Clear Channel
Communications, Inc. v. Emmis Communications
Claim Number: FA0210000126658
PARTIES
Complainant is Clear Channel
Communications, Inc., San Antonio, TX (“Complainant”) represented by Pamela
B. Huff, of Cox & Smith Incorporated. Respondent is Emmis Communications,
Indianapolis, IN (“Respondent”) represented by Lisa M. Thomas, of
Gardner Carton & Douglas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <power1051.com>,
registered with Register.com.
PANEL
The undersigned certify that they have
acted independently and impartially and to the best of their knowledge have no
known conflict in serving as Panelists in this proceeding.
Mr. C.
Elliott served as Chair, along with Mr. T. Arnold and R. Glen Ayers as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on October 1, 2002; the
Forum received a hard copy of the Complaint on October 2, 2002.
On October 1, 2002, Register.com
confirmed by e-mail to the Forum that the domain name <power1051.com>
is registered with Register.com and that the Respondent is the current
registrant of the name. Register.com
has verified that Respondent is bound by the Register.com 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 October 10, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of October 30, 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@power1051.com by e-mail.
A timely Response was received and
determined to be complete on October 30, 2002.
On December 4, 2002, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the Forum
appointed Mr. Clive Elliott as Chair Panelist along with Mr. Tom Arnold and
Honorable R Glen Ayers as Panelists.
On December 6, 2002 the Panel requested
additional submissions regarding the parties’ use of the mark POWER. A request for clarification was then
received from Complainant on December
12, 2002 and answered by the Panel on December 14, 2002.
The additional submissions were received
from both parties on December 19, 2002.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant asserts it began using the
mark POWER 105.1 in New York City, New York in March, 2002.
Complainant also asserts
it uses POWER to identify six radio stations located in New York, Georgia,
Pennsylvania and Texas. POWER is used
on the air to identify the respective broadcasting services 20 to 40 times hourly,
24 hours a day, seven days a week. Further, the mark is used in television, Internet, and print
advertising.
Complainant set out the
relevant use in a chart, provided below:
|
Stations owned by Clear Channel
Communications, Inc. Utilizing the POWER Trademark |
||||
|
Call Letters |
Location |
Launch Date |
Wattage |
On Air Usage |
|
WWPR |
New York City, NY |
March, 2002 |
||
|
WPRW |
Augusta, GA |
November, 1999 |
50,000 |
7 Days a Week |
|
WPHR |
Auburn, NY |
January, 2001 |
13,800 |
|
|
WUSL |
Philadelphia, PA |
1982 |
50,000 |
|
|
KPRR |
El Paso, TX |
1999 |
100,000 |
|
|
KPRF |
Amarillo, TX |
1986 |
||
Complainant indicates that POWER 105.1 is
used on outdoor billboards, on the station’s website, on concert signage, and
other numerous promotion streams. In
contrast, Complainant says that Respondent is not using the mark POWER in connection
with any station in New York City and is not using POWER in association with
any station located at the 105.1 frequency.
Complainant asserts that Respondent
registered the <power1051.com> domain name immediately after
receiving Complainant’s misdirected email, which stated Complainant’s intent to
use and register <power1051.com>. It contends that this is
evidence of bad faith.
Respondent, like Complainant, operates
radio stations in various geographic regions of the United States.
Respondent asserts it has a family of
POWER trademarks, several of which include the word “power” and the frequency
from which its stations broadcast.
These marks include POWER 106 FM, POWERHOUSE, POWERMIX WEEKENDS, POWER OF
EMMIS, POWER 92.3, MUSIC POWER, MAKE THE POWER SWITCH, POWER PARTY MIX, K-POWER
and POWER OF HIP HOP.
Respondent
began use of the first of its POWER marks at least as early as January 11,
1986. The location, dates, wattage, and geographical reach of the radio station
broadcasts using POWER are listed below:
§
KPWR-FM
is located in Los Angeles, California.
KPWR-FM is a Class B FM of 25,000 watts and inside its 54 dBu contour it
covers 21,472 km2 and reaches approximately 14,197,841 people.
