David Cradick d/b/a Kidd Kraddick v. Overseas Concepts International
Claim Number: FA0210000128643
Complainant is David Cradick d/b/a Kidd Kraddick, Chicago, IL, USA (“Complainant”) represented by Claudia Werner, of Leydig Voit & Mayer Ltd. Respondent is Overseas Concepts International, Cayman Islands, BWI (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kiddkraddick.com>, registered with Parava Networks, Ltd.
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.
G. Gervaise Davis III, Esq. as sole Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 17, 2002; the Forum received a hard copy of the Complaint on October 18, 2002.
On October 23, 2002, Parava Networks, Ltd. confirmed by e-mail to the Forum that the domain name <kiddkraddick.com> is registered with Parava Networks, Ltd. and that the Respondent is the current registrant of the name. Parava Networks, Ltd. has verified that Respondent is bound by the Parava Networks, Ltd. 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 October 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 13, 2002 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 firstname.lastname@example.org by e-mail.
A late Response was received and determined to be complete on November 25, 2002.
On December 9, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed G. Gervaise Davis III, Esq. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s attorney represents that David Cradick is a radio deejay whose moniker appears to be “Kidd Kraddick” and whose radio program is known as “Kidd Kraddick in the Morning.” Presumably, this is a stylized name based on his formal name, although the Complaint provides no background on this issue. Complainant bases the Complaint on his use since 1978 of the radio deejay name “Kidd Kraddick” and on the name of his morning radio show, “Kidd Kraddick in the Morning,” which is broadcast around the country over various radio stations. David Cradick also uses his “Kidd Kraddick” moniker in connection with a website at <kiddlive.com>. The Complaint has no declaration from Cradick and relies entirely on the allegations of the attorney and the exhibits attached, all of which were considered in reaching this Decision. (There is a short declaration by an associate of the law firm on other issues, not deemed by the Panel to be particularly relevant to the main facts of this case. It would have been helpful to the Panel to have some hard evidence in the form of a declaration from the actual party in interest.)
Continuously since at least as early as 1978, Complainant has used the name “Kidd Kraddick” to distinguish his morning radio broadcasting show, “Kidd Kraddick in the Morning”, from other morning radio shows with similar formats. Complainant has invested extensively in creating, maintaining, and promoting goodwill associated with his “Kidd Kraddick” deejay name as well as with his “Kidd Kraddick in the Morning” radio show. Complainant has spent considerable time and money advertising and promoting the radio show by extensively using the mark “Kidd Kraddick” on material, including but not limited to, jackets, long sleeve and short sleeve t-shirts, golf shirts, boxer shorts, mugs, mousepads, hats, bags, and its general website at <kiddlive.com>. As a three-time winner of the Billboard Magazine, “Air Personality of the Year”, 1992 and 1997 AWRO “Air Personality of the Year”, the distinguished Marconi Award for “Radio Personality of the Year” and winner of the first annual 1999 WB Radio Music Awards as the “Best Radio Personality in the Country”, and the winner of the 2001 “Radio and Records CHR/Pop Personality/Show of the Year,” he has dedicated himself not only to a successful radio career, but also to fundraisers and to special events.
As a result of Complainant’s advertising and promotional efforts under his radio deejay name “Kidd Kraddick”, as well as his charitable efforts in providing chronically ill and/or physically challenged children with an adventure to Disney World in Florida, Complainant’s KIDD KRADDICK and KIDD’S KIDS marks are favorably recognized and relied upon by the relevant industry and the consuming public as indicating high quality radio broadcasting services as well as philanthropic services originating exclusively from Complainant and its affiliate radio stations. Due to such efforts, Complainant’s mark has earned very valuable goodwill and is well known throughout the United States. In order to protect this asset, Complainant has filed a federal trademark application with the United States Patent and Trademark Office for the mark KIDD KRADDICK, Serial No. 78/171,519, (but only on October 2, 2002, according to Respondent). The application has not ripened into a registration at this time.
On June 17, 2002, Russ Martin, a competitor radio deejay, reserved the domain name, <kiddkraddick.com>. Accordingly, long after Complainant had been using the name as his radio deejay personality, Russ Martin, without any authorization from Complainant, began utilizing the domain name <kiddkraddick.com>. On September 26, 2002, Complainant’s attorney accessed Respondent’s website located at <kiddkraddick.com>. The website displayed a page that compared Complainant to a type of bird, namely, a Bushtit. The website listed many false and disparaging statements about Complainant’s radio personality “Kidd Kraddick” in an attempt to ridicule Complainant and his morning radio show. However, consumers accessing Respondent’s website not only were led to believe that Complainant was affiliated with this website due to use of Complainant’s radio deejay name as the exact domain name, but they were also confused into believing that Complainant supported the statements maligning him and his morning radio show. In fact, what likely led to even more confusion, was the fact that Complainant’s likeness was pictured on Respondent’s web page, exactly as found on Complainant’s website at <kiddkraddick.com>. Russ Martin, Complainant’s competitor, even called attention to the disparaging website containing the “Bushtit” comparison during his own radio show.
