National Academy of Recording Arts & Sciences, Inc. v. Monique Grimme / Bongo Boy Records
Claim Number: FA1803001779613
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondents are Monique Grimme and Bongo Boy Records (“Respondents”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <grammyfyc.com> and <grammyfyc.info>, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on March 29, 2018; the Forum received payment on March 29, 2018.
On April 2, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <grammyfyc.com> and <grammyfyc.info> domain names are registered with GoDaddy.com, LLC and that Respondents are the current registrants of the names. GoDaddy.com, LLC has verified that Respondents are bound by the GoDaddy.com, LLC registration agreement and have 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 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 26, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registration as technical, administrative, and billing contacts, and to postmaster@grammyfyc.com and, postmaster@grammyfyc.info. Also on April 6, 2018, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax to all entities and persons listed on Respondents’ registration as technical, administrative and billing contacts.
On April 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Complainant requests that the domain names be transferred from Respondents to Complainant.
A. Complainant
Complainant promotes artistic progress and achievements in the field of music and other recordings. Since 1959 it has issued an annual award called a GRAMMY for achievements in the recording industry. It has rights in the GRAMMY mark through its use of that name since then and through its registrations of that mark with the United States Patent and Trademark Office (“USPTO”), Registration No. 887,642 on March 10, 1970, and Registration No. 2,332,258 on March 21, 2000, as well as others. Respondents’ <grammyfyc.com> and <grammyfyc.info> domain names (the “Domain Names”) are confusingly similar to Complainant’s GRAMMY mark as they incorporate that mark in its entirety, only adding the acronym “fyc” to signify “for your consideration,” and either the “.com” or “.info” generic top level domain (“gTLDs”).
Respondents have no rights or legitimate interests in the Domain Names as Complainant has not permitted or authorized them to use its GRAMMY mark, neither of them is commonly known by the Domain Names, and they are not using them in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the websites resolving from the Domain Names redirect users to a web site operated by Respondent Bongo Boy Records, which offers, for a fee, to send email blasts to Complainant’s members on behalf of recording artists to garner GRAMMY Award votes. Respondents’ use of the Domain Names in this manner creates the false impression that they are officially connected to Complainant.
Respondents registered and are using the Domain Names in bad faith, as they had actual knowledge of Complainant and the GRAMMY mark when they registered them, they are using them to attract internet traffic to their own web site for profit, and are disrupting Complainant’s business.
B. Respondents
Respondents did not file a Response in this matter but on April 6, 2018, upon receipt of the Complaint and the Written Notice of the Complaint served upon them by the FORUM, they did send a number of emails to the FORUM in which they asserted that neither of them owns the Domain Names. They also asserted that for this reason “the case is no longer valid and the case should be closed.”
Preliminary Issue: Sufficiency of Response
Rule 5 sets forth a number of substantive requirements for a document to qualify as a response. It is obvious that the emails sent by Respondents to the FORUM fail to meet any of them, and indeed it is clear that Respondents made no effort to comply with those requirements. They say only that Respondents do not own the Domain Names and request that this proceeding be closed. The Panel, in its discretion, may choose whether to accept and consider any submittal as a response. Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5). Under the circumstances present here, the Panel has no choice but to consider Respondents’ April 6 emails as their response to the Complaint. Since those emails fall so far short of compliance with the requirements of Rule 5, the Panel elects not to consider them as a Response. The Panel will proceed on the basis that no Response has been filed.
Merits of the Case
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 will decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 registered its GRAMMY mark with the USPTO (Reg. No. 887,642) on March 10, 1970, and has several additional USPTO registrations of that mark. See, Complaint Annexes 4, 5 and 6. Registration of a mark with the USPTO is sufficient to demonstrate rights in a mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Further, Respondents’ Domain Names are confusingly similar to Complainant’s GRAMMY mark, incorporating that mark in its entirety and adding only the acronym “fyc” and the generic top-level domains (gTLD) “.com” and “.info.” UDRP Panels have consistently held disputed domain names to be confusingly similar for the purposes of Policy ¶ 4(a)(i) when they incorporate a registered mark entirely, adding only a generic or descriptive term and a gTLD. Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Marquette Golf Club v. Al Perkins, FA 1738263 (Forum Jul. 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
Based upon the foregoing, the Panel finds that the Domain Names are confusingly similar to the GRAMMY mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondents have no rights or legitimate interests in the Domain Names because (i) Complainant has not licensed or authorized them to use its GRAMMY mark, (ii) neither Respondent is commonly known by the Domain Names, and (iii) Respondents are not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the resolving web site redirects Internet traffic to Respondent’s own website, which offers, for a fee, to assist recording artists gain votes for a GRAMMY award. These allegations are supported by competent evidence. According to the WHOIS information contained in Complaint Annexes 21 and 22, Respondent Monique Grimme is the registrant of the Domain Names and Respondent Bongo Boy Records is the current registrant organization for them. Neither of these names bears the least similarity or resemblance to either Domain Name, and there is no evidence before the Panel suggesting that either Respondent is commonly known by the Domain Names or any variation of them. Complainant states that it has never authorized either Respondent to use its GRAMMY mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Complaint Annex 24 is a screenshot of a page on Respondents’ web site, to which the Domain Names redirect Internet users. It offers an eBlast service furnished by Respondents, which purportedly sends emails to Complainant’s members on behalf of Respondents’ customers or clients. The Domain Names are thus being used to attract Internet traffic to Respondents’ site for financial gain. Using a confusingly similar domain name in order to attract traffic to one’s web site for one’s own business purposes does not qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”), Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Names set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use and registration of those domains. Respondents are clearly using them to attract, for commercial gain, Internet users to their web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of their web site within the meaning to Policy ¶ 4(b)(iv). Panels have consistently held this to be evidence of bad faith under Policy ¶ 4(b)(iv). 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).”). As mentioned above, Complaint Annex 24 provides screenshots of the resolving web site, which offer services furnished by Respondents for financial compensation. Respondents’ Domain Names use Complainant’s mark to benefit them commercially, in bad faith under Policy ¶ 4(b)(iv).
Further, Complainant’s GRAMMY mark is famous world-wide. See, Complaint Annexes 12-17. Also, according to the WHOIS information submitted as Complaint Annexes 21 and 22, the Domain Names were created on or about December 10, 2017. More than a full year earlier, in November 2016, Complainant’s counsel sent a cease-and-desist letter to Respondents regarding emails sent by Respondent Bongo Boys Records which, according to counsel, gave the impression that Respondents were associated or affiliated with Complainant because of the use of the GRAMMY mark in them. The letter discusses at length Complainant’s rights in that mark and cautions Respondents not to use it in such a way as to suggest a connection between Respondents and Complainant and its GRAMMY Awards program. From this evidence it is clear that Respondents knew of Complainant’s mark when the Domain Names were registered. Indeed, it is evident that they registered them precisely because they contain Complainant’s mark and would likely attract Internet traffic to their site. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondents clearly knew of Complainant and its mark when it registered the Domain Names.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grammyfyc.com>, and <grammyfyc.info> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: April 11, 2018
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