§
KKFR-FM
is located in Phoenix, Arizona. KKFR-FM
is a Class C FM of 100,000 watts and inside its 54 dBu contour it covers 31,296
km2 and reaches approximately 3,232,986 people.
§
WQHT-FM
is located in New York, New York.
WQHT-FM is a Class B FM of 6,700 watts and inside its 54 dBu contour it
covers 13,923 km2 and reaches approximately 16,902,315 people.
Respondent has also obtained a federal
registration for one of its POWER marks, namely Reg. No. 1,439,522 (POWER 106
FM and Design for “radio broadcasting services”).
Respondent asserts that as a result of
its long and continuous use of its POWER marks, it has developed significant
and protectable goodwill in those marks.
It submits that the domain name at issue is thus related to Respondent’s
long-standing use of its own mark.
Additionally, Respondent states it has
used the mark POWER in connection with the following slogans and monikers
consistently and continuously for the above-referenced radio stations: POWER 106 FM, POWERHOUSE, POWERMIX WEEKENDS,
POWER OF EMMIS, POWER 92.3, MUSIC POWER, MAKE THE POWER SWITCH, POWER PARTY
MIX, K-POWER and POWER OF HIP HOP.
These uses and the rights associated with
the above-referenced slogans and monikers are supported by both federal and
state service mark registrations, including
Federal Registration Number 1,439,522 for the service mark POWER 106 FM.
It notes that as a business strategy,
Respondent has obtained registrations to cover a range of FM frequencies. For example, Respondent has obtained domain
name registrations for <power921.com>, <power925.com>,
<power927.com>, and <power929.com>. These domain names point to Respondent’s POWER home page, located
at <powerofemmis.com>, and are intended for listeners of the radio
station it operates under POWER 92.3.
Similarly, for its Los Angeles-based radio station POWER 106 FM, which
operates at a frequency of 105.9, Respondent has obtained the domain name
registrations <power105.com>, <power1051.com>, and
<power1053.com>.
C. Additional Submissions
As noted above additional submissions were lodged by both
parties and received by the Panel on December 19, 2002. Both parties provided
details of the location, dates, wattage, and geographical reach of the radio
station broadcasts using POWER.
Pursuant to paragraph 4(a) of the Policy
it is found that:
(1) The question of whether
the domain name <power1051.com> is identical or confusingly
similar to the POWER 1051 trade/service mark in which Complainant has rights is
left open;
(2) Respondent has a right
or legitimate interests in respect of the <power1051.com>domain
name; and
(3) the
<power1051.com> domain name was not registered and is not being
used in bad faith.
DISCUSSION
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 the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(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.
Respondent asserts trademark rights in
the following marks: POWER 106,
POWERHOUSE, POWERMIX WEEKENDS, POWER OF EMMIS, POWER 92.3, MUSIC POWER, MAKE
THE POWER SWITCH, POWER PARTY MIX, K-POWER and POWER OF HIP HOP. Respondent claims that it first began use of
one of its POWER marks at least as early as January 11, 1986. Respondent further asserts that it holds a
federal trademark registration for POWER 106 FM (Reg. No. 1,439,522).
Respondent argues that its POWER
radio-related marks were established before Complainant’s interests in the
POWER 105 mark. Respondent asserts that
the domain name is “not confusingly similar to any prior-existing trademark or
service mark in which Complainant has rights.”
Respondent notes that it registered the <power1051.com>
domain name on March 8, 2002, while Complainant did not begin commercial use of
the station name Power 105.1 until March 14, 2002.
Therefore, the Panel may find that the
Complaint is not proper since Complainant’s rights in the POWER 105 mark do not
predate Respondent’s domain name registration.
See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001)
(stating that “We are of the unanimous view that the trademark must predate the
domain name”).
In the present case, it is clear that
both parties use the POWER mark and have done so "in different radio
markets since l986. Respondent has major investments in use of
"Power" in association with his stations sufficiently long to make it
clear he is not a "Johnny-come-lately" pirate of trademark significance
in that word in Complainant's markets developed prior to l986. The numbers
following "Power" as used by Respondent are
radio frequencies of his stations, mere radio spectrum addresses of the
stations Respondent has operated extending back in one case to l986. We cannot
attach controlling trademark significance to those numbers which are mere
frequency addresses descriptive of how to get reception from a given station.
