MBS Radio v. Roger Lorette
Claim Number: FA1803001776420
Complainant is MBS Radio (“Complainant”), represented by Kevin Feltmate of MBS Radio, Canada. Respondent is Roger Lorette (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ckdh.com>, registered with Domain.com, LLC.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on March 16, 2018; the Forum received payment on March 16, 2018.
On March 19, 2018, Domain.com, LLC confirmed by e-mail to the Forum that the <ckdh.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, 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 March 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of April 16, 2018 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@ckdh.com. Also on March 27, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant owns and operates twenty-four (24) radio stations in Atlantic Canada, including the CKDH station, which is located in Amherst, Nova Scotia and operates on a frequency of 101.7 on the FM band. The station’s call letters and the radio frequency on which it is licensed to operate are assigned by the Canadian Radio and Television Commission (CRTC) and are considered the brand by which the station licensee, i.e., Complainant, is permitted to operate. The station was first licensed in 1957 and has operated continuously since then under its call letters CKDH.
Respondent has no rights or legitimate interests in the <ckdh.com> domain name. Respondent is a former employee of Tantramar Broadcasting, Ltd., a former owner of station CKDH. He has no association with Complainant or station CKDH, and he is currently listed as a board member for a competitor radio station, CFTA.
Respondent registered and is using the <ckdh.com> domain name in bad faith. Complainant now offers streaming of its programming whereby its listeners can listen to the station via a link on the station’s web page. Respondent’s Domain Name directs Internet users to station CFTA, which is located in the same town as station CKDH and is a direct competitor of Complainant. The Domain Name misleads users into believing that they are tuning in to Complainant’s radio station when in fact they are directed to a competing station
B. Respondent
Respondent did not submit a Response in this proceeding.
Preliminary Issue: Deficient Response
On or about March 19, 2018, after receiving a copy of the Complaint in this matter, Respondent sent email correspondence to the Forum in which he made certain statements responsive to the allegations in the Complaint and which would be relevant under the Policy. The Forum determined that this communication did not meet the requirements of Rule 5, and issued a Notice of Respondent Default. The Panel, at its discretion, may choose whether to accept and consider this communication as a Response. Sears Brands, LLC v. Airhart, FA 1350469 (Forum Dec. 2, 2010) (electing to not accept and not consider the response as the response was not in compliance with ICANN Rule 5), Victoria’s Secret Stores Brand Mgmt., Inc. v. LaFond, FA 1362225 (Forum Jan. 7, 2011) (deciding that while the response was deficient, “the Panel has nonetheless decided to consider the deficient Response.”). Rule 5 lists a number of requirements for a document to qualify as a response. Several of them pertain to technical matters such as contact information for the respondent, whether the case should be heard by a single-member or a three-member Panel, and information about any other legal proceedings involving the domain name at issue. Subparagraph (viii) requires the respondent to certify that the factual allegations contained in the response are complete and accurate to the best of the respondent’s knowledge, and that the assertions made are warranted under the Rules and applicable law. A Panel might overlook a failure to comply strictly with technical, administrative requirements of the Rule, or a filing that is not made within the time provided, but a failure to certify that the facts alleged are complete and accurate, and that the response is filed in good faith is another matter. The administrative proceedings contemplated by the Policy and the Rules depend upon pleadings that are substantially truthful and filed in good faith. The certification required by subparagraph (viii) is essential. This Panel is not inclined to overlook its absence here. The Written Notice of Complaint served upon Respondent is very clear that any response must conform with the Rules, and it is apparent from the absence of the technical, administrative components of a response, and the absence of the subparagraph (viii) certification that Respondent here made no effort to comply with the Rule. The Forum’s notice of the appointment of the Panel in this matter clearly notified Respondent that his email was not accepted as a Response and he has made no further effort to follow up with a conforming Response. For the foregoing reasons, the Panel elects not to consider Respondent’s March 19 email as a Response.
Merits of the Case
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 will decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (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.”).
