WFBQ-FM/WRZX-FM, WNDE-AM v. ecorp.com
a/k/a ecorp
Claim Number: FA0203000105852
PARTIES
Complainant
is WFBQ-FM/WRZX-FM/WNDE-AM,
Indianapolis, IN (“Complainant”) represented by B. Keith Shake, of Henderson,
Daily, Withrow & DeVoe.
Respondent is Chad Folkening
ecorp.com a/k/a ecorp, Indianapolis, IN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <q95.com>
and <x103.com>, registered with Tucows, Inc.
PANEL
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge, has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on March 12, 2002; the Forum received a hard copy of the Complaint on March 14,
2002.
On
March 13, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
names <q95.com> and <x103.com> are registered with Tucows, Inc. and that Respondent
is the current registrant of the name. Tucows,
Inc. has verified that Respondent is bound by the Tucows, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
March 21, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 10,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@q95.com and postmaster@x103.com by e-mail.
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
April 16, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Sandra Franklin as 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 Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” 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.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from the Respondent to the
Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The <q95.com> and <x103.com> domain
names are identical to Complainant’s Q95 and X103 marks.
2. Respondent has no rights or
legitimate interests in the disputed domain names based on:
·
Respondent has not used or developed either domain name.
·
Respondent is not commonly known by either domain name.
·
Because Respondent lives in Indianapolis, he is aware of the fame
attained by Complainant’s marks and therefore, if he registered the marks for
the sole purpose of exploiting the Complainant’s name and recognition to
increase traffic and exposure to other websites. This use would have a tarnishing effect, since Internet users
would have the impression that Complainant endorses Respondent’s websites.
3. Respondent has not developed either domain
name. Furthermore, Respondent has
attempted to obtain consideration in excess of out-of-pocket costs for the
disputed domain names. Finally, by
using identical domain names, Respondent intends to benefit from Internet user
confusion as to the source and sponsorship of Respondent’s website.
B.
Respondent
No
Response was submitted.
FINDINGS
Complainant is a broadcast division of
Clear Channel Communications, Inc. serving the Indianapolis metro area as well
as Central Indiana. Among other radio
properties, Complainant operates WRZX-FM at the 103.3 FM frequency and WFBQ-FM
at the 94.7 FM frequency. Because of
extensive advertising and promotion, millions of people in Indiana know WRZX as
X103 and WFBQ as Q95.
Respondent registered <q95.com> on November 17, 1998 and <x103.com>
on November 24, 1998. According to the Complainant, Respondent has
not used or developed either domain name as of this date. Respondent has offered to sell its interest
in both domain name registrations in exchange for discounted advertising of
Respondent’s other business ventures, totaling an amount equal to a 50%
discount over a two-year period, to be capped at $30,000.
DISCUSSION
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 the 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.
Paragraph
4(a) of the 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; and
(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.
Identical and/or Confusingly Similar
Because millions of people identify
Complainant’s radio properties as X103 and Q95, Complainant has gained common
law rights to the marks and thus, has established its rights to the marks. The Panel finds that the disputed domain
names <q95.com> or <x103.com> are
identical to Complainant’s Q95 and X103 marks.
See Sunkist Growers, Inc.
v. S G & Delmonte-Asia.com, D2001-0432 (WIPO May 22, 2001) (finding
that the domain name <sunkistgrowers.org> is identical to complainant’s
common law SUNKIST GROWERS mark). The
only difference between the disputed domain name and mark is the addition of
the generic top-level domain “.com,” and such a difference does not create a
distinguishable mark. See Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal significance since
use of a gTLD is required of domain name registrants"); see also Visit Am., Inc. v. Visit Am., FA 95093
(Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the
Internet address and does not add source identity significance).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent has not filed a Response. Thus, the Panel may conclude that Respondent
has no rights or legitimate interests to either <q95.com> or <x103.com>. 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). Since a Response
was not filed, the Panel will presume that all allegations in the Complaint are
true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true); see
also Desotec N.V. v. Jacobi
Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to
respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence).
Respondent is known as “ecorp.com” and
has not presented any evidence that it has been known as either <q95.com> or <x103.com>.
Therefore, the Panel finds that Respondent is not commonly known
by either of the two disputed domain names and thus, can not satisfy Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark).
Based on the Complaint, Respondent has
held the registrations for over three years and has not made use of either of
them. Such non-use of the domain names
does not qualify as a bona fide use pursuant to policy ¶ 4(c)(i) or a
legitimate, noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000)
(finding no rights or legitimate interests where Respondent failed to submit a
Response to the Complaint and had made no use of the domain name in question); see
also Vestel Elektronik Sanayi ve
Ticaret AS v. Mehmet Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that
“…merely registering the domain name is not sufficient to establish rights or
legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Respondent has offered to transfer the
disputed domain names to Complainant in exchange for two-years of discounted
advertising (to be capped at $30,000) on Complainant’s radio stations. Given the fame attained by Complainant’s
marks in the area in which Respondent resides, this activity by Respondent is
evidence that Respondent registered the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(i). See Metallica v. Schnieder, FA 95636
(Nat. Arb. Forum Oct. 18, 2000) (finding bad faith based on Policy ¶ 4(b)(i)
where the Respondent offered to transfer the domain name in return for non
monetary consideration (i.e., if the Complainant met with the Respondent,
called two of his friends, and granted the Respondent on interview)); see
also Gutterbolt, Inc. v. NYI Bldg.
Prod. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000) (finding that the
demanded consideration does not have to be monetary in nature, but can be
anything of value that exceeds the amount spent in registering and maintaining
the domain name).
Respondent has registered two domain
names that are identical to Complainant’s marks. This is evidence that Respondent registered the disputed domain
names in bad faith pursuant to Policy ¶ 4(b)(ii). See YAHOO! Inc. v. Syrynx, Inc. & Hamilton, D2000-1675 (WIPO Jan. 30, 2001) (finding a bad
faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two
domain names incorporating Complainant's YAHOO! mark).
By registering two domain names that
Respondent knew or should have known are identical to Complainant’s marks and
subsequently not using the two domain names other than attempting to offer to
sell the registrations to Complainant, Respondent has registered and used the
disputed domain names in bad faith. See
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing
domain name without active use can constitute use in bad faith); see also
Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain
circumstances, for inactivity by Respondent to amount to the domain name being
used in bad faith”); see also Caravan
Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that
Respondent made no use of the domain name or website that connects with the
domain name, and that passive holding of a domain name permits an inference of
registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be hereby granted.
Accordingly, it is Ordered that the <q95.com> and the <x103.com>
domain names be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: April 23, 2002
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