The fudging of l05.9 to l06 is noted, but it is not really material; in
practicality "l06" as used is a shorthand address of a station
assigned the frequency of l05.9 by the government. "l05.9" must be
available for each proprietor of a station operating at that frequency to use
in advertising its station."
The issue that has to be decided is
whether Complainant has prior rights sufficient to establish that it holds a
mark. This requires an assessment of
whether Complainant not only has prior and relevant use of the trade or service
mark but whether Complainant has rights in the trade or service mark vis a vis
Respondent.
This is a difficult assessment to make in
this particular case and for the reasons given below we prefer not to reach a
firm conclusion on this ground.
Accordingly, we leave this ground open.
Respondent argues that the domain name is
related to its rights in its POWER family of marks. Specifically, Respondent claims to have registered the domain
name as a business strategy to enhance its POWER brand. Respondent asserts that it registered the
domain names <power921.com>, <power925.com>, <power927.com>,
and <power929.com>. Respondent
claims these domain name were registered for listeners of the radio station it
operates under POWER 92.3. Likewise,
Respondent asserts that it registered the domain names <power105.com>, <power1051.com>,
and <power1053.com> for listeners of its POWER 106 FM radio station,
which operates at a frequency of 105.9 FM.
Respondent claims to use its registered domain names to direct Internet
traffic to its <powerofemmis.com> website, whereby it wishes to
strengthen its POWER brand radio marks.
Therefore, Respondent argues that it uses the domain names, including <power1051.com>,
for a bona fide offering of its “power” services.
It seems to us that Respondent is able to
rely on Policy ¶ 4(c)(i), namely before notice of the dispute it took steps to
use the domain name in connection with a bona fide offering of services.
The issue here is whether a radio station
operator is entitled to continue to use a name or brand it has been using for
in excess of five years in running and the development of its business
operations. In the absence of clear evidence of prior and protectable common
law or other rights we are reluctant to find against Respondent.
Accordingly, we find Complainant fails to
make out this ground. We do however prefer to rest our finding principally on
the following “Bad Faith” ground, for the reasons given below.
Whether or not Complainant had rights in
the POWER 105.1 mark prior to registration of <power1051.com>,
Respondent claims that it registered the domain name in good faith for its
business strategy of enhancing its POWER brand radio-related marks. Furthermore, Respondent argues that
Complainant’s affidavit alleging that Complainant told Respondent of its plans
to use the POWER 105.1 mark in connection with a <power1051.com> is
not dispositive.
This is correct, because the domain name
could not have possibly been registered in bad faith the registration pre-dated
Complainant’s interests in the POWER 105.1 mark. See Interep Nat'l Radio Sales, Inc. v. Internet Domain
Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where
Respondent registered the domain prior to Complainant’s use of the mark); see
also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO
Dec. 11, 2000) (finding no bad faith where Respondent registered the domain
name in question before application and commencement of use of the trademark by
Complainant).
Absent some other consideration, such as
“insider information”, in a fair race to use and registration, the registration
of a domain name before Complainant has the right to claim a mark means that
there can be no “bad faith.”
Here, Respondent has used POWER for
fifteen or more years. It has now added
a non-trademark distinctive frequency address.
We find, on reflection that the parties
long term co-existence in the radio business and the particular facts of this
dispute do not point towards cybersquatting conduct of the type proscribed by
the UDRP. We find this issue the most relevant and in fact dispositive of the
Complaint as a whole, as absent a finding of bad faith the Compliant must fail.
This defeats Complainant’s claim with
respect to “power.” Adding the
frequency address to any advertising word, whether or not a mark, does not show
bad faith.
DECISION
In
view of the above the Complaint is DISMISSED.
Clive Elliott - Chair Panelist
Mr. T. Arnold
R. Glen Ayers
Dated:
January 20, 2003
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