DECISION

Clear Channel Communications, Inc. v. Beaty Enterprises

Claim Number: FA0211000135008

PARTIES

Complainant is Clear Channel Communications, Inc., San Antonio, TX (“Complainant”) represented by Pamela B. Huff, of Cox & Smith Incorporated.  Respondent is Beaty Enterprises, West Palm Beach, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wkgr.com>, registered with Register.com, 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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 22, 2002; the Forum received a hard copy of the Complaint on November 25, 2002.

On November 26, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the domain name <wkgr.com> is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 November 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 16, 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 postmaster@wkgr.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 30, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.”  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s <wkgr.com> domain name is identical to Complainant’s WKGR mark.

Respondent does not have any rights or legitimate interests in the <wkgr.com> domain name.

Respondent registered and used the <wkgr.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Clear Channel Communications, Inc. was assigned the radio station call letters WKGR by the Federal Communications Commission (“FCC”) on March 10, 1984, and has broadcast under that station identifier in West Palm Beach, FL, since that date.  Complainant has expended significant time, money, and effort establishing public recognition of its mark as identifying it as the source of its radio broadcast services.  These expenditures include the use of its call letters during radio broadcasts, on signs and advertisements, as well as on brochures and other promotional materials.

Respondent, Beaty Enterprises, registered the <wkgr.com> domain name on July 3, 2001.  Respondent, who is not authorized by Complainant or the FCC to utilize this station identifier, is using the disputed domain name to promote its radio programming and advertising services in conjunction with the radio station WLVJ, also located in West Palm Beach, FL.

DISCUSSION

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 the 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.

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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the common law trademark WKGR through nearly twenty years of continuous use and by demonstrating sufficient consumer recognition and secondary meaning of 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 Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (finding that the Uniform Domain Name Dispute Resolution Policy does not require “that a trademark be registered by a governmental authority for such rights to exist”).

Respondent’s <wkgr.com> domain name is identical to Complainant’s mark.  The top-level domain “.com” is a necessary feature for each domain name, and as such it does not distinguish a domain name from a trademark for the purposes of a Policy ¶ 4(a)(i) analysis.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

Accordingly, the Panel finds that the <wkgr.com> domain name is identical to Complainant’s WKGR mark and Policy ¶ 4(a)(i) is satisfied.

Rights or Legitimate Interests

By failing to submit a Response to the Complaint, Respondent has implied to the Panel that it has no rights or legitimate interests in the disputed domain name.  See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Without a response to rely upon, the Panel will find for Complainant if Complainant shows that none of the criteria illustrating rights and legitimate interests in a domain name under Policy ¶ 4(c)(i)-(iii) are applicable to Respondent.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a Complainant has asserted that Respondent has no rights or legitimate interests in respect of 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”).

Respondent, in promoting the radio station WLVJ at the <wkgr.com> domain name, was using Complainant’s trademark to advertise and promote a competitor of Complainant.  Such activity is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it legitimate noncommerical or fair use of a domain name as stated in Policy ¶ 4(c)(iii).  See MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when Respondent is using a domain name identical to Complainant’s mark and is offering similar services); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding no rights or legitimate interests where Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and later Respondent modified use of the domain name after receiving domain name Complaint); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

Respondent’s WHOIS information lists itself as “Beaty Enterprises,” and is in no way associated with the call letters or abbreviation WKGR or <wkgr.com>.  Without a Response to rely upon, the Panel concludes that Respondent is not “commonly known by” the WKGR acronym and Policy ¶ 4(c)(ii) is inapplicable to Respondent.  See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wkgr.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Panel infers from the facts before it that Respondent, domiciled within the broadcast radius of Complainant’s West Palm Beach affiliate and promoting a competing radio station, could only have registered the infringing domain name with actual knowledge of Complainant’s rights in those call letters.  As such, its registration and use of the domain name was done in bad faith under Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Respondent’s behavior also qualifies as bad faith use and registration of a domain name under Policy ¶ 4(b)(iii).  Respondent and Complainant both operate in the highly regulated field of radio broadcasting.  As such, Respondent knew that use of Complainant’s call letters in a domain name would invariably result in the attraction of Internet users who were looking for Complainant’s website, not Respondent’s.  This implies an attempt to disrupt Complainant’s operations, and evidences bad faith use and registration.  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) (finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field).

Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith, and Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <wkgr.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: January 2, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/1.html