On or about October 1, 2002, one of Complainant’s representatives complained to Russ Martin’s employer about the disparaging website. Then, on October 8, 2002, Complainant’s attorney discovered that even though the domain name registration was not even near expiration, it had been transferred to a different Registrar and alleged owner, namely Parava Networks, owned by “Overseas Concepts International, Registration Department, POB1345, Georgetown, KY, BWI,” in the country “KY”, which Complainant believes may be affiliated with Russ Martin as it also contained material which may be viewed as tarnishing Complainant’s reputation. The website contained revealing pictures of “Big Beautiful Women.” On October 15, 2002, one of Complainant’s representatives talked to Russ Martin’s general manager about the new content of the still disparaging website. By October 16, 2002, the website was not up anymore.
Undoubtedly, confusion is likely in that Respondent’s domain name <kiddkraddick.com> is identical in spelling, sight, sound, and commercial impression to Complainant’s long established radio deejay name and virtually identical to the name of Complainant’s morning radio show. The use of Complainant’s likeness, the same as found on Complainant’s website, also leads to confusion. Further, it is likely that consumers will enter the domain name when looking for the website of Complainant.
A side-by-side comparison of Complainant’s KIDD KRADDICK mark and the domain name at issue shows they are identical. Therefore, registration and use of the domain name by Respondent will result in consumer confusion as to source and tarnishment of Complainant’s mark.
Complainant contends that the initial registrant of the domain name had no interest in or right to use the name, and no permission from Complainant, citing a number of prior decisions and the above facts.
Complainant also alleges the necessary conclusions of law, based on the foregoing facts, to show that the registration and the use of the domain name was in bad faith, and suggests, without much evidence that the subsequent transfer of the domain was also done in bad faith to avoid the transfer of the domain to Complainant and to hide the identity of the present owner(s). It is further alleges that Complainant believes that Respondent does not actually exist, since there are discrepancies in the contact information of the current registrant.
Due to the use of this alleged false information, and the fact that the original registrant, Russ Martin, immediately transferred the domain name upon being contacted by Complainant, Complainant argues that Respondent and the original registrant may be one in the same, or at the very least related. Russ Martin is a competitor of Complainant’s and had initially posted the website at <kiddkraddick.com>, which ridiculed and disparaged Complainant. Nonetheless, even if Respondent is not connected to the original registrant, and further, even if Respondent is an actual entity with correct contact information, Complainant asserts that the use of its long-established radio deejay name as a domain name representing no legitimate business interest in any product or service constitutes bad faith on the part of Respondent.
In summation, Complainant owns common law rights in the mark KIDD KRADDICK and KIDD KRADDICK IN THE MORNING. Complainant has used this mark in commerce and commercial enterprises for over 20 years. Respondent nonetheless registered a domain name identical to Complainant’s coined name and mark, without rights or a legitimate interest in the mark or the domain name, and has acted in bad faith according to Policy paragraph 4(b).
A Response was filed more than ten days late, in the form of a letter and not electronically, by Overseas Concepts International, which Response under the UDRP Rules need not be considered by the Panel. Nonetheless, in the interest of fairness, the Panel did consider the allegations and statements contained in the document dated October 24, 2002, and sent to the National Arbitration Forum’s Case Manager. A short summary of the allegations and argument in this letter is set out below.
Respondent alleges, without explaining who this organization actually is or what relationship it has to the proposed user, that Respondent’s interest in the domain name is “that of a musical artist bearing the stage name Kidd Kraddick.” It does not further identify such artist, how the name is proposed to be used, other than for a website, and states that it “is not our intent to tarnish the reputation of or in any way disparage the Complainant.” It argues that it has a right to use the domain for this purpose, yet Respondent provides no information or background on how it came to own the domain or how or why it was transferred to the present registrant. It also leaves hanging and unanswered why there was, briefly, some totally irrelevant content on the website relating to “Betsy – The Supersized BBW” and photos, which was taken down when objections were made to agents of Russ Martin, the competitive deejay. In the view of this Panel, such events weigh heavily against the good faith of Respondent.
Respondent states that the present registrant is “neither related to nor affiliated with Russ Martin,” the competitive deejay, and denies any knowledge of his intentions or conduct in the earlier web pages described in the Complaint. Respondent then devotes most of the rest of the Response to a discussion of why there were errors in the registration information and questions whether Complainant has a trademark on the name “KiddKraddick” and how long he has actually used the name and mark.
Other than the consideration of the trademark issues in the discussion below, the Panel deems most of this discussion of little value in determining the outcome of this case, and accordingly finds no need to set forth the arguments or other facts here. Suffice it to say that Respondent’s cursory, late response is not particularly helpful to the Panel in determining what actually happened here. The Response also appears evasive in that it fails to identify any legitimate reason for the transfer other than use by the unidentified “musical artist” with the same name. For this reason, the Panel, while taking Respondent’s comments into consideration, must rely almost entirely on the facts alleged by Complainant, and apply its own conclusions and reasoning in reaching a decision.
