Claim Number: FA0208000118172
Complainant is RadioShack Corporation, Ft. Worth, TX (“Complainant”) represented by Christi Angle, Esquire. Respondent is Dale Baron, Fresno, CA (“Respondent”), pro se.
The domain names at issue are <radioshackoutlet.com>, <shackout.com>, <radioshackparts.com> and <radioshackrepair.com>, registered with directNIC.com & 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.
M. KELLY TILLERY, ESQUIRE as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 12, 2002; the Forum received a hard copy of the Complaint on August 14, 2002.
On August 15, 2002, directNIC.com & eNom, Inc. confirmed by e-mail to the Forum that the domain names <radioshackoutlet.com>, <shackout.com>, <radioshackparts.com> and <radioshackrepair.com> are registered with directNIC.com & eNom, Inc. and that Respondent is the current Registrant of the names. directNIC.com & eNom, Inc. has verified that Respondent is bound by the directNIC.com & eNom, 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 August 20, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 9, 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on September 6, 2002.
On September 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed M. Kelly Tillery, Esquire as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant contends that it presently has 27 marks registered with the U.S. Patent and Trademark Office (“USPTO”) that contain “Radio Shack” or “RadioShack” and also has the mark registered in over 100 other countries.
Complainant contends that RADIO SHACK has been used as a mark since 1923 and was first registered on June 2, 1959, that RADIOSHACK has been used since 1995 and was registered since November 1996 and that it does business on the Internet at <radioshack.com>.
Complainant contends that Affidavits of Use And Declarations Of Incontestability have been filed with the USPTO for all of these marks except Registration Numbers 2,164,296 RADIOSHACK, and 2,049,319, which represents the stylised RADIOSHACK LOGO and DESIGN mark.
Complainant contends that the domain names incorporate Complainant’s RADIOSHACK trademark in its entirety and append the generic terms “outlet,” “parts,” and “repair.”
Complainant contends that <shackout.com> should be viewed in the context of the other domain names and that it refers to RadioShack outlet stores. Complainant also claims to own the trademark SHACK (U.S. Registration No. 1,655,078) and that it owns and operates twenty-one (21) RadioShack outlets.
Complainant contends that RADIOSHACK is an extremely famous mark, with a significant advertising budget (over $200 million per year).
Complainant further contends that:
1) there are over 7,000 Radio Shack locations in the United States;
2) the domain names at issue have automatic links to <qfrog.com>, which contain or contained among other items an Adult Entertainment section link to <muddygirl.com>, a pornographic site;
3) the domain names at issue bear no relation to RADIOSHACK or to outlet stores, parts, or repair;
4) Respondent has never been commonly known by the domain names;
5) Respondent is trafficking in Complainant’s trademark and goodwill and
the sites misleadingly divert consumers looking for information on RadioShack;
6) Respondent has not responded to Complainant’s demand letter sent both regular first class and certified mail on or about March 6, 2002;
7) the redirection of Web traffic to another site that a person does not intend to visit or access is not a legitimate noncommercial use of the domain name;
Respondent contends that domain names <radioshackoutlet.com>, <radioshack-parts.com> and <radioshackrepair.com> incorporate the common words “radio shack” and are differentiated with the additional common terms “outlet,” “parts,” and “repair” and that <shackout.com> should be viewed as substantially different from RadioShack Corporation and its stores.
Respondent contends that Complainant has failed to prevent other companies from using the term “shack” when differentiated with other common words and used for unrelated endeavors.
Respondent claims that its websites are different and unrelated to Complainant’s.
2) “Radio shack” is a common term with a significant meaning unrelated to the Corporation;
3) there are 170,000+ members of the American Radio Relay League (ARRL) and they are among the most active and enthusiastic amateurs in the country that have a “radio shack” in their house or boat and recognize the words or phrase for their original meaning;
4) Respondent has legitimate claim to the domain names as informational sites unrelated to retail;
5) the domain names at issue have links to various sites that contain predominantly information and non-commercial items;
6) the domain names at issue bear no relation to RADIOSHACK Corporation or to stores, or to actual parts, or repair, outside of information on these subjects but rather have rational noncommercial or fair use aspects that justify including the common words “radio shack,” based on original and current defined meaning and context;
7) Respondent is using commonly accepted and known words in the domain names for a non-competitive, informational Web site;
8) Respondent is not trafficking in Complainant’s trademark and goodwill for the
sites are amateur, non-competitive, and in no way misleading consumers looking for RadioShack Corporation services;
9) Respondent uses the domains as hobby oriented informational sites;
10) Complainant has failed to show any loss or damages that may have resulted
from Respondent’s use of the domain names;
11) the sites have no intent or potential to tarnish Complainant’s trademark and link
to other Amateur Radio, informational and related pages and sites and make no representation or appearance of an affiliation to Complainant;
12) Complainant’s marks are not original but were in common and popular use prior to the adoption by Complainant for the purpose of retail and Respondent’s use is fully reasonable and consistent with fair use of common terms;
13) any redirection of Web traffic is consistent with what a person intends to visit or access and is a legitimate use of the domain names;
14) Complainant has failed to establish any evidence of registration and use in bad faith, as outlined in ICANN Policy 4(b), 4(b)(i), 4(b)(ii), 4(b)(iii) or 4(b)(iv).
