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National Academy of Recording Arts & Sciences, Inc. v. Las Vegas Computer Journal [2000] GENDND 921 (18 August 2000)

National Arbitration Forum

DECISION

National Academy of Recording Arts & Sciences, Inc. v. Las Vegas Computer Journal

Claim Number: FA0007000095168

PARTIES

The Complainant is National Academy of Recording Arts & Sciences, Inc., Santa Monica, CA, USA ("Complainant"). The Respondent is Las Vegas Computer Journal, Las Vegas, NV, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME(s)

The domain name at issue is "CYBERGRAMMY.COM", registered with Network Solutions Inc ("NSI").

PANELIST(s)

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

The Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 07/10/2000; The Forum received a hard copy of the Complaint on 07/10/2000.

On 07/11/2000, NSI confirmed by e-mail to The Forum that the domain name "CYBERGRAMMY.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 07/17/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/07/02000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by e-mail.

On August 7, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed The Honorable Paul A. Dorf (Ret.) as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant contends that there would be a likelihood of confusion and implied endorsement by Complainant of Respondent’s activities and web site by Respondent’s registration of the domain name that is the subject of this Complaint. Also, the Respondent has registered the domain names in bad faith and is engaged in the business of cyber squatting for profit.

B. Respondent

The Respondent contends that the domain name was not registered in bad faith, but originally Respondent wanted to set up a special website in concert with a feature in its publication Internet Surfer known as Top 101 Web Sites, which was renamed CyberGrammy and the number of web sites reviewed was reduced to 30. After this publication ceased publication in January, 2000. Respondent now wishes to use the web site to allow grandparents the opportunity to post pictures of their grandchildren on the site.

FINDINGS

The Complainant has become known world wide for its annual awards ceremony at where awards are given to outstanding performers in the music industry. These awards are sculpted representations of a gramophone. The Complainant holds many registrations which contain the term "Grammy" as well as a web site "grammy.com."

Complainant has been holding the awards ceremony for over 40 years, the term "Grammy" has become a famous mark and one which is universally recognized as representative of the goodwill of the Complainant.

The Complainant has five registrations and two applications pending for marks in which "Grammy" is an integral part. "Grammy®" has been in use since 1959 and has been registered to Complainant since 1970.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The domain name "cybergrammy.com" incorporates Complainant’s registered mark "Grammy®" and the prefix "cyber" suggests cyberspace and the internet, conveying the impression that the Complainant has a presence in cyberspace. It is likely that an observer would be confused, mislead, or deceived when encountering "cybergrammy.com."

Respondent has no legitimate interest in the domain name as its primary business to provide computer and internet related information to its readers. The contents of this web site contains nothing to support the adoption of "cyber grammy" as a trade name or the domain name in dispute.

The Respondent registered the domain name for the purpose of awarding a "Cybergrammy Award" to "outstanding websites." After Complainant became aware of Respondent’s web site, Complainant’s attorneys contacted Respondent advising it of Complainant’s trademark registrations and implied endorsement by the Complainant of respondent’s activities and web site.

Respondent was contacted by Complainant’s attorneys requesting that they cease use of the mark Grammy. Respondent removed the logo from the web site. At this time Respondent announced a re-design of the web site to be used as a meeting place for grandparents from all over the world. The re-design was put on hold after further

communication from Complainant’s counsel, requesting that they surrender the domain name.

Respondent advised Complainant’s attorney that the domain name was up for sale, and was listed on Respondent’s web site "www.computerjournal.com" in a section titled Domain Names for Sale.

DECISION

As all three elements required by the ICANN Policy Rule 4(a) have been satisfied, it is the decision of this panelist that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "Cybergrammy.com" be transferred from the Respondent to the Complainant.

Honorable Paul A. Dorf (Ret.)Dated: August 18, 2000