national arbitration forum

 

DECISION

 

Trustees of Boston University d/b/a WBUR v. Brian Temple

Claim Number: FA1203001433207

 

PARTIES

Complainant is Trustees of Boston University d/b/a WBUR (“Complainant”), represented by Rebecca M. Ginzburg, Massachusetts, USA.  Respondent is Brian Temple (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <onpointradio.net>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2012; the National Arbitration Forum received payment on March 22, 2012.

 

On March 7, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <onpointradio.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On March 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@onpointradio.net.  Also on March 27, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <onpointradio.net> domain name is identical to Complainant’s ON POINT mark.

 

2.    Respondent does not have any rights or legitimate interests in the <onpointradio.net> domain name.

 

3.    Respondent registered and used the <onpointradio.net> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant operates a public radio station and hosts a news radio program under its ON POINT mark (“On Point with Tom Ashbrook”), which is broadcast throughout the United States.  Complainant owns rights in the ON POINT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,734,246 registered July 8, 2003). 

 

Respondent registered the <onpointradio.net> domain name on January 14, 2012.  Respondent’s domain name resolves to a website that features banner advertisements that promote an Internet radio program and independent music.

 

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."

 

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.

 

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of 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.  The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant has rights in the mark through its registration with a national trademark authority.  See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

Respondent’s <onpointradio.net> domain name is confusingly similar to Complainant’s ON POINT mark, s it merely combines the ON POINT mark with the descriptive term “radio” and the generic top-level domain (“gTLD”) “.net.”  The panel in Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) held that adding the descriptive word “talk” to a mark does not properly distinguish the domain name from a mark under Policy ¶ 4(a)(i).  In Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005), the panel concluded that adding a term descriptive of the complainant’s business, as well as adding a gTLD does not sufficiently differentiate the respondent’s domain name from the complainant’s mark. In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel stated that eliminating spaces between the words in a mark does not differentiate the domain name from the mark.  The Panel finds that the changes made in the disputed domain name are not enough to render it distinct from Complainant’s ON POINT mark under Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Once Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent is not commonly known by the <onpointradio.net> domain name and states that the WHOIS information identifies Respondent as “Brian Temple.”  Complainant states that it did not authorize Respondent to use its ON POINT mark in any manner.  The panel in Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), stated that based on the WHOIS information and other evidence on the record, the respondent was not commonly known by the disputed domain name.  The panel in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), concluded that the respondent could not have been commonly known by the disputed domain name where there was no evidence, including in the WHOIS information, to suggest that the respondent was commonly known by the disputed domain name.  The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant contends that Respondent is not using the <onpointradio.net> domain name for a bona fide offering of goods and services or a legitimate noncommercial or fair use, because Respondent’s disputed domain name resolves to a web page displaying advertisements and promoting its own radio program.  The Panel finds that Respondent’s use of the disputed domain name to display advertisements and compete with Complainant’s business is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s use of a confusingly similar domain name to feature banner advertisements and to promote its own program demonstrates that Respondent’s registration and use of the domain name was in bad faith.  The panel in Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007), determined that the respondent’s use of a domain name to advertise a competing service had the likelihood of leading to confusion among consumers as to the affiliation of the competing business, which was evidence of bad faith registration and use.  The panel in Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003), held that the respondent’s infringing domain name redirected Internet users to banner advertisements, which constituted bad faith registration and use.  The Panel finds that Respondent uses the confusingly similar <onpointradio.net> domain name to attract and divert users to a website that shows advertisements and offers competing services for its own commercial gain, evidence of bad faith registration and use under Policy ¶ 4(b)(iv)

 

Complainant alleges that Respondent had actual knowledge of Complainant’s rights in the ON POINT mark when it registered the <onpointradio.net> domain name, and Respondent’s continued use of the domain name after receiving notice of Complainant’s rights in the mark is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).  The Panel finds that this is additional evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"); see also Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <onpointradio.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Sandra J. Franklin, Panelist

Dated:  April 30, 2012

 

 

 

 

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