in the Policy related to commercial and fair-use sites. Respondent concedes that his website competes with and diverts users away from CMAFest.com. Respondent is not permitted to commandeer CMA’S well-known mark to compete with CMA and divert users away from CMAFest.com
Respondent has conceded his knowledge of the CMA mark at the time he registered the Infringing Domain Name and throughout his use of the Infringing Domain Name.
For the reasons set for the below, the Panel finds Complainant is entitled to the requested relief of transfer of the <cmafestmeetandgreets.com> domain name.
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.
Complainant asserts rights in the marks based upon either registration with the USPTO (e.g., CMA—Reg. No. 3,561,168, registered Jan. 13, 2009; CMA MUSIC FESTIVAL—Reg. No. 3,255,554, registered June 26, 2007) or via secondary meaning given to the CMA FEST mark to bring about common law rights. Registration with a trademark authority such as the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel finds Complainant has rights in the CMA and CMA MUSIC FESTIVAL marks per Policy ¶ 4(a)(i).
As far as Complainant’s rights in the CMA FEST mark, registration of a mark with a trademark authority is not required to establish rights where a party demonstrates secondary meaning given to a mark. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”); see also Gordon & Rees LLP v. Peter Smith, FA 1618345 (Forum June 14, 2015) (finding that Complainant’s evidence is sufficient to establish secondary meaning, and thus Complainant holds common law rights in the GORDON & REES mark pursuant to Policy ¶ 4(a)(i) because “Complainant has provided evidence of its first use of the GORDON & REES mark for the purpose of practicing law beginning in September 1974. Complainant has also provided evidence of media and consumer recognition, and business filings in several states in the United States.”). Here, Complainant proffers it has used CMA FEST in connection with its annual CMA Music Festival since 2004. Complainant began using the <cmafest.com> domain name in 2003 to promote the CMA Music Festival. The Panel agrees with Complainant and finds this evidence sufficient to establish a secondary meaning to the CMA FEST mark per Policy ¶ 4(a)(i).
Complainant further argues that Respondent’s domain name is confusingly similar as it contains the Complainant’s CMA and CMA FEST marks in their entirety and appends the descriptive term “meetandgreets” as well as the gTLD “.com.” The addition of descriptive terms relevant to a complainant’s business does not remove a domain name from the realm of confusingly similar per Policy ¶ 4(a)(i); likewise, the addition of a gTLD to a complainant’s mark is irrelevant for a Policy ¶ 4(a)(i) analysis. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel finds <cmafestmeetandgreets.com> to be confusingly similar to Complainant’s marks.
Complainant has proved this element.
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 (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 asserts Respondent is not commonly known by <cmafestmeetandgreets.com> nor has Complainant authorized Respondent to register a domain name reflecting its marks. Where there is no evidence in the record to the contrary, panels may use the WHOIS information to determine whether a respondent is commonly known by a disputed domain name. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information names “John Heck” as the registrant of the domain name. The WHOIS information does not indicate any organization associated with registrant “John Heck.” The Panel finds Respondent, based on the information in the record, is not commonly known by <cmafestmeetandgreets.com>.
Next, Complainant contends Respondent fails to use the <cmafestmeetandgreets.com> domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, the disputed domain name resolves to a page advertising competitors of Complainant and offering Complainant’s goods for sale. Use of a disputed domain name to advertise competitors and sell the goods of a complainant can indicate a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) & (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also The Lincoln Electric Company v. Privacy protection service - whoisproxy.ru, FA 1651493 (Forum January 13, 2016) (noting that, as Respondent used the disputed domain to promote Complainant’s distributor without license to do so, Respondent did not demonstrate any bona fide offering of goods or services or any legitimate noncommercial or fair use). Here, Respondent appears to advertise non-sanctioned CMA events in competition with Complainant and sells copies of Complainant’s event itineraries. The Panel agrees with Complainant and finds this evidence persuasive of Respondent’s lack of rights and legitimate interests in the <cmafestmeetandgreets.com> domain name.
Complainant has proved this element.
Complainant argues Respondent disrupts Complainant’s business through the sale of Complainant’s freely available music festival itineraries for commercial gain. Use of a disputed domain name to disrupt a complainant’s business via sale of a complainant’s products indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant). Here, Respondent appears to compile Complainant’s itineraries and sells them for profit through a monthly membership program. The Panel finds this is evidence of bad faith registration and use.
Next, Complainant contends Respondent diverts Internet users seeking Complainant to Respondent’s resolving website for Respondent’s commercial gain through the sale of subscription services and hosting of third-party advertisements that generate revenue. Use of a disputed domain name to resolve to services that compete with those offered by the complainant, as well as third-party advertisements, demonstrates bad faith registration and use per Policy ¶ 4(b)(iv). See Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum April 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Respondent sells a $4.99 subscription to access information made available for free by Complainant. The Panel finds Respondent uses Complainant’s marks to attract Internet users for Respondent’s commercial gain—evidence of bad faith per Policy ¶ 4(b)(iv).
Complainant argues Respondent’s use of a disclaimer does not mitigate bad faith. Where a respondent has utilized a disclaimer to denote the lack of connection with a complainant, panels have nevertheless found bad faith pursuant to Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”). The Panel agrees that Respondent’s inclusion of a disclaimer on its webpage does not mitigate a finding of bad faith per Policy ¶ 4(a)(iii).
Finally, Complainant asserts Respondent had actual notice of Complainant’s rights in its CMA-based marks. Actual notice of a complainant’s rights in a mark can sufficiently evince bad faith per the non-exclusive nature of Policy ¶ 4(b). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (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.”). The domain name incorporates portions of Complainant’s three marks and the resolving website competes with Complainant even after Respondent received a cease-and-desist letter. The Panel finds that Respondent had actual notice of Complainant’s rights in the marks and find bad faith per Policy ¶ 4(a)(iii).
Complainant has proved this element
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <cmafestmeetandgreets.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 21, 2017
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