Capstar Radio Operating Company v.
SterlingDavenport.com c/o Sterling Davenport Claim Number: FA0505000473842
PARTIES
Complainant is Capstar Radio Operating Company (“Complainant”), represented by Pamela B. Huff, of Cox Smith Matthews Incorporated, 112 East Pecan Street, Suite 1800,
San Antonio, TX 78205. Respondent is SterlingDavenport.com c/o Sterling
Davenport (Respondent”), 111 School Street, P.O. Box 205, West Point,
TN 38486.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <wnrq.com >, registered with Enom, Inc.
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.
Honourable Sir Ian Barker, Q.C.
Complainants submitted a Complaint to the
National Arbitration Forum electronically on May 9, 2005; the National
Arbitration Forum received a hard copy of the Complaint on May 11, 2005.
On May 9, 2005, Enom, Inc. confirmed by
e-mail to the National Arbitration Forum that the domain name <wnrq.com> is registered with
Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is
bound by the 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 May 17, 2005, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 6, 2005 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@wnrq.com
by e-mail.
A timely Response was received and
determined to be complete on June 6, 2005.
On June 8, 2005, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed the Honourable Sir Ian
Barker, QC as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name
be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A.
Complainant:
Complainant is the owner of the radio
station call letters and the common law trademark for WNRQ, which station
identifier was assigned by the Federal Communications Commission, a division of
the United States Government.
Complainant has utilized these call letters for its radio broadcasting
services on station WNRQ since on or about May 22, 1998, thereby establishing
substantial common law rights to the WNRQ mark. Further, Complainant has expended significant time, money, and
effort to establish public recognition of its mark as identifying it as the
source of high-quality radio broadcasting services. Complainant has used this mark on signs, in advertisements, on
brochures describing the company and its services, on the Internet, and in
other ways customary in the trade throughout the world. As a result of these efforts, Complainant
has established substantial customer recognition of the WNRQ trademark, and it
has become a part of Complainant’s valuable assets.
The disputed domain name is identical, to
the WNRQ trademark owned by Complainant.
Respondent registered the domain name after Complainant had established
common law rights to the WNRQ mark.
Respondent is NOT commonly known by this
domain name.
Respondent is NOT making fair use of the
domain name. It is using the domain
name to misleadingly capture consumers of the WNRQ mark in anticipation of
commercial gain by diverting unsuspecting consumers of Complainant’s goods and
services to Respondent’s goods and services, which include penis and breast
enhancement supplements, links to “personal ads,” and numerous other links to
websites relating to on-line marketing schemes. As recently as September 26, 2004, Respondent has offered links
to sexually explicit materials, further tarnishing the reputation and good name
of Complainant.
Respondent has acquired the domain name
intentionally to attract, for commercial gain, Internet users to its website by
creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s website and the
products and services offered thereon.
Respondent is using the disputed domain name in connection
with its offering of predetermined searches leading to information on sexual
enhancement products, dating, and various online marketing schemes. Much of what Respondent offers in connection
with the disputed domain name does not qualify as a bona fide offering
of goods and services. In addition to
the obvious likelihood of confusion issue, Complainant’s reputation is further
tarnished by the connection in light of the sexually explicit offerings listed
on Respondent’s home page in the recent past.
Respondent’s bad faith is further
demonstrated by the fact that it has registered numerous domain names. In a conversation with counsel for Complainant,
Respondent indicated that this domain name is one of over 700 that he
owns. In support of this claim,
Complainant offers copies of thirty-four representative printouts from the
<enom.com> registrar showing Sterling Davenport as the owner. Several domain name registrations owned by
the Respondent are confusingly similar to the marks of others. As way of example, <nahoo.org>, which
is registered by Respondent, is confusingly similar to YAHOO. Additionally, Respondent is the owner of the
<zkny.com> and <lbay.com> domain names, which are confusingly
similar to DKNY and EBAY. Respondent’s
practice of registering multiple domain names that are confusingly similar to
the marks of others is indicative of Respondent’s bad faith intent.
B.
Respondent:
Complainant does not have a registered
trademark. Before registering a domain
name, Respondent always searches the U.S. Trademark Register. He did so before registering the disputed
domain name on January 24, 2001.
Complainant has not used its alleged common
law mark in any advertisements, signs and brochures or on the Internet prior to
registration of the disputed domain name.
Respondent produced copies of Complainant’s website from June 25, 1999
to April 11, 2003 which does not show the use of WNRQ-FM. Complainant has been known as “1059 The
Rock” on these websites.
Respondent has used the disputed domain
name to offer a bona fide service offering free email accounts. The first was for a site offering “VigRx
Male Enhancement Pills.” He
subsequently set up another website offering “Femenique Breast Enlargement
Pills.” He relies on the income
generated by his work and has achieved a top-ten search engine listing in the
Google Search Engine. He has had many
repeat customers. Respondent has spent
much money in marketing and maintaining his website.
Respondent has no sexually explicit content on his
website. He claims that a website for
<therock1059.com> sends the Internet user to competing sites. There is no possibility of confusion between
the products Respondent offers and a radio station. He has a portfolio of domain names. He purchased <skny.com> and <ibay.com> to extend his
portfolio of several letter domain names.
Respondent has declined overtures from
Complainant to sell the disputed domain name, even refusing an offer of $5,000.
FINDINGS
Complainant has no registered
trademark. Respondent has, over the
four years since he registered the disputed domain name, set up a business of
offering free email accounts for sexual enhancement remedies.
