national arbitration forum

 

DECISION

 

American Studies Center d/b/a Radio America v. Jet Stream Enterprises Limited c/o Jet Stream

Claim Number: FA1307001511405

 

PARTIES

Complainant is American Studies Center d/b/a Radio America (“Complainant”), represented by Michael A. Connolly of Connolly Law Firm, LLC, Colorado, USA.  Respondent is Jet Stream Enterprises Limited c/o Jet Stream (“Respondent”), Antigua and Barbuda.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <radioamerica.com>, registered with Network Solutions, LLC.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2013; the National Arbitration Forum received payment on July 24, 2013.

 

On July 25, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <radioamerica.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 July 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 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@radioamerica.com.  Also on July 26, 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 August 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <radioamerica.com> domain name, the domain name at issue, is confusingly similar to Complainant’s RADIO AMERICA      mark.

 

2.    Respondent does not have any rights or legitimate interests in the domain name at issue.

 

3.    Respondent registered and used the domain name at issue in bad faith.

 

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

 

FINDINGS

Complainant owns common law rights in the RADIO AMERICA mark.  Complainant has been using the RADIO AMERICA mark in commerce in the United States since 1985 in connection with “radio network shows involving a wide array of subjects in the United States,” including news, talk, documentary, and short feature radio programs.  Complainant spends, on average, over $1,000,000 annually on marketing and advertising related expenses to promote itself and its programs.  Complainant’s radio programs are now carried on over 500 affiliate radio stations, Sirius/XM Radio, and American Forces Radio. Complainant registered its <radioamerica.org> domain name on October 20, 1996. Complainant also owns the <radioamericanetwork.com> domain name.

 

The <radioamerica.com> domain name is either identical and/or confusingly similar to Complainant’s RADIO AMERICA mark. Respondent has not been commonly known by the <radioamerica.com> domain name.  Respondent has no connection to Complainant, is not and never was authorized to use the RADIO AMERICA mark, and is not known as “Radio America” in the public forum.  Respondent’s use of, or demonstrable preparations to use, the disputed domain name is not in connection with a bona fide offering of goods or services, nor does Respondent make a legitimate noncommercial or fair use of the domain.  Respondent is using the disputed domain name to divert consumers to an unknown website which requires participation in a customer survey for an opportunity to win a prize. Complainant assumes that Respondent is being paid a “click fee” for traffic being generated by the disputed domain name.  Although Respondent has failed to respond to correspondence from Complainant, it appears that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant 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.

 

Respondent has a history of cybersquatting and of not responding to claims made against it for cybersquatting. See, e.g., The Gap, Inc. v. Jet Stream Enters. Ltd. c/o Jet Stream, FA 1330937 (Nat. Arb. Forum Aug. 1, 2010); DirecTV, Inc. v. Jet Stream Enters. Ltd. c/o Jet Stream, FA 1296495 (Nat. Arb. Forum Jan. 15, 2010); Barry's Ticket Serv., Inc. v. Jet Stream Enters. Ltd. c/o Jet Stream, FA 1270845 (Nat. Arb. Forum Aug. 5, 2009); RGH Enters., Inc. v. Jet Stream Enters. Ltd., FA 1342682 (Nat. Arb. Forum Aug. 27, 2010).  Respondent registered the <radioamerica.com> domain name with actual knowledge or constructive knowledge of the existence of Complainant and Complainant’s ownership and use of the RADIO AMERICA mark and <radioamerica.org>.  Complainant registered its <radioamerica.org> domain name on October 20, 1996, while Respondent registered the <radioamerica.com> domain name nearly two years later on August 14, 1998.

 

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

Complainant claims rights in the RADIO AMERICA mark while conceding that it does not own a trademark registration for the mark. Past panels have agreed that it is possible for a party to demonstrate rights in a mark under Policy ¶ 4(a)(i) even without a trademark registration. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). The Panel therefore concludes that it is not mandatory, pursuant to Policy ¶ 4(a)(i), to own a trademark registration with a government entity in order to claim rights in the mark, so long the party can establish common law rights in the mark.

 

Complainant contends that it owns common law rights in the RADIO AMERICA mark through its continuous use of the mark in commerce in the United States since 1985 in connection with “radio network shows involving a wide array of subjects in the United States,” including news, talk, documentary, and short feature radio programs. Complainant claims that its radio programs are now carried on over 500 affiliate radio stations, Sirius/XM Radio, and American Forces Radio.  Additionally, Complainant claims to spend, on average, over $1,000,000 annually on marketing and advertising related expenses to promote itself and its programs. Complainant states that it registered the <radioamerica.org> domain name on October 20, 1996, and also claims to own the <radioamericanetwork.com> domain name. In view of the evidence presented by Complainant, the Panel determines that Complainant has established secondary meaning in the RADIO AMERICA mark, such that the mark is commonly associated with Complainant in the minds of consumers, through Complainant’s extensive and continuous use of the mark in commerce. Accordingly, the Panel holds that Complainant owns common law rights in the RADIO AMERICA mark pursuant to Policy ¶ 4(a)(i). See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Cybertania, Inc. v. Right Mobile, Inc. Domain Mgr., FA 1015411 (Nat. Arb. Forum Aug. 6, 2007) (finding that a complainant had acquired secondary meaning sufficient to establish common law rights in a mark pursuant to Policy ¶ 4(a)(i) where the complainant had invested “enormous resources” in promoting the goods and services available under the complainant’s mark); see also Congregation Shuvah Yisrael, Inc. v. Neckonoff, FA 1043126 (Nat. Arb. Forum Sept. 7, 2007) (finding that a complainant’s mark had established secondary meaning where the complainant had previously held the registration for a domain name identical to the mark).