While Complainant does not do a particularly skillful job of alleging the existence of a common law trademark or legal right in the fanciful name of the complaining deejay, the Panel finds that Complainant appears to have an arguable case for the equivalent of a common law mark in this name. The Panel accordingly finds that the radio persona established and the domain name <kiddkraddick.com> are substantially identical. Established decisional law ignores the “.com” extension as irrelevant. The reasoning for this finding is discussed below in more detail.
Since the original owner of the domain name, Russ Martin, is not a party to this proceeding, the Panel can only infer from the insults and poor taste of the content of the web pages while under his control, that the original registrant had no legitimate interest in or right to register or use the domain name at issue. Quite clearly it was not his name and he had no legal reason to use it in the manner that he did.
It would appear from the content of the web pages that the purpose of registering and using the domain was to taunt Complainant and insult him. This establishes the requisite bad faith registration and use by Martin.
Given the late and inadequate Response from the present apparent owner of the domain, it would also appear that it, too, has no legitimate interest in the registration and use of the name, although this is less certain. However, since Respondent chose to provide the Panel with no more information than that mentioned above, the consequence is that the Panel assumes that if Respondent had a legitimate reason, it would have provided it to the Panel. Furthermore, since the domain is not in present use, the Panel can only look to past use, which was clearly in bad faith. Had Respondent explained how it came to be the present owner of the domain and more about its future use, the result might have been different.
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.
Identical and/or Confusingly Similar
As stated in the Findings, the name of Complainant’s persona and his radio show and the domain are substantially similar. There is little point in discussing this further, except as to the need for a registered or common law mark for Complainant to prevail.
Complainant fails to explain why if this were such a valuable mark that no registration was ever made over more than 25 years until a few days before the filing this Complaint. Moreover, as Respondent argues, an application for a trademark registration is not conclusive evidence that the applicant is the owner of the mark. However, Complainant correctly points out that there is a line of cases, which hold that famous or well known performers or actors and actresses may have a sufficiently legitimate claim to a screen name that it constitutes the equivalent of a common law mark. In the judgment of the Panel what saves Complainant on this critical issue is that the moniker used by the deejay is not precisely the same spelling of his name, and it is therefore clearly a public persona and thereby protectible under these cases. See, for example, Julia Fiona Roberts v. Russell Boyd, (WIPO Case No. D2000-0210, May 29, 2000) (Panel found that actress, Julia Roberts, had common law trademark rights in her name and ordered transfer of domain <juliaroberts.com>). There are many cases to the contrary where the name is merely that of a person in the public eye, and has not reached the level of a property right. See Friends of Kathleen Kennedy-Townsend v. B.G. Birt, D2002-0451 (WIPO July 31, 2002); see also Kennedy-Townsend v. B.G. Birt, D2002-0030 (WIPO April 11, 2002). Furthermore, WIPO Reports make clear that the UDRP is not normally directed at protecting personal names, as such, and that normally a trademark must be established. The Panel, however, believes that Complainant here meets the Roberts test.
Rights or Legitimate Interests
On the facts asserted and shown by exhibits to the Complaint, Russ Martin, the competitor did not have any right or legitimate interest in this domain name. The evidence conclusively establishes both a lack of legitimate interest and bad faith registration and use by an apparent competitor. This is a specified basis for ruling for transfer in the UDRP.
Moreover, Respondent is the transferee of Martin and has chosen not to explain how it happens to be the present owner of the domain name by transfer. For this reason, the Panel feels that the only equitable manner of dealing with this situation is to rule that as Respondent failed to provide any reasonable explanation of what actually happened, it must bear the brunt of its failure of proof. For purposes of this decision only, the Panel concludes that Respondent transferee has not established any legitimate interest in the domain. Had it provided any identification or other facts concerning the illusory musical artist for whom it acquired the domain, the conclusion might be different.
However, the Panel wants to make certain that this is decision is not considered a finding or conclusion that all transferees are necessarily bound by the conduct and facts of their predecessor(s). It is only that in this case, since the transferee chose not to disclose the facts of the transfer, we simply have to assume that the actual facts would have been adverse to its position. The Panel recognizes that in many cases, a complainant might not prevail if the transferee could establish that it was truly not associated with the prior registrant and had a legitimate reason for acquiring the domain. This Panel is unwilling to accept a casual statement, unaccompanied by a declaration by the true party in interest or more facts, as was the case here, as evidence of legitimacy and good faith.
Registration and Use in Bad Faith
As noted in the prior section, there is ample evidence of bad faith registration and use of the domain name by Russ Martin, the competitor, sufficient to find for Complainant on this issue. The failure of the successor registrant to explain its relationship is also sufficiently tainted, by its lack of candor, for the Panel to conclude that it, too, was acting in bad faith in this matter, both in acquiring it and in its use or lack of use of the domain.
Based on the foregoing discussion and facts, the Registrar is directed to TRANSFER the domain name <kiddkraddick.com> to Complainant, forthwith, in accordance with the UDRP Rules and Policy.
G. Gervaise Davis III, Esq., Panelist
Dated: December 31, 2002
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