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
Complainant has rights in the CKDH mark through its use of that mark as the call letters for one of its radio stations, CKDH, located in Amherst, Nova Scotia, Canada. Complainant did not register CKDH as a trademark with any governmental trademark registry but CKDH is a set of call letters which was assigned to this radio station by a governmental authority, the CRTC. See, Amended Complaint Annex 1. These letters are unique to this particular station and its radio frequency, and no other station may use either the call letters CKDH or the 101.7 frequency assigned to it. Id. Complainant argues that CKDH is the “brand” for this station and on this basis asserts that it is tantamount to a trademark for the purposes of the Policy. Policy ¶ 4(a)(i) addresses this element of a UDRP case as follows: “[respondent’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; . . .” For a complainant to have common law rights, there must be showing of secondary meaning of the mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”); see also Marquette Golf Club v. Al Perkins, 1738263 (Forum July, 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Although the call letters are not, strictly speaking, a trademark or service mark in the traditional sense, they are sufficiently similar to those marks in the context of a radio station to qualify as a brand or mark for the purposes of the Policy. This radio station, now owned by Complainant, has used CKDH as its call letters since it began broadcasting in 1957, and Complainant has shown that those letters are uniquely identified to the station in the minds of the CRTC and the public in and around Amherst, Nova Scotia. Id. Accordingly, the Panel finds that Complainant’s rights in the CKDH call letters qualify as rights in a trademark or service mark of the purposes of the Policy ¶ 4(a)(i).
Although Complainant makes no argument as to whether the Domain Name is identical or confusingly similar to Complainant’s CKDH mark, it is evident by comparing the Domain Name to that mark that it is. It consists entirely of Complainant’s mark, only adding the generic top-level domain (gTLD) “.com.” UDRP Panels have consistently held disputed domain names to be confusingly similar for the purposes of Policy ¶ 4(a)(i) when they incorporate a registered mark entirely, adding only a gTLD. Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Marquette Golf Club v. Al Perkins, FA 1738263 (Forum Jul. 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”).
Based upon the forgoing, the Panel finds that the Domain Name is confusingly similar to the CKDH mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because he has no association with Complainant, and that he is currently listed as a board member of a competing radio station, CFTA at 107.9 FM, also in Amherst, Nova Scotia. Complainant has specific competence to state that Respondent is not affiliated with Complainant, and this statement is unchallenged by any evidence before the Panel. Complainant also alleges that Respondent is using the Domain Name to direct listeners to CFTA, misleading them to believe that they are tuning in to Complainant’s station CKDH but are instead being redirected to CFTA.
Complaint did not assert the argument, but a comparison of the Domain Name to Respondent’s name shows no similarity between them and this is prima facie evidence that Respondent is not commonly known by the Domain Name.
As noted above, Complainant alleges that the web site resolving from the Domain Name directs Internet users to a radio station that competes directly with Complainant’s radio station, in the same local market, and of whose board Respondent is a member. This information does not appear in any of the Annexes submitted as evidence by Complainant, but because of Respondent’s default, in the absence of conflicting evidence the Panel is entitled to rely upon the allegations in the Complaint as to the use Respondent is making of the Domain Name. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (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.”). The Domain Name is being used to attract Internet traffic to Respondents’ site for financial gain. Using a confusingly similar domain name in order to attract traffic to one’s web site for one’s own business purposes does not qualify as a bona fide offering of goods and services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is 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).”), Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence of Respondent’s use of the Domain Name set forth above in the rights and legitimate interests analysis also supports a finding of bad faith use of the domain. Respondent is clearly using it to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of their web site within the meaning to Policy ¶ 4(b)(iv). Panels have consistently held this to be evidence of bad faith under Policy ¶ 4(b)(iv). Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complaint furnished no documentary evidence of the use alleged, but in light of Respondent’s default the Panel is entitled to rely upon the unsupported allegations in the Complaint provided that there is there is no evidence contra. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (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.”). Complainant’s allegations are plausible and there is no evidence that they are not true. Respondent’s Domain Name uses Complainant’s mark to benefit him, or station CFTA on whose board he sits, commercially, in bad faith under Policy ¶ 4(b)(iv).
