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Clear Channel Communications, Inc. v. Emmis Communications [2003] GENDND 73 (20 January 2003)


National Arbitration Forum

DECISION

Clear Channel Communications, Inc. v. Emmis Communications

Claim Number: FA0210000126658

PARTIES

Complainant is Clear Channel Communications, Inc., San Antonio, TX (“Complainant”) represented by Pamela B. Huff, of Cox & Smith Incorporated.  Respondent is Emmis Communications, Indianapolis, IN (“Respondent”) represented by Lisa M. Thomas, of Gardner Carton & Douglas.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <power1051.com>, registered with Register.com.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Mr. C. Elliott served as Chair, along with Mr. T. Arnold and R. Glen Ayers as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 1, 2002; the Forum received a hard copy of the Complaint on October 2, 2002.

On October 1, 2002, Register.com confirmed by e-mail to the Forum that the domain name <power1051.com> is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.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 October 10, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 30, 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@power1051.com by e-mail.

A timely Response was received and determined to be complete on October 30, 2002.

On December 4, 2002, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Mr. Clive Elliott as Chair Panelist along with Mr. Tom Arnold and Honorable R Glen Ayers as Panelists.

On December 6, 2002 the Panel requested additional submissions regarding the parties’ use of the mark POWER.  A request for clarification was then received from  Complainant on December 12, 2002 and answered by the Panel on December 14, 2002.

The additional submissions were received from both parties on December 19, 2002.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant asserts it began using the mark POWER 105.1 in New York City, New York in March, 2002. 

Complainant also asserts it uses POWER to identify six radio stations located in New York, Georgia, Pennsylvania and Texas.  POWER is used on the air to identify the respective broadcasting services 20 to 40 times hourly, 24 hours a day, seven days a week.  Further, the mark is used in television, Internet, and print advertising.

Complainant set out the relevant use in a chart, provided below:

Stations owned by Clear Channel Communications, Inc.

Utilizing the POWER Trademark

Call Letters

Location

Launch Date

Wattage

On Air Usage

WWPR

New York City, NY

March, 2002

6,000

20-40 Times Hourly

24 Hours a Day

7 Days a Week

WPRW

Augusta, GA

November, 1999

50,000

20-40 Times Hourly

24 Hours a Day

7 Days a Week

WPHR

Auburn, NY

January, 2001

13,800

20-40 Times Hourly

24 Hours a Day

7 Days a Week

WUSL

Philadelphia, PA

1982

50,000

20-40 Times Hourly

24 Hours a Day

7 Days a Week

KPRR

El Paso, TX

1999

100,000

20-40 Times Hourly

24 Hours a Day

7 Days a Week

KPRF

Amarillo, TX

1986

100,000

20-40 Times Hourly

24 Hours a Day

7 Days a Week

Complainant indicates that POWER 105.1 is used on outdoor billboards, on the station’s website, on concert signage, and other numerous promotion streams.  In contrast, Complainant says that Respondent is not using the mark POWER in connection with any station in New York City and is not using POWER in association with any station located at the 105.1 frequency.

Complainant asserts that Respondent registered the <power1051.com> domain name immediately after receiving Complainant’s misdirected email, which stated Complainant’s intent to use and register <power1051.com>. It contends that this is evidence of bad faith.

B. Respondent

Respondent, like Complainant, operates radio stations in various geographic regions of the United States. 

Respondent asserts it has a family of POWER trademarks, several of which include the word “power” and the frequency from which its stations broadcast.  These marks include POWER 106 FM, POWERHOUSE, POWERMIX WEEKENDS, POWER OF EMMIS, POWER 92.3, MUSIC POWER, MAKE THE POWER SWITCH, POWER PARTY MIX, K-POWER and POWER OF HIP HOP. 

Respondent began use of the first of its POWER marks at least as early as January 11, 1986. The location, dates, wattage, and geographical reach of the radio station broadcasts using POWER are listed below:


§ KPWR-FM is located in Los Angeles, California.  KPWR-FM is a Class B FM of 25,000 watts and inside its 54 dBu contour it covers 21,472 km2 and reaches approximately 14,197,841 people.

