WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Academy of Country Music v. Pablo Palermo
Case No. D2008-0818
1. The Parties
Complainant is Academy of Country Music, Encino, California, United States of America, represented by Smith, Gardner, Slusky, Lazer, Pohren & Rogers, LLP, United States of America.
Respondent is Pablo Palermo, San Isidro, Peru.
2. The Domain Name and Registrar
The disputed domain name is registered with Backslap Domains, Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2008, for two domain names and . On May 27, 2008, the Center transmitted by email to Backslap Domains, Inc. a request for registrar verification in connection with the domain names on May 28, 2008, Moniker Online Services, LLC, provided the Center the registrant and contact details for . On June 3, 2008, Backslap Domains, Inc. transmitted by email to the Center its verification response providing the registrant and contact details for . In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on June 11, 2008, removing from the Complaint. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 13, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2008.
The Center appointed Ross Carson as the sole panelist in this matter on July 14, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is a United States based organization that was established in 1966 in order to encourage, promote, sponsor, initiate, and carry out plans, policies, and activities which will tend to further the development, acceptance, and recognition of country music, its artists, musicians, writers, and all other organizations and persons who are in any way connected with the field of country music and the promotion thereof. In 1981, Complainant officially changed the corporation’s name to the “Academy of Country Music” and continues to use this name today.
Complainant is responsible for organizing and overseeing the production of an annual nationally and internationally televised awards ceremony hosted by and honoring the top country music artists. Complainant’s annual television production is known as the “Academy of Country Music Awards” or “ACM Awards.” Complainant’s annual award show and featured host are widely promoted in print and other media both prior to and following the awards. The production is broadcast live to millions of viewers all across the United States of America and Canada and typically licensed for rebroadcast in several foreign countries. This year Complainant celebrated its 43rd annual awards ceremony. The ceremony was televised live from Las Vegas, Nevada on the CBS television network on May 18, 2008.
Complainant also sponsors and hosts numerous charity events. Complainant currently boasts a membership base of over 15,402 members. These members consist of fans, artists, and music industry professionals. Complainant has spent over $25,000,000.00 over the last 18 years in advertising and marketing their distinctive brand and has generated revenue of approximately $23,000,000 utilizing the marks ACADEMY OF COUNTRY MUSIC, ACM, and ACM AWARDS. As a result of the long and substantial use of Complainant’s marks, its common law trademarks ACADEMY OF COUNTRY MUSIC, ACM, and ACM AWARDS are widely known by the media and general public in the United States of America and Canada.
The domain name in dispute was registered on June 9, 2002.
5. Parties’ Contentions
A Complainant
A.1 Identical or Confusingly Similar
Complainant submits that the domain name in dispute, consists of Complainant’s common law trademark ACM, the generic word “award” and the Tld “.com”. Complainant states that the word “award” identifies the primary services associated with Complainant’s common law trade mark ACM.
Complainant states that ordinarily, the addition of a generic word to a name in which complainant has rights is not sufficient to distinguish a respondent’s domain name from complainant’s protected name. Mudd (USA), LLC v. Domain Active Pty. Ltd.,WIPO Case No. D2004-1018 (addition of the generic word “clothes” to the word “MUDD” not sufficient to distinguish). In the case at bar Respondent has merely added the generic word “awards” and the .com general top-level domain identifier to the “ACM” name and therefore has not distinguished the domain name so that the domain name in dispute remains confusingly similar to Complainant’s common law trade mark ACM. Complainant further states that it is clear that when the ACM mark and the word “awards” are combined there can be no doubt that the Respondent is clearly referring to Complainant’s goods and services and the domain name in dispute is confusingly similar to Complainant’s common law trade mark ACM.
A.2 No Rights or Legitimate Interests in respect of the Domain Name
Complainant submits that Respondent has no rights or legitimate interests in respect of the domain name. Respondent has never been commonly known by the names “Academy of Country Music”, “ACM”, or “ACM Awards”.
Complainant states that it has not granted or authorized use of their trade marks to Respondent, nor is the Complainant affiliated with or an endorser of Respondent’s business or non-business activities.
Complainant further submits that there is no evidence of Respondent’s use of, or demonstrable preparations to use the domain name in dispute in connection with a bona fide offering of goods or services.
A.3 Registered and Used in Bad Faith
Complainant submits that it has demonstrated that it has UDRP relevant trademark rights that predate the Respondent’s registering of the domain name in dispute such that the Panel may find that Respondent had knowledge of the Complainants trade mark rights prior to registration of the domain name in dispute.
