National Academy of Recording Arts & Sciences, Inc. v. Danon Frear
Claim Number: FA1103001376124
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Danon Frear (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grammyawardslimo.com>, registered with Melbourne IT.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 4, 2011; the National Arbitration Forum received payment on March 4, 2011.
On March 6, 2011, Melbourne IT confirmed by e-mail to the National Arbitration Forum that the <grammyawardslimo.com> domain name is registered with Melbourne IT and that Respondent is the current registrant of the name. Melbourne IT has verified that Respondent is bound by the Melbourne IT 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 March 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 2011 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@grammyawardslimo.com. Also on March 8, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 April 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <grammyawardslimo.com> domain name is confusingly similar to Complainant’s GRAMMY AWARDS mark.
2. Respondent does not have any rights or legitimate interests in the <grammyawardslimo.com> domain name.
3. Respondent registered and used the <grammyawardslimo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, National Academy of Recording Arts & Sciences, Inc., produces the GRAMMY AWARDS show and awards that it bestows to those in the music industry. Complainant owns several trademark registrations with the United States Patent and Trademark Office ("USPTO") for its GRAMMY AWARDS mark (e.g., Reg. No. 2,827,248 issued March 30, 2004).
Respondent, Danon Frear, registered the <grammyawardslimo.com> domain name on January 31, 2010. Respondent’s disputed domain name resolves to Respondent’s limousine service website which advertises Respondent’s transportation business.
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."
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.”).
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.
According to the panel in Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007), if a complainant has a registered mark with the USPTO, then such complainant has “met the requirements of Policy ¶ 4(a)(i).” Here, Complainant has provided the Panel with several trademark registrations that it owns with the USPTO for the GRAMMY AWARDS mark (e.g., Reg. No. 2,827,248 issued March 30, 2004). Therefore, the Panel finds that Complainant has established rights in its mark pursuant to Policy ¶ 4(a)(i). See also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The Panel next considers whether the <grammyawardslimo.com> domain name is confusingly similar to Complainant’s GRAMMY AWARDS mark. Complainant alleges that the disputed domain name uses its entire mark while merely adding the generic term “limo” and the generic top-level domain (“gTLD”) “.com,” and that such additions to its famous mark are not sufficient to render the domain name distinctive. The Panel finds that Respondent’s <grammyawardslimo.com> domain name is confusingly similar to Complainant’s GRAMMY AWARDS mark under Policy ¶ 4(a)(i), where the domain name merely omits the space between the terms of the mark, adds the generic term “limo,” and adds the gTLD “.com” to Complainant’s mark. See Arthur Guiness Son & Co. (Dublin) Ltd. v.Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001); see also Nat’l Acad. of Recording Arts & Sciences, Inc. v. Team Ware / Blakely, FA 1367401 (Nat Arb. Forum Feb. 22, 2011); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights and legitimate interests in the <grammyawardslimo.com> domain name. Complainant is required to make a prima facie case in support of these allegations. Once Complainant has produced a prima facie case the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has produced a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <grammyawardslimo.com> domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant alleges that Respondent does not possess any rights or legitimate interests in the disputed domain name. In support of such allegations Complainant argues that Respondent is not commonly known by the disputed domain name where the WHOIS information identifies “Danon Frear” as the registrant of the domain name. Further, Complainant asserts that the company advertised on Respondent’s website is “Avolar Limousine” which is also not similar to the <grammyawardslimo.com> domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) where the WHOIS information, nor any other evidence on record suggests that Respondent is commonly known as the domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. 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 (Nat. Arb. 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).
Next, Complainant argues that Respondent’s use of the disputed domain name precludes any finding that Respondent possesses rights or legitimate interests in the domain name. Complainant argues, and presents evidence to illustrate, that the disputed domain name resolves to a website that advertises Respondent’s “Avolar Limousine,” which is located in Los Angeles, California as well as other cities across the country. Complainant contends that Respondent’s commercial use of the confusingly similar domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. 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)); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name). The Panel finds that Respondent’s commercial use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that the GRAMMY AWARDS telecast is a high profile and well publicized event in Los Angeles, California, and that companies often attempt to use its mark in order to present a connection between their companies and Complainant. Here, Respondent is using the disputed domain name to direct Internet users to Respondent’s own commercial website, where its limousine services are advertised and marketed. Complainant contends that such use of the <grammyawardslimo.com> domain name is proof of Respondent’s bad faith efforts to reap the benefits of Internet user confusion as to the source or sponsorship of the disputed domain name, and that such use is evidence of bad faith registration and use. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel found that “respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).” Further, in G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) the panel found that the respondent registered and used the domain name in bad faith where respondent was using the domain name at issue to attract Internet users to its commercial website. Therefore, the Panel finds that Respondent’s use of the disputed domain name as evidenced above is evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grammyawardslimo.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 13, 2011
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