National Academy of Recording Arts & Sciences, Inc. v. Oskars Dombrava
Claim Number: FA1101001369540
Complainant is National Academy of Recording Arts & Sciences, Inc. (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Oskars Dombrava (“Respondent”), Latvia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <watchgrammysonline.com>, registered with eNom.com.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 25, 2011; the National Arbitration Forum received payment on January 25, 2011.
On January 26, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <watchgrammysonline.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com 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 January 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 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@watchgrammys-online.com. Also on January 28, 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 February 23, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant holds trademark registrations for its GRAMMY mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,865,177, issued November 29, 1994).
Complainant uses its GRAMMY mark to market and promote the presentation of Complainant’s GRAMMY Awards.
Respondent registered the <watchgrammysonline.com> domain name on September 14, 2010.
The disputed domain name resolves to a website that purports to offer free online viewing of the 2011 GRAMMY Awards Show, but only after Internet users are redirected to a third-party website and required to view commercial offers from third-parties and to provide third-parties with personal financial information.
Once Internet users view the featured offers and provide the requested information, the resolving website does not show video of the awards show, but instead shows a still picture.
Respondent has been a respondent in a previous case involving the current Complainant. See Nat’l Acad. Of Recording Arts & Scis., Inc. v. Pskars Dombrava, FA 1335835 (Nat. Arb. Forum Aug. 27, 2010).
In that case, Respondent was ordered to transfer the <watchgrammy.com> domain name to Complainant.
Respondent’s <watchgrammysonline.com> domain name is confusingly similar to Complainant’s GRAMMY mark.
Respondent is not commonly known by the domain name <watchgrammys-online.com>.
Complainant has not authorized Respondent to use the GRAMMY mark or to maintain the disputed domain name.
Respondent does not have any rights or legitimate interests in the domain name <watchgrammysonline.com>.
Respondent registered and uses the <watchgrammysonline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has acquired rights to its GRAMMY trademark for purposes of Policy ¶ 4(a)(i) by virtue of the registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) and Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), both finding that a national trademark registration is sufficient for a complainant to establish rights in its marks under the Policy. Moreover, in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), a panel concluded that under Policy ¶ 4(a)(i), a complainant is not required to register a mark in the country in which a respondent resides in order to establish rights in a mark, it being sufficient that a complainant can establish rights in its mark in some jurisdiction.
Respondent’s <watchgrammysonline.com> domain name is confusingly similar to Complainant’s GRAMMY trademark. The disputed domain name includes Complainant’s entire mark and merely adds the generic terms “watch” and “online,” the letter “s,” and the generic top-level domain (“gTLD”) “.com.” In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), a panel found that the addition of a generic term to the mark of another in forming a contested domain name does not sufficiently distinguish the disputed domain name from the mark. Similarly, in Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), a panel held that the addition of a letter to the mark of another in forming a disputed domain name does not avoid a conclusion of confusing similarity vis-à-vis that mark. Finally, in Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007), a panel determined that the addition of a gTLD iss irrelevant to a Policy ¶ 4(a)(i) analysis.
The Panel therefore finds that Respondent’s <watchgrammysonline.com> domain name is confusingly similar to Complainant’s GRAMMY trademark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in any of the <watchgrammysonline.com> domain name. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), a panel held that, once a complainant makes out a prima facie case in support of its allegations under Policy ¶ 4(a)(ii), the burden shifts to a respondent to prove that it does have rights to or legitimate interests in a contested domain name.
Complainant has made out a sufficient prima facie case under this head of the policy, while Respondent, for its part, has failed to respond to the allegations of the Complaint filed in this proceeding. In Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000), a panel held that a respondent’s failure to respond to a complaint filed under the Policy allows a panel to infer that that respondent does not have rights to or legitimate interests in a disputed domain name. We are therefore free to conclude that Respondent has no such rights or legitimate interests. However, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We first observe that Complainant asserts, and Respondent does not deny, that Respondent is not commonly known by the <watchgrammysonline.com> domain name and that Complainant has not authorized Respondent to use the GRAMMY trademark or to maintain the disputed domain name. Moreover, the pertinent WHOIS information identifies the registrant of the contested domain name only as “Oskars Dombrava,” which is not similar to the disputed domain name. On this record, we must conclude that Respondent has failed to establish that it is commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in the contested domain within the meaning of Policy ¶ 4(c)(ii). Previous panels, for example, in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) and M. Shanken Commc’ns v. WORLDTRAVELERS-ONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), have concluded that a respondent is not commonly known by a disputed domain name where the relevant WHOIS information and other evidence in the record do not support such a finding.
We next note that Complainant asserts, without objection from Respondent, that Respondent uses the <watchgrammysonline.com> domain name to benefit commercially through the receipt of referral fees from the visits of Internet users to the website resolving from the contested domain. In Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) and Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003), panels held that employing a contested domain name to provide access to the websites of unrelated third-parties was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). We likewise conclude that Respondent’s use of the <watchgrammysonline.com> domain name in the manner alleged does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant provides evidence of a previous UDRP proceeding involving Respondent and Complainant, in which Respondent was forced to transfer a disputed domain name to Complainant. See Nat’l Acad. Of Recording Arts & Scis., Inc. v. Pskars Dombrava, FA 1335835 (Nat. Arb. Forum Aug. 27, 2010). That proceeding is evidence of a pattern of bad faith registration and use of domain names on the part of Respondent. See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) and Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003), in which UDRP panels ruled that respondents had demonstrated bad faith in the registration and use of contested domain names under Policy ¶ 4(b)(ii) on the strength of similar findings in prior proceedings. Consequently, we conclude that Respondent’s registration and use of the <watchgrammysonline.com> domain name in the circumstances constitutes evidence of bad faith registration and use of the domain pursuant to Policy ¶ 4(b)(ii).
The record reflects that Respondent is attempting to confuse Internet users as to the possibility of Complainant’s affiliation with the <watchgrammysonline.com> domain name in order to gain commercially from this confusion. Respondent relies upon the confusing similarity between the disputed domain name and Complainant’s GRAMMY trademark to attract Internet users to Respondent’s website. In Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) and Bama Rags, Inc. v. Zuccarini, FA 94381 (Nat. Arb. Forum May 8, 2000), a panel determined that the use of third-party advertisements at a website resolving from a domain name confusingly similar to a complainant’s mark was evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iv). We concur. For this reason, the Panel holds that Respondent’s use of the domain name <watchgrammysonline.com> constitutes bad faith registration and use of the domain under Policy ¶ 4(b)(iv).
Accordingly, the Panel finds that Complainant has satisfied its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <watchgrammysonline.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 24, 2011
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