Complainant submits that given the fame of Complainant’s trade marks for or including ACM and Respondent’s lack of noncommercial or fair use of the mark, Respondent’s only or primary intention in registering the domain name was to prevent Complainant from using the domain name as is their proper right. Respondent’s registration of the domain name in dispute incorporating the whole of Complainant’s trade marks without any color of title or justification is proof of bad faith on Respondent’s part. Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163.
Complainant further submits that Respondent registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name. Respondent has engaged in a pattern of conduct that substantiates this finding. See, Equifax Inc. v. PabloPalermao et al,WIPO Case No. D2008-0506. (Panel referred to 6 cases involving Pablo Palermao were the complainants succeeded in proving that Mr. Palermao’s activities satisfied the requirement of paragraph 4(b)(ii) of the Policy). See also, Cox Newspapers, Inc. d/b/a Dayton Daily News v. Pablo Palermao,WIPO Case No. D2008-0372; Advance Magazine Publishers Inc. v. PabloPalermao,WIPO Case No. D2008-0026. It should be noted that despite the Registrar’s records indicating that Respondent is one “Pablo Palermo” it is apparent that “Pablo Palermo” and “Pablo Palermao” are the same person. It appears that Mr. Palermao may have purposefully misspelled his name to hide his past encounters with the Center or perhaps it is just a typo on the part of the Registrar. The fact remains, that the e-mail address for Respondent is spelled correctly ([…]@) and in all of the WIPO cases against Mr. Palermao his residence is identified as San Isidro, Peru. Thus, it is apparent that the Respondent is continuing his pattern of registering protected domain names in order to prevent well known companies, like Complainant from being able to use the domain thus satisfying the requirement of paragraph 4(b)(ii) of the Policy.
Complainant further states that Respondent registered the domain name in dispute with knowledge of Complainant’s rights in its ACM trade mark and is using the domain name in dispute to misleadingly divert Internet traffic to its own websites that exist to steer consumers to other Internet links which lead to preset searches that take consumers to non-related websites thus violating paragraph 4(b)(iv) of the Policy by using the domain name in bad faith, Mudd (USA), LLC v. Domain Active Pty. Ltd.,WIPO Case No. D2004-1018.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
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 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.
The fact that Respondent did not submit a Response does not automatically result in a decision in favor of Complainant. The failure of Respondent to file a Response results in the Panel drawing certain inferences from Complainant’s evidence. The Panel may accept all reasonable and supported allegations and inferences following there from in the Complaint as true. Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy Complainant must establish rights in a trademark and secondly that the domain name in dispute is identical to or confusingly similar to the trademark in which Complainant has rights.
Complainant has for over 18 years promoted country music, country music performers, country music writers and country music producers primarily through the annual television show called the Academy of Country Music Awards or the ACM Awards show. The television show and the performers appearing on the show are advertised through print, web, radio, television, sponsorships and other advertising media. Complainant has spent over $25,000,000.00 million dollars promoting the ACM Awards show over the past 18 years. Complainant has made sales of magazines and other goods in association with the trade mark ACADEMY OF COUNTRY MUSIC and ACM in excess of $23,000,000.00 dollars over the same period. The evidence filed by Complainant establishes that the common law trade marks ACM and ACM AWARDS are distinctive of Complainant’s goods and services among the many country music fans in the United States of America and Canada where the ACM Award show is widely promoted and viewed. See Uitgeverij Crux v. W. Frederick Isler,WIPO Case No. D2000-0575.
The domain name in dispute includes or is comprised of Complainant’s trade marks ACM or ACM AWARDS. With respect to Complainant’s trade mark ACM, the addition of the descriptive word “awards” to Complainant’s trade mark ACM is not sufficient to avoid a finding of confusing similarity. See, Mudd (USA), LLC v. Domain Active Pty. Ltd.,WIPO Case No. D2004-1018. (addition of the generic word “clothes” to the word “MUDD” not sufficient to distinguish).
Previous panels have repeatedly held that the specific top level of the domain name such as “.org,” “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar (see Magnum Piering, Inc. v. The Mudjackers and Garwood & Wilson, Sr.,WIPO Case No. D2000-1525, holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name; and Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429, finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The domain name in dispute is identical or confusingly similar to Complainant’s trade marks ACM and ACM AWARDS.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy Complainant must prove that the Respondent has no rights or legitimate interests in respect of the domain name in dispute.
Respondent is not affiliated with Complainant and has never been authorized by Complainant to use Complainant’s common law trade marks or any trademarks confusingly similar thereto.