While bad faith use of the Domain Name is established, the evidence submitted by Complainant does not shed any light upon whether Respondent registered the name in bad faith. Both bad faith use and registration are required in order for Complainant to prevail. Teradyne, Inc. v. 4tel Technology, No. 2000-0026 (WIPO May 9, 2000) (“it was not the intent . . . to extend the definition of ‘abusive registration’ to include domain names originally registered in good faith.” See, Weatherall Green & Smith v. Everymedia.com, No. D2000-1528 (WIPO February 19, 2001), Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI) No. D 2001-0782 (WIPO August 14, 2001) (If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith. Accord, Telaxis Communications Corp. v. William E. Minkle, WIPO Case No. D2000-0005). The Policy is intended to provide a summary and inexpensive remedy for abusive domain name registrations. See, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, Sec 4.1(c) (October 25, 1999) (The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of “abusive registrations.”) http://www.icann.org/udrp-second-staff-report-24oct99.htm. Registrations originally made in good faith are not deemed abusive under the Policy and are not subject to cancellation or transfer based upon subsequent events.
This Panel has already found that Complainant’s predecessor in interest acquired rights in the CKDH call letters in 1957, when those letters were assigned to the station by the CRTC. Complaint Annex 2, which is a curriculum vitae for Respondent (apparently prepared by him) shows that he was employed as music director and announcer for station CKDH from 1980 to 1989. As such he certainly knew at that time that the call letters CKDH were the exclusive property of the owners of that station. Complainant did not, however, submit any evidence pertaining to the date on which Respondent registered the Domain Name. Complaint Annex 1 gives a history of the station, and Annex 2 provides evidence of Respondent’s interests and employment history, but nowhere is there any evidence relating to the history of the Domain Name, i.e., the date it was created and the date on which Respondent registered it in his name. This information is critical because if he registered the Domain Name having actual knowledge of Complainant’s (or its predecessor’s) rights in the CKDH mark, that would be evidence of bad faith registration. Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). While it may be unlikely that Respondent registered the Domain Name before he began his employment at station CKDH in 1980, there should nevertheless be some evidence in the record as to when the Domain Name was registered. Also, if the facts are that if Respondent registered the Domain Name before he knew of Complainant’s mark, that would be evidence of good faith registration and entitle him to retain the Domain Name.
It is not the normal practice of UDRP panels to conduct independent factual research outside the record presented to them, but it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. WIPO Overview 3.0 at ¶ 4.8. The WHOIS record of domain names is a query-and-response protocol that is widely used for querying databases that store the registered users or assignees of Internet resources, including domain names. It provides evidence relating to the date a domain was created and the name and contract information of its current registrant. A printout of the WHOIS information is almost always furnished by UDPR complainants to give the panel this critical information, but in this case it was not. Since this information is so essential to reaching a correct decision, the Panel elected to exercise its discretion to view the WHOIS information for the Domain Name. It reflects a creation date of December 30, 2001. The WHOIS information does not show the date on which Respondent registered the Domain Name, but it would have had to be at or after the creation date, which is well after Respondent’s period of employment at station CKDH ended. It is thus apparent that Respondent had actual knowledge of Complainant’s (or its predecessor’s) rights in the CKDH mark when he registered the Domain Name. This is clear evidence of bad faith registration within the meaning of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079, Ibid., Baylor University v. Stephen Hinson, FA1508001573005 (Forrum Sep. 2, 2014), (“Further, Complainant claims Respondent is an alumnus of Complainant and was thus aware of Complainant’s rights. As such, the Panel agrees that Respondent actually knew of Complainant’s rights in the mark and therefore concludes that Respondent engaged in bad faith under Policy ¶ 4(a)(iii).”), Yulex Corporation v. Jeanie Behr / Kids Think Big, FA161100171009 (Forum Dec. 7, 2016) (“Respondent’s prior knowledge is evident because Respondent was engaged by Complainant to secure the domain name for Complainant’s benefit. Therefore, it is clear that in retrospect Respondent registered the at-issue domain name to improperly exploit the domain name’s trademark value, rather than for some benign reason such as to benefit Complainant. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <yulexpure.com> domain name in bad faith under Policy ¶ 4(a)(iii).”).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <CKDH.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: April 24, 2018
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