 

Respondent’s <radioamerica.com> domain name is either identical or confusingly similar to Complainant’s RADIO AMERICA mark. The disputed domain name is comprised wholly of Complainant’s claimed mark, save for eliminating of the space between words and the addition of the “.com” generic top-level domain.  Neither alteration is significant for the purposes of Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Accordingly, Respondent’s <radioamerica.com> domain name is identical to Complainant’s RADIO AMERICA mark within the meaning of Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been established. 

 

Rights or 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 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.”).

 

Respondent has not been commonly known by the <radioamerica.com> domain name and Respondent is not and never was authorized to use the RADIO AMERICA mark, and is not known as “Radio America” in the public forum. The relevant WHOIS information lists Respondent as “Jet Stream Enterprises Limited c/o Jet Stream,” which does not appear to bear any facial similarity to the <radioamerica.com> domain name. In view of the evidence presented by Complainant, coupled with the fact that Respondent has failed to refute any of this evidence, the Panel holds that Respondent is not commonly known by the <radioamerica.com> domain name for the purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).

 

Respondent’s use of, or demonstrable preparations to use, the disputed domain name cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain.  Respondent is using the disputed domain name to divert consumers to an unknown website which requires participation in a customer survey for an opportunity to win a prize. Presumably, Respondent is being paid a “click fee” for traffic being generated by the disputed domain name.  Respondent’s use of the <radioamerica.com> domain name to direct Internet users to a website unrelated to Complainant for Respondent’s own profit is protected by neither Policy ¶ 4(c)(i) nor Policy ¶ 4(c)(iii). See Homer TLC, Inc. v. Wang, FA 1336037 (Nat. Arb. Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).

 

The Panel finds that Policy ¶ 4(a)(ii) has been established. 

 

Registration and Use in Bad Faith

It appears that Respondent has registered the <radioamerica.com> domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration.  Although, the Panel notes that Respondent has held the disputed domain name for over fifteen years, there appear to be sufficient grounds to determine that Respondent did in fact register the <radioamerica.com> domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration.   Accordingly, the Panel holds that Respondent registered the disputed domain in bad faith under  Policy ¶ 4(b)(i). See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses).

 

Respondent has a history of cybersquatting and of not responding to claims made against it for cybersquatting. Complainant cites several prior UDRP decisions in which Respondent was held to have registered domain names in bad faith. See, e.g., The Gap, Inc. v. Jet Stream Enters. Ltd. c/o Jet Stream, FA 1330937 (Nat. Arb. Forum Aug. 1, 2010); DirecTV, Inc. v. Jet Stream Enters. Ltd. c/o Jet Stream, FA 1296495 (Nat. Arb. Forum Jan. 15, 2010); Barry's Ticket Serv., Inc. v. Jet Stream Enters. Ltd. c/o Jet Stream, FA 1270845 (Nat. Arb. Forum Aug. 5, 2009); RGH Enters., Inc. v. Jet Stream Enters. Ltd., FA 1342682 (Nat. Arb. Forum Aug. 27, 2010). The Panel finds that the weight of Respondent’s past bad faith registrations implies that Respondent registered the disputed domain name in the instant case in bad faith as well. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting). As a result, based on Respondent’s pattern of bad faith registration, the Panel finds that Respondent registered the <radioamerica.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).

 

Respondent registered the <radioamerica.com> domain name with actual knowledge or constructive knowledge of the existence of Complainant and Complainant’s ownership and use of the RADIO AMERICA mark and <radioamerica.org>. Complainant registered its <radioamerica.org> domain name on October 20, 1996, nearly two years before Respondent registered the <radioamerica.com> domain name on August 14, 1998. The Panel notes that past panels have typically disregarded constructive knowledge as a source of bad faith registration. See BMC Software, Inc. v. Dominic Anschutz, FA 1340892 (Nat. Arb. Forum Oct. 6, 2010) (determining that constructive notice will usually not support a finding of bad faith). This Panel, however, finds that Respondent registered the <radioamerica.com> domain name in bad faith because Respondent had actual notice of Complainant’s mark at the time of registration based on the fame of Complainant’s RADIO AMERICA mark and Complainant’s prior registration of the identical <radioamerica.org> domain name and its common law rights. 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").

 

The Panel finds that Policy ¶ 4(a)(iii) has been established. 

 

NOTE

This case has proceeded and has been decided as a default matter.  Had the Respondent  filed a Response and pled laches in defense, the Panel would have seriously regarded that assertion.

 

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 <radioamerica.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  August 26, 2013

 

 

 

 

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