Troi Torain v. Spiral Matrix
Claim Number: FA0603000664982
Complainant is Troi Torain (“Complainant”), represented by Peter E. Nussbaum, of Wolff & Samson PC, One Boland Drive, West Orange, NJ 07052. Respondent is Spiral Matrix (“Respondent”), 1st Floor Muya House, Kenyatta Ave., P.O. Box 4276-30100, Eldoret 30100, KE.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <starandbucwildshow.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2006.
On March 24, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <starandbucwildshow.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.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 March 29, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 18, 2006 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@starandbucwildshow.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 24, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), 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." 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.
A. Complainant makes the following assertions:
1. Respondent’s <starandbucwildshow.com> domain name is confusingly similar to Complainant’s STAR & BUC WILD mark.
2. Respondent does not have any rights or legitimate interests in the <starandbucwildshow.com> domain name.
3. Respondent registered and used the <starandbucwildshow.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Troi Torain, has continuously and extensively used the STAR & BUC WILD mark in connection with a popular syndicated morning radio show since 1994. Broadcast on the Power 105.1 radio station in New York City, Complainant’s radio show is syndicated to other major radio markets in the United States, including Philadelphia, Miami, Austin, Memphis and Hartford. Complainant has also registered the <starandbucwild.com> domain name (registered August 5, 1998) to promote its radio entertainment services. Complainant has spent substantial amounts of money promoting, marketing and advertising its radio entertainment services under the STAR & BUC WILD mark, and Complainant’s services generate significant revenues. As a result, Complainant’s STAR & BUC WILD mark has developed significant goodwill and recognition among consumers. Complainant has filed two trademark and service applications for the STAR & BUC WILD mark with the United States Patent and Trademark Office (“USPTO”) (Serial No. 78/480,949 filed September 9, 2004; Serial No. 78/480,953 filed September 9, 2004).
Respondent registered the <starandbucwildshow.com> domain name on June 28, 2005. Respondent’s domain name resolves to a search engine featuring links to third-party websites unrelated to Complainant.
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."
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.”).
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.
The Panel finds that Complainant is not required to own a
trademark registration for the STAR & BUC WILD mark in order to establish
rights to the mark pursuant to Policy ¶ 4(a)(i). See Great Plains
Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The
Policy does not require that a trademark be registered by a governmental
authority for such rights to exist.”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist).
Complainant has been continuously and extensively using the
STAR & BUC WILD mark in connection with its syndicated radio show since at
least 1994. Complainant’s radio show is
syndicated in major media markets throughout the United States, and Complainant
has spent a great deal of money promoting its radio show under the STAR &
BUC WILD mark. Consequently,
Complainant’s STAR & BUC WILD mark has generated substantial goodwill and
consumer recognition in connection with radio entertainment services. Therefore, Complainant’s STAR & BUC WILD
mark has acquired secondary meaning sufficient to establish common law rights
in the mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17,
2000) (finding common law rights in a mark where its use was continuous and
ongoing, and secondary meaning was established); see also BroadcastAmerica.com, Inc. v. Quo,
DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law
rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify
the complainant as the source of broadcast services over the Internet, and
evidence that there is wide recognition with the BROADCASTAMERICA.COM mark
among Internet users as to the source of broadcast services).
Respondent’s <starandbucwildshow.com>
domain name is confusingly similar to Complainant’s
STAR & BUC WILD mark pursuant to Policy ¶ 4(a)(i), because it incorporates
Complainant’s entire mark, replaces “&” with “and” and merely adds the
generic term “show,” which describes Complainant’s radio entertainment
services. Because the “&” symbol is
not capable of reproduction in a domain name and “and” is phonetically the
same, Respondent’s domain name is not sufficiently distinctive. See Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that the
<wrightandlato.com> domain name is identical to the complainant’s WRIGHT
& LATO mark, because the ampersand symbol (&) is not reproducible in a
URL); see also Hewlett-Packard Co. v. Cupcake City, FA
93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is
phonetically identical to the complainant’s mark satisfies ¶ 4(a)(i) of the
Policy). In addition, panels have held
that the mere addition of a generic term to a complainant’s mark does not
negate a finding of confusing similarity under Policy ¶ 4(a)(i). See PG&E Corp. v. Anderson,
D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding
the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’
following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying [PG&E] mark held by
Complainant”); see also Parfums Christian Dior v. 1 Netpower, Inc.,
D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the
descriptive words "fashion" or "cosmetics" after the
trademark were confusingly similar to the trademark). Therefore, Respondent’s <starandbucwildshow.com>
domain name is confusingly similar to Complainant’s STAR & BUC WILD mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent lacks rights and
legitimate interests in the <starandbucwildshow.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding
that, where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <starandbucwildshow.com>
domain name. See Am. Online, Inc. v.
AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate
interests where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”). However, the Panel
will now examine the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “Spiral
Matrix,” and there is no other evidence in the record suggesting that
Respondent is commonly known by the <starandbucwildshow.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <starandbucwildshow.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup, Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Wells Fargo & Co.
v. Onlyne Corp. Services11, Inc., FA
198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
Furthermore, Respondent operates a website at the <starandbucwildshow.com>
domain name displaying links to various content unrelated to Complainant. In Golden Bear
Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003), the
respondent registered the <nicklausgolf.com> domain name, which included
the complainant’s NICKLAUS mark, and used it to operate a website displaying
links to third-party websites. The
panel held that the respondent’s diversion of Internet users to websites unrelated
to the complainant’s mark did not represent a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii). Because Respondent
is also diverting Internet users seeking Complainant’s products to a website
containing links to third-party websites, its use of the disputed domain name
provides evidence that it lacks rights and legitimate interests in the <starandbucwildshow.com>
domain name. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <starandbucwildshow.com> domain name, which is confusingly similar to Complainant’s STAR & BUC WILD mark, to redirect Internet users seeking information on Complainant’s radio show to a website displaying links to unrelated content. In Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002), the respondent registered the <bigkmart.com> domain name and was using it to operate a website featuring links to various content unrelated to the complainant. The Panel inferred that the respondent made a profit from the amount of Internet traffic it diverted to other websites, and that therefore, the respondent was “commercially benefiting from the likelihood of confusion it has created through the use of Complainant’s mark” in violation of Policy ¶ 4(b)(iv). Id. Similarly, Respondent is diverting Internet users seeking Complainant’s radio entertainment services to unrelated websites for its own commercial gain. Because Respondent is taking advantage of the confusing similarity between the <starandbucwildshow.com> domain name and Complainant’s STAR & BUC WILD mark, and presumably profiting from the goodwill associated with the mark, Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <starandbucwildshow.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 7, 2006
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