1) Complainant has met its burden to prove by a preponderance of the credible, relevant
admissible evidence that Respondent’s domain names <radioshackoutlet.com>, <radioshackparts.com> and <radioshackrepair.com> are identical or confusingly similar to a trademark or service mark in which Complainant has rights. See UDRP ¶ 4(a)(i). However, Complainant has not met its burden to prove by a preponderance of the credible, relevant, admissible evidence that the domain name <shackout.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights. See UDRP ¶ 4(a)(i).
2) Complainant has met its burden to prove by a preponderance of the credible, relevant admissible evidence that Respondent has no rights or legitimate interest in respect to the domain names. See UDRP ¶ 4(a)(ii).
3) Complainant has met its burden to prove by a preponderance of the credible, relevant admissible evidence that Respondent’s domain names <radioshackoutlet.com>, <radioshackparts.com> and <radioshackrepair.com> have been registered and are being used in bad faith. See UDRP ¶ 4(a)(iii)
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(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.
Based upon this record, there is no question that Complainant has rights in and to a number of marks including RADIO SHACK and RADIOSHACK in the United States as well as many other countries. Three of Respondent’s domain names, <radioshackoutlet.com>, <radioshackparts.com> and <radioshackrepair.com> consist of the exact registered mark(s) of Complainant with the addition of the generic words “outlet,” “parts,” and “repair” all of which relate to the goods and services offered by Complainant on one type of its stores. If these three domain names of Respondent did not include the aforementioned generic terms, there would be no question that the domain names were identical to marks in which Complainant has rights. Since they include additional terms, albeit generic terms, the issue is whether those inclusions do anything to render the domain names not confusingly similar. With the addition of these terms, the domain names are clearly not identical, but they certainly may be confusingly similar. Indeed, the first two portions of each of those three domain names are the words “radio” and “shack”; thus the predominant portion of the domain names in question are identical to the marks in which Complainant has rights. Since Complainant claims that it operates numerous RadioShack “outlets” and that it sells “parts” and that it provides “repair” services, the three generic terms utilized by Respondent in connection with the mark of Complainant clearly relate to and no doubt are intended to relate to the goods and services and type of business provided by Complainant. Under these circumstances and the fact that these terms in and of themselves are generic, all three of these domain names are confusingly similar to marks in which Complainant has rights.
However, it is a different story for the fourth domain name in question – <shackout.com>. Complainant’s primary mark is RADIOSHACK, but Complainant has a registration for the word SHACK. While the domain name <shackout.com> does include the word “shack” and it is the first part of that domain name which adds the word “out” thereto, the word “shackout” does not, in the opinion of this Arbitrator, appear to be confusingly similar to the mark SHACK or the mark RADIOSHACK. Complainant’s only argument regarding this domain name is that it should be considered “in context” with the others. There is nothing in the UDRP or trademark law generally which would support such an argument. Indeed, the phrase or word “shackout” could mean any number of things or nothing at all and it is the opinion of this Arbitrator that it is not confusingly similar to any mark in which Complainant has rights.
Although Respondent argues that it is making a legitimate noncommercial or fair use of the domain names without intent for commercial gain to misleadingly divert customers or to tarnish the trademark(s) at issue [UDRP ¶ 4(c)(iii)], Complainant contends and Respondent does not deny that the sites have an automatic link to <qfrog.com>, which contains an adult entertainment section link to <muddygirl.com>, an allegedly pornographic site. The sites in question also utilize pop-up ads so there is clearly evidence of commercial use and/or intent to divert customers. Under these circumstances, and in the absence of any other evidence presented by Respondent, there appear to be no rights or legitimate interest in respect to these domain names for Respondent.
Complainant claims that there is evidence of registration and use in bad faith because Respondent has not responded to Complainant’s demand letter, web traffic is redirected and that there is redirection to pornography.
Considering the links to adult entertainment sites, the pop-up ads and the absence of any credible evidence of legitimate purpose from Respondent, this Arbitrator has no trouble finding that UDRP ¶ 4(b)(iv) is implicated in that it appears that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with Complainant’s mark(s) as to the source, sponsorship, affiliation or endorsement of its website. Under these circumstances, Respondent has registered and is using these domain names in bad faith.
The domain names <radioshackoutlet.com>, <radioshackparts.com> and <radioshackrepair.com> shall be TRANSFERRED to Complainant.
Complainant’s request for relief as to the domain name <shackout.com> is denied.
M. KELLY TILLERY, ESQUIRE Panelist
Dated: October 2, 2002
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