National Academy of Recording Arts & Sciences, Inc..com v. Xserver XSERVER Inc. / XSERVER Inc.
Claim Number: FA1609001695259
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Xserver XSERVER Inc. / XSERVER Inc. (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <grammy-video.com>, registered with Netowl, 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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2016; the Forum received payment on September 23, 2016.
On October 20, 2016, Netowl, Inc. confirmed by e-mail to the Forum that the <grammy-video.com> domain name is registered with Netowl, Inc. and that Respondent is the current registrant of the name. Netowl, Inc. has verified that Respondent is bound by the Netowl, 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 October 3, 2016, the Forum served the Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of October 24, 2016 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@grammy-video.com. Also on October 3, 2016, 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 October 31, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant registered the GRAMMY mark with the Japanese Patent Office (“JPO”) (e.g., Reg. No. 1,996,056, registered Nov. 18, 1987), and holds rights in the mark that it uses for hosting and televising a music industry awards program. Respondent’s domain name, <grammy-video.com>, is confusingly similar to Complainant’s mark because it merely adds the generic term “video” and the “.com” generic top-level domain (“gTLD”) to the Complainant’s entire GRAMMY mark.
ii) Respondent has no rights or legitimate interests in the domain name. Complainant has not granted Respondent any sort of permission to use its GRAMMY mark, and Respondent is not commonly known as <grammy-video.com>. Respondent used the domain name to host its website until July 2016; Respondent prominently displayed Complainant’s GRAMMY marks on its website, which redirected Internet users to unlicensed video clips of performances by GRAMMY Award winners. After July 2016, Respondent’s domain name resolved to a website displaying the message “403 Forbidden.”
ii) Respondent registered and is using the domain name in bad faith. Respondent initially used the domain name to redirect Internet users to its competing website. Further, by providing links to unauthorized clips of the GRAMMY Awards, Respondent has demonstrated that it registered the domain name with actual knowledge of Complainant’s mark and rights therein.
B. Respondent
Respondent registered the <grammy-video.com> domain name on March 21, 2016, and has not submitted a Response to this Complaint.
Complainant established that it had rights in the mark contained in the disputed domain name. The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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."
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Japanese, thereby making the language of the proceedings in Japanese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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.”).
Complainant contends that it has rights in the GRAMMY mark based on its registration with the JPO (e.g., Reg. No. 1,996,056, registered Nov. 18, 1987). Panels have found that a JPO trademark registration confers rights in a mark pursuant to Policy ¶ 4(a)(i). See Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (holding, “Complainant has rights in the SKUNK WORKS mark through its registration with the Japan Patent Office (“JPO”) (Reg. No. 4,438,310, registered on Dec. 8, 2000), inter alia. Registration with a government trademark office (such as the JPO) suffices to demonstrate rights in a mark under Policy ¶ 4(a)(i).”). The Panel, therefore, decides that Complainant has demonstrated rights in the GRAMMY mark.
Complainant contends that Respondent’s <grammy-video.com> domain name is confusingly similar to its GRAMMY mark as Respondent merely adds the generic term “video” and the “.com” gTLD to Complainant’s mark. The Panel also notes that Respondent includes a hyphen between the words “grammy” and “video.” Panels have held that adding a generic term in addition to a hyphen and a gTLD does not sufficiently differentiate a respondent’s domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). As such, the Panel holds that Respondent’s <grammy-video.com> domain name is confusingly similar to Complainant’s GRAMMY mark under Policy ¶ 4(a)(i).
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 contends that Respondent has no rights or legitimate interests in the <grammy-video.com> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its GRAMMY mark in any fashion, and that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the domain name lists “Xserver XSERVER Inc.” as the registrant. Panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Thus, the Panel finds that Respondent is not commonly known by <grammy-video.com>.
Complainant alleges that Respondent is not using the domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is not currently making any active use of the domain name, and that Respondent was previously using the domain name to divert Internet users to third-party websites that contained “bootlegged” versions of Complainant’s intellectual property. Panels have found that using a confusingly similar domain name to divert Internet users seeking the complainant does not show any rights or legitimate interests in the domain name. See Gen. Mills, Inc. v. Zuccarini, FA 97050 (Forum May 30, 2001) (“[U]nder the “Policy,” Respondent may not utilize close derivations of famous and distinctive trademarks and, thus, profit from Internet users’ misspelling the Internet destinations they desire.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)). Panels have also found that a respondent lacks rights and legitimate interests in a domain name where it fails to make any active use of the domain name. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel holds that Respondent was not, and is not, using the <grammy-video.com> domain name to make a bona fide offering of goods and services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant asserts that Respondent registered the domain name for the primary purpose of disrupting Complainant’s business. Complainant argues that Respondent is using the confusingly similar domain name to redirect Internet traffic away from Complainant’s website. Complainant asserts that this use is especially disruptive because of Complainant’s role in helping musical artists protect their copyrighted material online. Panels have defined competitor broadly under Policy ¶ 4(b)(iii) and have held that competing use constitutes bad faith. See Am. Online, Inc. v. Tapia, FA 328159 (Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Thus, the Panel holds that Respondent’s use of the disputed domain constitutes bad faith under Policy ¶ 4(b)(iii).
Complainant alleges that Respondent is appropriating the goodwill of its GRAMMY mark to create a likelihood of confusion among Internet users in order to commercially gain. Complainant argues that the language on Respondent’s resolving website of the domain name, as well as the content of the links featured, leads to a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of <grammy-video.com> with Complainant’s GRAMMY mark. Panels have held that a respondent’s use of a domain name to compete can be evidence of bad faith under Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Accordingly, the Panel finds that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Lastly, Complainant argues that Respondent had actual notice of its rights in the GRAMMY mark when it registered the <grammy-video.com> domain name. Complainant argues that it had been extensively using and advertising its GRAMMY mark for nearly three decades before Respondent registered the disputed domain name. Complainant also argues that because Respondent’s domain name includes links and citations to Complainant’s GRAMMY awards, Respondent had actual knowledge of the GRAMMY mark. While the UDRP does not recognize constructive notice alone as sufficient to find bad faith, panels have inferred actual notice from the fame of a Complainant’s mark or the use of a complainant’s material by a respondent. See Twentieth Century Fox Film Corporation and Fox International Channels (US), Inc. v. Daniel Pizlo / HS, FA1412001596020 (Forum Jan. 27, 2015) (finding that the respondent must have had actual knowledge of the complainant and its rights in the FOX LIFE mark, where the respondent was using the disputed domain name to feature one of the complainant’s videos on its website, indicating that the respondent had acted in bad faith under Policy ¶ 4(a)(iii)); see also Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”). Thus, the Panel infers from the notoriety of Complainant's mark and the manner of use of the disputed domain name by Respondent infers and holds that Respondent’s actual notice of Complainant’s rights in the GRAMMY mark constituted a domain name registration in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <grammy-video.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: November 7, 2016
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