Complainant has WNRQ as a call-sign for a
radio station assigned to it by the Federal Communications Commission in
1998. There is no evidence produced to
support Complainant’s claim of use of the call sign in publications, etc. Copies of letterhead, advertisements, signs
and websites were not produced, as is usual to support claims of this nature.
Respondent operates a business whereby
persons can order sexual advancement products through his website. He also owns a variety of domain names.
Respondent declined to sell the disputed
domain name to Complainant.
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.
Since Complainant
has no registered trademark, it has to rely on establishing a common law mark
for its call sign WNRQ if it wishes to succeed under this element of the
Policy.
Complainant’s
evidence in favor of a common law mark is not spectacular. All that it has produced is evidence that it
has been licensed to use the call sign WNRQ since May 22, 1998, plus a
“Specimen of Use” one-page document.
This document consists of six “airchecks” from broadcasts of the
Complainant in which the words “WNRQ Nashville” are used. The expression “1059 The Rock” also is used
in each aircheck. No dates are given
for the airchecks. Nor is there any
evidence to justify the sweeping assertions referred to in the Complaint about
the alleged widespread use of the mark.
Respondent has
produced Complainant’s home pages from 1999 to 2003 for <1059.com>. The call sign WNRQ does not appear in these.
Extensive use of a
common law mark was demonstrated in BroadcastAmerica.com
v Quo, DTV2000-0001 (WIPO
Oct. 4, 2000). There, Complainant used
its unregistered mark in offering Internet broadcast services to users
worldwide. More than 500 individual
radio stations and 67 television stations in the United States and 9 other
countries employed Complainant as their exclusive Internet broadcast
outlet. More than 2 million individual
internet users accessed audio and video programming through a website operated
by the Complainant. Supplementary
evidence from Complainant showed immense exposure to its brand or mark. It was little wonder, therefore, that the
panel found a common law service mark, despite the absence of a registered
trademark.
Trade names or
marks which have, through usage, become distinctive of the owner’s goods or
services may be protectable as common law marks because they have acquired a
secondary meaning. Another way of
looking at whether a common law mark has been established is to enquire whether
the person with the competing mark is “passing-off” the alleged common law
mark. See BAA plc v Larkin, D2004-0555
(WIPO Nov. 11, 2004) where the Panel said:
As noted by the Panelist in Julian Barnes v. Old Barnes Studios Limited, WIPO Case No.
D2001-0121…´This involves understanding what is meant by “passing off” because
the easiest way of defining a common law trademark is to say that it is an
unregistered mark used by its proprietor in the course of trade, the
unauthorized use (or imitation) of which by another trader will lead to
“passing off”.”
Passing off is a tort based upon the proposition that it
is unlawful to represent contrary to fact that one’s goods or services are the
goods or services of another. “Commonly, such misrepresentations are made by
using a name or mark which identifies the Claimant was otherwise a symbol of
his goodwill.” (ibid). The above
quotations are taken from one of the numerous cases where the common-law mark
attached to a popular author. There are
similar cases in respect of pop stars and sporting personalities.
See similar comments about common-law marks in Luis Cobos v. West, North WIPO Case No.
D2004-0182. “To succeed the Complainant
would have to establish a reputation and goodwill in the United Kingdom under
his name. He would have to prove that
the third party’s use of his name would be likely to lead to deception in the
market place, and he would have to prove a likelihood of consequential damage
to his goodwill.”
Considering these
fairly high tests for a common law mark, the Panel is of the opinion that
Complainant has not proved it has a mark which is entitled to protection under
the Policy. The parties live in
different states. There is no evidence
to show that a radio station in Texas would necessarily be well known in
Tennessee. There is no evidence to show
what distance the parties are apart.
The granting of a
distinctive call sign by the Federal Communications Commission is not a
substitute for the granting of a registered trademark by the U.S. Patent and
Trademark Office. Given the size and
population of the United States, there must be many thousands of radio stations
with many permutations of letters in their various call signs.
Complainant has
offered no evidence of any widespread operation other than an unsupported
statement that its promotional materials have been displayed on the Internet
“and in other ways customary in the trade throughout the world.” The Panel suspects that most radio stations
in the U.S. would have a website which would be accessible to Internet users
worldwide. Something more is needed to
justify a common law trademark.
There is also
Respondent’s claim that Complainant has only recently been using the call sign
in its publicity and website and that it had previously been known as “1059 The
Rock.” Complainant did not file
additional submissions refuting this allegation.
Complainant’s
evidence is in stark contrast to that in the BroadcastAmerica case. The
same situation as to lack of proof of a common-law mark which has acquired a
secondary meaning was shown in Amsec
Enters., L.C. v McGall, D2001-0083
(WIPO Apr. 3, 2001). There, the panel
stated that evidence of a secondary meaning for a mark, sufficient to justify a
finding of a common law trademark “includes length and amount of sales under
the mark, the nature and extent of advertising, consumer surveys and media
recognition.” The panel found that a
bare claim of use of the mark since 1992 plus a statement that the
complainant’s gross sales exceeded $7 million and a web page was inadequate.
Accordingly, in the
Panel’s view, Complainant has not made out the first criterion under the Policy
and the Complaint must fail. It is
therefore unnecessary to deal with the other two criteria.
The Complaint is
accordingly dismissed.
Hon. Sir Ian Barker, QC
Panelist
Dated: June 20, 2005
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