The web page associated with the domain name in dispute displays a series of sponsored links relating to goods and services on country music, country music artists, country music charts, country music awards, country music festivals, country Mp3, Country music downloads, country music ring tones, etc.. Previous UDRP decisions have consistently found that registrants that “park” their domain names that are confusingly similar to a trademark by using redirecting services with links to the goods or services of a complainant or complainant’s competitors have not made a bona fide offering of goods or services giving rise to any right or legitimate interest in the domain name in dispute. Deloitte Touche Tohmatsu v. Henry Chan,WIPO Case No. D2003-0584.
It is difficult for a complainant to prove the negative that a respondent does not have any rights or legitimate interests in a domain name in dispute. Respondent was given the opportunity by way of reply to demonstrate any rights or legitimate interests in the domain name in dispute pursuant to paragraph 4(c) of the Policy. Previous decisions under the Policy have found it sufficient for a complainant to make a prima facie showing that a respondent does not have any rights or legitimate interests in the domain name in dispute. Once this showing is met, the burden of proof shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain name. Here, Respondent did not file a Response nor avail itself of the benefits of paragraph 4(c) of the Policy.
The Panel finds that Complainant has proven that Respondent does not have any rights or legitimate interests in the domain name in dispute.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a)(iii) of the Policy Complainant must prove that the domain name in dispute has been registered and used in bad faith.
C.1 Domain Name Registered in Bad Faith
By reason of Complainant’s substantial use of its trade marks ACM and ACM AWARDS for many years in association with the sale of promotional goods and promotion of the annual television show announcing the selection of outstanding country performers, Complainant’s trademarks for ACM and ACM AWARDS were widely known prior to registration of the domain name in dispute on January 9, 2002.
The domain name at issue, , includes Complainant’s trade mark ACM and consists of Complainant’s trade mark ACM AWARDS in combination with the generic top level domain descriptor “. com”. It is difficult to conceive how Respondent could have created the domain name in dispute without prior knowledge of Complainant’s trademarks ACM and ACM AWARDS. Respondent was invited to file a Response. Respondent’s failure to explain any reason for choosing the domain name strengthens the Panel’s inference that Respondent registered the domain name in dispute with knowledge of Complainant’s goods and annual country music award show, sold and advertised by Complainant in association with Complainant’s trademarks ACM and ACM AWARDS..
The Panel finds that Respondent registered the domain name in dispute in bad faith.
C.2. Domain Name Used in Bad Faith.
Respondent’s use of the domain name in dispute to resolve to a website containing links to websites incorporating links to country music goods and services constitutes use of the domain name in bad faith. See Baccarat SA v. Web Domain Names,WIPO Case No. D2006-0038. (“The disputed domain name links to a web-site that includes links to other commercial web-sites. The Panel finds that providing such links, the Respondent most likely obtains a financial return through visitors that were originally looking for the Complainant and its products.”).
Respondent is using the confusingly similar domain name to attract users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s trademarks as to source, sponsorship, affiliation or endorsement of Respondent’s website constituting bad faith use under paragraph 4(b)(iv) of the Policy.
Respondent registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name. Respondent has engaged in a pattern of conduct that substantiates this finding. See, Equifax Inc. v. PabloPalermao et al,WIPO Case No. D2008-0506; (Panel referring to 6 cases involving Pablo Palermao where complainants successfully established that Mr. Palermao’s activities satisfied the requirement of paragraph 4(b)(ii) of the Policy); See also, Cox Newspapers, Inc. d/b/a Dayton Daily News v. PabloPalermao,WIPO Case No. D2008-0372; Advance Magazine Publishers Inc. v. Pablo Palermao,WIPO Case No. D2008-0026. It should be noted that despite the Registrar’s records indicating that Respondent is one “Pablo Palermo” it is apparent that “Pablo Palermo” and “Pablo Palermao” are the same person. It appears that Mr. Palermao may have purposefully misspelled his name to hide his past encounters with the Center or perhaps it is just a typo on the part of the Registrar. The fact remains, that the e-mail address for Respondent is spelled correctly ([…]@ ) and in all previous UDRP cases against Mr. Palermao his residence is identified as San Isidro, Peru. Respondent is continuing his pattern of registering domain names in order to prevent well known entities from being able to use the domain name thus satisfying the requirement of paragraph 4(b)(ii) of the Policy.
The Panel finds that Respondent used the domain name in dispute in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, be transferred to Complainant.
Ross Carson
Sole Panelist
Dated: July 28, 2008
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