Decorah Broadcasting, Inc. KDEC FM/KDEC AM v. Mary Mansfield
Claim Number: FA1304001495636
Complainant is Decorah Broadcasting, Inc. KDEC FM/KDEC AM (“Complainant”), represented by Matthew A. Warner-Blankenship of Davis, Brown, Shors, Koehn & Roberts, P.C., Iowa, USA. Respondent is Mary Mansfield (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kdecradio.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 19, 2013; the National Arbitration Forum received payment April 19, 2013.
On April 23, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <kdecradio.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 30, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 2013, 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@kdecradio.com. Also on April 30, 2013, 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 May 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Respondent has not ever been commonly known by the call sign represented by the domain name.
ii. Respondent’s disputed domain name has never been used for any purpose other than to impersonate Complainant’s website, to violate Complainant’s copyrights, and to harass Complainant.
i. It is likewise clear that Respondent acquired and registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
ii. Respondent registered the domain name to prevent Complainant from reflecting the mark in a corresponding domain name.
iii. Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant.
iv. Respondent intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on Respondent’s website or location.
Complainant established rights in a mark used by Respondent in its entirety in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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 or Confusingly Similar
Complainant, Decorah Broadcasting, Inc., KDEC FM/KDEC AM, argues that it owns and operates radio stations under KDEC, namely AM 1240 and KDEC FM 100.5. Complainant argues that it is a small local radio station based in Decorah, Iowa, and broadcasts news and entertainment to the local area. The Panel notes that while Complainant has not registered the KDEC mark with a trademark agency, the Panel finds that the registration of a trademark is unnecessary under Policy ¶ 4(a)(i). See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Complainant asserts that it has substantial common law rights in the KDEC mark. Complainant argues that it is the owner of the KDEC mark—which is an FCC- licensed mark, granted to Complainant in 1947. Complainant therefore contends that it has had the exclusive right to use the KDEC call sign in relation to broadcasting services since the late 40s, and has continuously operated a local radio station in Decorah, Iowa under the KDEC mark since that time. Complainant claims that from September of 2001 until it inadvertently allowed its registration to lapse October 23, 2012, Complainant was the owner of the domain <kdecradio.com>. Therefore, the Panel finds that this evidence is sufficient to find that Complainant established common law rights in the KDEC mark under Policy ¶ 4(a)(i). See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (“[T]he fact that Complainant previously held registrations for the [disputed] domain names attests to the fact that it has rights in its marks.”).
Complainant argues that Respondent’s use of the <kdecradio.com> website since October 23, 2012, has been a blatant attempt to cause confusion. While not explicitly alleged by Complainant, the Panel is permitted to make an inference that Complainant contends in this manner to urge that the disputed domain name is confusingly similar to Complainant’s KDEC mark under Policy ¶ 4(a)(i). The Panel notes that Respondent adds the descriptive term “radio” to the KDEC mark in the domain name. The Panel finds that Respondent’s addition of a descriptive term does not negate confusing similarity under Policy ¶ 4(a)(i). See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel also notes that Respondent adds the generic top-level domain (“gTLD”) “.com” to the domain name. The Panel finds that Respondent’s addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel finds that Respondent’s <kdecradio.com> domain name is confusingly similar to Complainant’s KDEC mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests
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), and then the burden of proof shifts to Respondent to show that it does have such 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 has not ever been commonly known by the call sign represented by the domain name. Complainant claims that from September of 2001 until October 23, 2012, Complainant was the owner of the domain <kdecradio.com>. Complainant contends that the <kdecradio.com> domain account was on automatic reply with the hosting company, <mydomain.com>. Complainant alleges that the credit card on file expired in 2012, that the hosting company did not notify Complainant of the expired card and that the site was put up for auction. Complainant contends that at some point, the domain was transferred to Respondent from the purchaser at auction. The Panel notes that the WHOIS information identifies “Mary Mansfield” as the registrant of the domain name. See Annex H. Thus, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims that Respondent’s disputed domain name has never been used for any purpose other than to impersonate Complainant’s website, to violate Complainant’s copyrights, and to harass Complainant. Complainant argues that Respondent erected a number of different webpages on the website. See Annexes D-F. Complainant contends that Respondent erected what appears to be a dummy site designed to cause confusion or mistake among consumers and harass Complainant for commercial gain. Therefore, the Panel finds that Respondent’s attempt to pass itself off as Complainant is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that it is likewise clear that Respondent acquired and registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, who is the owner of the mark, or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Complainant contends that it attempted to buy the domain back from Respondent the day after Respondent registered it, but the parties were not able to come to an agreement. Complainant argues that Respondent stated: “We typically do not purchase domains to resell,” and then immediately asked: “What would you be willing to pay for it[?]” See Annex C. Complainant asserts that when it stated its case and made an offer, Respondent replied, “Thanks for insulting me.” The Panel finds that Respondent registered the domain name with the purpose of selling it, finding bad faith use and registration pursuant to Policy ¶ 4(b)(i). See Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where the respondent made no use of the domain names except to offer them to sale to the complainant).
Complainant claims that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant. Complainant contends that Respondent erected what appears to be a dummy site designed to cause confusion or mistake among consumers and harass Complainant for commercial gain. See Annexes D-F. The Panel notes that past panels required evidence of competing use to support a finding of disruption. This Panel finds that disruption of Complainant’s radio broadcasts has not been specifically shown in this case; and the evidence suggests that Respondent cannot actually compete with Complainant’s business as a radio broadcaster. However, the Panel makes an inference that Respondent’s dummy sites interfere with the other aspects of Complainant’s legitimate business to the extent that it warrants a finding of disruption. But See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant).
Complainant asserts that Respondent intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on Respondent’s website or location. Complainant contends that Respondent erected what appears to be a dummy site designed to cause confusion or mistake among consumers and harass Complainant for commercial gain. See Annexes D-F. Complainant argues that it can be inferred that Respondent receives financial gain from this confusion. Thus, the Panel finds that Respondent’s attempt to pass itself off as Complainant demonstrates bad faith use and registration under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent acted in bad faith in registering and using the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kdecradio.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 11, 2013.
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