National Academy of Recording Arts & Sciences, Inc. v. Aristides Mendez
Claim Number: FA1704001727826
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Aristides Mendez (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <recordingacademy.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically April 19, 2017; the Forum received payment April 19, 2017.
On April 20, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <recordingacademy.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and 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 21, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 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@recordingacademy.com. Also on April 21, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 18, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Allegations in this Proceeding:
Complainant, National Academy of Recording Arts & Sciences, Inc., is an organization of musicians, producers, recording engineers and other recording professionals. Complainant has rights to the THE RECORDING ACADEMY mark based upon numerous registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,239,821, registered May 24, 1983). See Compl., at Attached Annex 6. Respondent’s <recordingacademy.com> domain name is confusingly similar to Complainant’s mark, because it incorporates the mark in its entirety merely removing the “the”, the spaces in the mark, and adding a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <recordingacademy.com>. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted Respondent to use the THE RECORDING ACADEMY mark in any way. Respondent has not made any use of or made any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and 4(c)(iii), respectively.
Respondent registered and used the disputed domain name <recordingacademy.com> in bad faith. Failure to make an active use or show evidence of preparations to use a disputed domain name supports findings of bad faith registration pursuant to Policy ¶ 4(a)(iii).
B. Respondent’s Contentions in Response in this
Proceeding:
Respondent did not file a Response. The Panel notes that Respondent registered the <recordingacademy.com> disputed domain name November 15, 2001.
Complainant established legal rights and legitimate interests in the mark contained in its entirety, less spaces and the “The” in the disputed domain name.
Respondent made no showing of rights or legitimate interests and has no such rights or legitimate interests to the mark of the disputed domain name containing Complainant’s protected mark.
Respondent registered and used and/or passively held the disputed domain name.
Despite the time between registration and the challenge to it, such registration and use and/or passive holding supports findings of 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."
Paragraph 4(a) of the Policy requires Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant, National Academy of Recording Arts & Sciences, Inc., is an organization of musicians, producers, recording engineers and other recording professionals. Complainant showed rights to the THE RECORDING ACADEMY mark based upon registration with the USPTO (Reg. No. 1,239,821, registered May 24, 1983). See Compl., at Attached Annex 6. Registration of a mark with the USPTO is sufficient to establish rights in that mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel therefore finds that Complainant’s registration of the THE RECORDING ACADEMY mark with the USPTO establishes rights in the mark under Policy ¶ 4(a)(i).
Respondent’s <recordingacademy.com> disputed domain name is confusingly similar to Complainant’s mark, because it incorporates the mark in its entirety merely removing the “the”, the spaces in the mark, and adding a “.com” generic top-level domain gTLD. Merely deleting the first term of a mark, in addition to deletion of spaces and addition of a “.com” gTLD does not distinguish a disputed domain name from the expropriated mark but creates a confusingly similar domain name. See The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.). The Panel therefore finds that the disputed domain name is confusingly similar to the THE RECORDING ACADEMY mark persuant to a Policy ¶ 4(a)(i) analysis.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 argues that Respondent has no rights or legitimate interests in <recordingacademy.com> as Respondent is not commonly known by the disputed domain name and Complainant never authorized Respondent to use the THE RECORDING ACADEMY mark in a domain name or for Respondent’s business purposes. Where no response is filed, WHOIS information can be used to support a finding that the respondent is not commonly known by the disputed domain name. See 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). The WHOIS information here identifies Respondent as “Aristides Mendez.” Additionally, where no evidence in the record supports respondent’s authority to register a domain name using a complainant’s mark, then it follows that the Respondent has no rights or legitimate interests in the registered disputed domain name containing another entity’s mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name.
Complainant argues that Respondent made no use of or made no demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Compl., at Attached Annex 9. The use of a domain name that is confusingly similar to a complainant’s trademark without a demonstrable intention to make use of the disputed domain name is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). 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).”). The Panel therefore agrees that Complainant met its prima facie burden under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights or legitimate interests in the mark or disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant does not argue any of the factors of bad faith under Policy ¶ 4(b) with specificity. However, past panels have held that the factors in Policy ¶ 4(b) are non-exclusive, and that bad faith can be determined from a “totality of the circumstances” under Policy ¶ 4(a)(iii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”). Accordingly, the Panel looks to arguments beyond Policy ¶ 4(b) for evidence of bad faith.
Complainant claims Respondent registered and used and/or passively held the domain name <recordingacademy.com> in bad faith. Complainant argues that a failure to make an active use or show evidence of preparations to use a disputed domain name is suggestive of bad faith registration pursuant to Policy ¶ 4(a)(iii). Previous Panels have determined that failure to make active use of a domain name following its registration indicates that the respondent registered the disputed domain name in bad faith. See Hewlett-Packard Co. v. Martineau, FA 95359 (Forum Aug. 30, 2000) (“Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith.”). Here again, Complainant alleges that Respondent made no meaningful effort to make an active use of the domain throughout the entirety of the sixteen years in which it has been registered. See Compl., at Attached Annex 9. Therefore, the Panel finds that Respondent failed to make any demonstrable active use of the disputed domain and thus Policy ¶ 4(a)(iii) is satisfied.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used and/or passively held the disputed domain name containing Complainant’s protected mark in bad faith; Complainant satisfied the elements of ICANN 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 <recordingacademy.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 30, 2017
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