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Generic Top Level Domain Name (gTLD) Decisions |
National
Academy Of Recording Arts & Sciences Inc. v. LSites
Claim Number: FA0112000103059
The Complainant is National Academy Of Recording Arts & Sciences Inc., Santa Monica, CA, USA (“Complainant”) represented by John W Hazard, of Webster Chamberlain & Bean. The Respondent is LSites, Nakula Banglamung Chonburi, Thailand (“Respondent”).
The domain name at issue is <GRAMMY.biz>, registered with eNom 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel. As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).
Complainant submitted a Complaint to the Forum electronically on December 14, 2001; the Forum received a hard copy of the Complaint on December 14, 2001.
On December 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 15, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 5, 2002, pursuant to STOP Rule 6(b), the Forum appointed The Honorable Charles K. McCotter, Jr. (Ret.) as the single 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 STOP Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Transfer of the domain name from Respondent to Complainant.
A. Complainant
The <GRAMMY.biz> domain name is identical to Complainant's GRAMMY mark.
Respondent has no rights or legitimate interests in the <GRAMMY.biz> domain name.
Respondent registered the <GRAMMY.biz> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response.
Since 1959, Complainant has used the GRAMMY mark in relation to its annual awards ceremony for outstanding musical performance in the music industry. Complainant has presented the annual GRAMMY award celebration for the past forty years. The awards ceremony is televised internationally and is featured in newspapers, magazines and other publications worldwide. The GRAMMY mark, as a result of the GRAMMY awards ceremony has become a famous mark symbolizing musical excellence and the ultimate achievement of recording artists in the entertainment field.
Complainant owns over 45 U.S. and international registrations of the GRAMMY mark and variations thereof. GRAMMY is registered in the United States as Registration No. 887,642.
Respondent registered the disputed domain name on November 19, 2001. Respondent supplied incorrect contact information when it registered the disputed domain name. Respondent is not authorized by Complainant to use the GRAMMY mark.
Paragraph
15(a) of the STOP 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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.
Paragraph 4(a) of the STOP Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:
(1) the domain name is identical to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of
the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.
Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights. The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which the Complainant asserts rights.
Complainant, through continuous and extensive use and numerous trademark registrations, has established that it has rights in the GRAMMY mark. Furthermore, the widespread use and international recognition of the GRAMMY mark has made it famous. The <GRAMMY.biz> domain name is identical to Complainant's GRAMMY mark.
The Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward with a Response and therefore it is
presumed that Respondent has not demonstrated rights or
legitimate interests in
the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no
legitimate interest
in the domain names).
Furthermore, when Respondent fails to submit a Response, the Panel is permitted to make all inferences in favor of Complainant. See 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”).
There is no evidence in the record, and Respondent has not come forward to establish that it owns any trademark or service mark registrations for the GRAMMY mark anywhere in the world. Therefore, Respondent has not demonstrated any rights or legitimate interests in respect to the <GRAMMY.biz> domain name pursuant to STOP Policy ¶ 4(c)(i). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests under the UDRP where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
Furthermore, based on the famous and distinctive nature of Complainant's GRAMMY mark, any planned use by Respondent of the <GRAMMY.biz> domain name, identical to Complainant's good will and reputation, would be an opportunistic attempt to attract customers via Complainant's famous mark and therefore is not considered a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites).
Based on the famous nature of Complainant's GRAMMY mark it can be inferred that Respondent is not known by the GRAMMY mark. Furthermore, there is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <GRAMMY.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). See Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
The Panel finds that STOP Policy ¶ 4(a)(ii) has been satisfied.
Based on the circumstances, it can be inferred that Respondent registered the disputed domain name in order to prevent Complainant from using its GRAMMY mark in a corresponding domain name. This behavior is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(ii). See Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark).
Furthermore, because of the famous and distinctive nature of Complainant's GRAMMY mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <GRAMMY.biz> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).
The Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <GRAMMY.biz> be transferred from Respondent to Complainant and subsequent challenges under the STOP Policy against this domain name shall not be permitted.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: February 11, 2002
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URL: http://www.worldlii.org/int/other/GENDND/2002/195.html