§ KKFR-FM is located in Phoenix, Arizona.  KKFR-FM is a Class C FM of 100,000 watts and inside its 54 dBu contour it covers 31,296 km2 and reaches approximately 3,232,986 people.

§ WQHT-FM is located in New York, New York.  WQHT-FM is a Class B FM of 6,700 watts and inside its 54 dBu contour it covers 13,923 km2 and reaches approximately 16,902,315 people.

Respondent has also obtained a federal registration for one of its POWER marks, namely Reg. No. 1,439,522 (POWER 106 FM and Design for “radio broadcasting services”). 

Respondent asserts that as a result of its long and continuous use of its POWER marks, it has developed significant and protectable goodwill in those marks.  It submits that the domain name at issue is thus related to Respondent’s long-standing use of its own mark.

Additionally, Respondent states it has used the mark POWER in connection with the following slogans and monikers consistently and continuously for the above-referenced radio stations:  POWER 106 FM, POWERHOUSE, POWERMIX WEEKENDS, POWER OF EMMIS, POWER 92.3, MUSIC POWER, MAKE THE POWER SWITCH, POWER PARTY MIX, K-POWER and POWER OF HIP HOP. 

These uses and the rights associated with the above-referenced slogans and monikers are supported by both federal and state service mark registrations, including  Federal Registration Number 1,439,522 for the service mark POWER 106 FM.

It notes that as a business strategy, Respondent has obtained registrations to cover a range of FM frequencies.  For example, Respondent has obtained domain name registrations for <power921.com>, <power925.com>, <power927.com>, and <power929.com>.  These domain names point to Respondent’s POWER home page, located at <powerofemmis.com>, and are intended for listeners of the radio station it operates under POWER 92.3.  Similarly, for its Los Angeles-based radio station POWER 106 FM, which operates at a frequency of 105.9, Respondent has obtained the domain name registrations <power105.com>, <power1051.com>, and <power1053.com>.

C. Additional Submissions

As noted above additional submissions were lodged by both parties and received by the Panel on December 19, 2002. Both parties provided details of the location, dates, wattage, and geographical reach of the radio station broadcasts using POWER.

FINDINGS

Pursuant to paragraph 4(a) of the Policy it is found that:

(1) The question of whether the domain name <power1051.com> is identical or confusingly similar to the POWER 1051 trade/service mark in which Complainant has rights is left open;

(2) Respondent has a right or legitimate interests in respect of the <power1051.com>domain name; and

(3)            the <power1051.com> domain name was not registered and is not being used in bad faith.

DISCUSSION

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

Respondent asserts trademark rights in the following marks:  POWER 106, POWERHOUSE, POWERMIX WEEKENDS, POWER OF EMMIS, POWER 92.3, MUSIC POWER, MAKE THE POWER SWITCH, POWER PARTY MIX, K-POWER and POWER OF HIP HOP.  Respondent claims that it first began use of one of its POWER marks at least as early as January 11, 1986.  Respondent further asserts that it holds a federal trademark registration for POWER 106 FM (Reg. No. 1,439,522). 

Respondent argues that its POWER radio-related marks were established before Complainant’s interests in the POWER 105 mark.  Respondent asserts that the domain name is “not confusingly similar to any prior-existing trademark or service mark in which Complainant has rights.”  Respondent notes that it registered the <power1051.com> domain name on March 8, 2002, while Complainant did not begin commercial use of the station name Power 105.1 until March 14, 2002. 

Therefore, the Panel may find that the Complaint is not proper since Complainant’s rights in the POWER 105 mark do not predate Respondent’s domain name registration.  See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (stating that “We are of the unanimous view that the trademark must predate the domain name”).

