WFBQ-FM/WRZX-FM, WNDE-AM v. ecorp.com a/k/a ecorp
Claim Number: FA0203000105852
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.
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.
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 email@example.com and firstname.lastname@example.org 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.
Complainant requests that the domain names be transferred from the Respondent to the 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.
No Response was submitted.
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.
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.
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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