Israel Sandoval d/b/a djradio.com v. Java Pictures Inc.
Claim Number: FA0604000677936
Complainant is Israel Sandoval d/b/a djradio.com (“Complainant”), 801 W. Mines Ave. #B, Montebello, CA 90640. Respondent is Java Pictures Inc. (“Respondent”), P/O Box 41743, Los Angeles, CA 90041.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <djradio.com>, registered with Network Solutions, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 14, 2006.
On April 14, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <djradio.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 8, 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@djradio.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 25, 2006, 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." 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 <djradio.com> domain name is identical to Complainant’s DJ RADIO mark.
2. Respondent does not have any rights or legitimate interests in the <djradio.com> domain name.
3. Respondent registered and used the <djradio.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Israel Sandoval, operates a radio station and owns a record label. Complainant registered the <djradio.com> domain name February 4, 2000 for the purposes of offering live audio streaming as well as promotions for various albums produced by Complainant’s record label. In addition, Complainant filed a County trade name registration with Los Angeles County in California and currently has a pending trademark application with the United States Patent and Trademark Office (“USPTO”) for DJRADIO.COM (Serial No. 78,686,209).
According to the WHOIS information, Respondent registered the <djradio.com> domain name on February 4, 2000. However, Complainant claims that Respondent hijacked the domain name in March of 2000 by manipulating Complainant’s password access and entering Complainant’s web hosting account. Thus, while the WHOIS information lists Respondent as the registrant of the disputed domain name, Complainant is the true registrant. Respondent is using the disputed domain name to operate a website that features a link to a competing commercial website.
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.
Complainant asserts rights in the DJ RADIO mark through its registration as a trade name with Los Angeles County and its use in commerce as a means of promoting and marketing both its radio and music production products and services since January 1, 2001. The Panel finds that Respondent has sufficiently established secondary meaning in the DJ RADIO mark though its use in commerce since 2001 pursuant to Policy ¶ 4(a)(i). 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 S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
Complainant contends that Respondent’s <djradio.com> domain name is identical to Complainant’s mark. Respondent’s disputed domain name contains Complainant’s entire DJ RADIO mark and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that neither the omission of a space nor the addition of a gTLD sufficiently distinguishes domain name from Complainant’s mark pursuant to 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”); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights
or legitimate interests in the <djradio.com> domain name. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to show
rights or legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002) (holding that, where the complainant has asserted that respondent does
not have rights or legitimate interests with respect to the domain name, it is
incumbent on respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also
Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov.
28, 2000) (finding that, under certain circumstances, the mere assertion by the
complainant that the respondent does not have rights or legitimate interests is
sufficient to shift the burden of proof to the respondent to demonstrate that
such a right or legitimate interest does exist); see also Broadcom Corp. v.
Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s
failure to respond to the Complaint functions as an implicit admission that
[Respondent] lacks rights and legitimate interests in the disputed domain
name. It also allows the Panel to
accept all reasonable allegations set forth…as true.”). However, the Panel chooses to analyze
whether the evidence supports rights or legitimate interests.
Complainant contends that Respondent is using the disputed
domain name to operate a website that features a link to a competing commercial
website from which Respondent presumably receives referral fees. The Panel finds such use to be neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop,
FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s
diversionary use of the complainant’s mark to attract Internet users to its own
website, which contained a series of hyperlinks to unrelated websites, was
neither a bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain names); see also
WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12,
2003) (finding that the respondent’s use of the
disputed domain name to redirect Internet users to websites unrelated to the
complainant’s mark, websites where the respondent presumably receives a
referral fee for each misdirected Internet user, was not a bona fide
offering of goods or services as contemplated by the Policy).
Furthermore, Complainant contends that Respondent is neither commonly known by the disputed domain name nor authorized to register domain names featuring Complainant’s mark or any variation thereof. The Panel finds that there is no evidence that Respondent is commonly known by the <djradio.com> domain name for purposes of establishing rights or legitimate interests under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Finally, Complainant contends that Respondent hijacked
Complainant’s domain name and uses the <djradio.com> domain name
for purposes of operating a website that features a link to a competing commercial
website from which Respondent presumably receives referral fees. The Panel finds that such use of
Complainant’s mark is likely to cause confusion as to Complainant’s sponsorship
of and affiliation with Respondent’s website.
As a result, Respondent’s intent to deceive Internet users for
commercial gain is evidence of bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) where the respondent was using the confusingly
similar domain name to attract Internet users to its commercial website); see
also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
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 <djradio.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 29, 2006
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