In the present case, it is clear that both parties use the POWER mark and have done so "in different radio markets since l986. Respondent has major investments in use of "Power" in association with his stations sufficiently long to make it clear he is not a "Johnny-come-lately" pirate of trademark significance in that word in Complainant's markets developed prior to l986. The numbers following "Power" as used by Respondent are
radio frequencies of his stations, mere radio spectrum addresses of the stations Respondent has operated extending back in one case to l986. We cannot attach controlling trademark significance to those numbers which are mere frequency addresses descriptive of how to get reception from a given station. The fudging of l05.9 to l06 is noted, but it is not really material; in practicality "l06" as used is a shorthand address of a station assigned the frequency of l05.9 by the government. "l05.9" must be
available for each proprietor of a station operating at that frequency to use in advertising its station."

The issue that has to be decided is whether Complainant has prior rights sufficient to establish that it holds a mark.  This requires an assessment of whether Complainant not only has prior and relevant use of the trade or service mark but whether Complainant has rights in the trade or service mark vis a vis Respondent.

This is a difficult assessment to make in this particular case and for the reasons given below we prefer not to reach a firm conclusion on this ground.

Accordingly, we leave this ground open.

Rights or Legitimate Interests

Respondent argues that the domain name is related to its rights in its POWER family of marks.  Specifically, Respondent claims to have registered the domain name as a business strategy to enhance its POWER brand.  Respondent asserts that it registered the domain names <power921.com>, <power925.com>, <power927.com>, and <power929.com>.  Respondent claims these domain name were registered for listeners of the radio station it operates under POWER 92.3.  Likewise, Respondent asserts that it registered the domain names <power105.com>, <power1051.com>, and <power1053.com> for listeners of its POWER 106 FM radio station, which operates at a frequency of 105.9 FM.  Respondent claims to use its registered domain names to direct Internet traffic to its <powerofemmis.com> website, whereby it wishes to strengthen its POWER brand radio marks.  Therefore, Respondent argues that it uses the domain names, including <power1051.com>, for a bona fide offering of its “power” services. 

It seems to us that Respondent is able to rely on Policy ¶ 4(c)(i), namely before notice of the dispute it took steps to use the domain name in connection with a bona fide offering of services.

The issue here is whether a radio station operator is entitled to continue to use a name or brand it has been using for in excess of five years in running and the development of its business operations. In the absence of clear evidence of prior and protectable common law or other rights we are reluctant to find against Respondent.

Accordingly, we find Complainant fails to make out this ground. We do however prefer to rest our finding principally on the following “Bad Faith” ground, for the reasons given below.

Registration and Use in Bad Faith

Whether or not Complainant had rights in the POWER 105.1 mark prior to registration of <power1051.com>, Respondent claims that it registered the domain name in good faith for its business strategy of enhancing its POWER brand radio-related marks.  Furthermore, Respondent argues that Complainant’s affidavit alleging that Complainant told Respondent of its plans to use the POWER 105.1 mark in connection with a <power1051.com> is not dispositive.

This is correct, because the domain name could not have possibly been registered in bad faith the registration pre-dated Complainant’s interests in the POWER 105.1 mark.  See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent registered the domain prior to Complainant’s use of the mark); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding no bad faith where Respondent registered the domain name in question before application and commencement of use of the trademark by Complainant).

Absent some other consideration, such as “insider information”, in a fair race to use and registration, the registration of a domain name before Complainant has the right to claim a mark means that there can be no “bad faith.”

Here, Respondent has used POWER for fifteen or more years.  It has now added a non-trademark distinctive frequency address.

We find, on reflection that the parties long term co-existence in the radio business and the particular facts of this dispute do not point towards cybersquatting conduct of the type proscribed by the UDRP. We find this issue the most relevant and in fact dispositive of the Complaint as a whole, as absent a finding of bad faith the Compliant must fail.

This defeats Complainant’s claim with respect to “power.”  Adding the frequency address to any advertising word, whether or not a mark, does not show bad faith.

DECISION

            In view of the above the Complaint is DISMISSED.

Clive Elliott - Chair Panelist

Mr. T. Arnold

R. Glen Ayers

Dated:  January 20, 2003


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