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Infinity Broadcasting Corporation v. Cayman Trademark Trust [2004] GENDND 715 (21 June 2004)

1. The Parties

The Complainant is Infinity Broadcasting Corporation of New York, New York, United States of America, represented by Naomi B. Waltman of New York, New York, United States of America.

The Respondent is Cayman Trademark Trust of Georgetown, Grand Cayman GT, Cayman Island, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <947thewave.com> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 2, 2004. On April 2, 2004, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. On April 2, 2004, BulkRegister.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 25, 2004.

The Center appointed Dietrich Beier as the sole panelist in this matter on June 7, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

a) Complainant is one of the leading radio broadcasting companies in the United States. One of the stations owned by Complainant is radio station KTWV-FM (94.7), which broadcasts to the Southern California market. Since February 14, 1987, Complainant (either itself or by and through its predecessors-in-interest) has used the designation 94.7THEWAVE in interstate commerce in connection with its radio broadcasting services; specifically, the broadcasting services of KTWV-FM, located at frequency 94.7 on the FM dial. Over the years, Complainant has actively promoted its broadcasting services under the designation 94.7THEWAVE and the shortened version, THE WAVE, and has built up a valuable reputation for its radio broadcasting services under the designation 94.7THEWAVE.

Complainant is the owner of, inter alia, the following valid, subsisting and existing federal service mark registration with the United States Patent and Trademark Office for the mark THE WAVE: United States Registration No. 1,542,929 (for radio broadcasting services in class 38), registered on June 6, 1989.

For more than fifteen years, Complainant and/or its predecessors-in-interest have spent a substantial sum of money advertising and promoting their services under the designation 94.7THEWAVE, which has resulted in the creation of a great deal of goodwill and popularity for the designation 94.7THEWAVE. Complainant’s radio broadcasting services under the designation 94.7THEWAVE have become well known to the public and within the radio industry and are regularly cited under the Top 10 of Southern Californian Radio stations as ratings from the Los Angeles Times demonstrate on the Internet.

Complainant also maintains a presence on the Internet, including ownership and operation of a website under the domain name <947wave.com>. This website contains references to Complainant’s designation 94.7THEWAVE.

b) On August 24, 2001, Respondent registered the domain name <947thewave.com>. A website under this domain name shows sponsored links, inter alia, for “Flavor Wave Oven,” but also Hawai vacation, gifts and cruises.

Respondent is not a licensee of Complainant, nor has Complainant granted any permission or consent to Respondent to use the designation 94.7THEWAVE or any domain name incorporating the designation 94.7THEWAVE or any designation confusingly similar thereto.

Respondent has registered over 2,200 domain names. Several of Respondent’s domain names appear to be misspellings of, or otherwise confusingly similar to well-known trademarks of others such as <bloomindales.com> and <uyahoo.com>.

Domain names of the Respondent have already often been the subject of National Arbitration Forum (NAF) and World Intellectual Property Organization (WIPO) UDRP proceedings, such as e.g., Les Laboratoires Servier v. Cayman Trademark Trust, WIPO Case No. D2003-0667, Caesars Entertainment, Inc. (“CEI”) v. Modern Limited - Cayman Web Development, WIPO Case No. D2004-0267 and Microsoft Corporation v. Modern Limited - Cayman Web Development, WIPO Case No. D2003-0919. In all these cases, the Panels found that the domain names should be transferred to the complainants.

5. Parties’ Contentions

A. Complainant

Complainant claims that by its long use of the designation 94.7THEWAVE, its advertising and promotional efforts and expenditures in connection with it, and the wide recognition achieved for the designation 94.7THEWAVE, the public has come to associate the designation 94.7THEWAVE with services originating with, emanating from, sponsored by or otherwise associated with or approved by Complainant, and Complainant has acquired rights to the designation 94.7THEWAVE.

Respondent’s domain name, registered on August 24, 2001, long after Complainant commenced use of the designation 94.7THEWAVE, is virtually identical to Complainant’s 94.7THEWAVE.

Complainant claims that Respondent has no rights or legitimate interests in the domain name, since Respondent is not a licensee of Complainant, nor has Complainant granted any permission or consent to Respondent to use the designation 94.7THEWAVE or any domain name incorporating the designation 94.7THEWAVE or any mark confusingly similar thereto.

Respondent is not (either as an individual, business or other organization) commonly known by the name 94.7TheWave or <947thewave.com>. Nothing in the WHOIS contact information for Respondent or on the website of Respondent implies that it is “commonly known by the disputed domain name.” Moreover, Respondent has not evidenced any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. There is only one reference to the domain name on the web page accessed by the disputed domain name, as a heading at the top of the web page. This reproduction of the disputed domain name cannot be considered a description of Respondent’s business in connection with a bona fide offering of goods.

Complainant derives Respondent’s bad faith by the fact that Respondent has registered over 2,200 domain names. Many of Respondent’s domain names appear to be misspellings of, or otherwise confusingly similar to, well-known trademarks of others. Respondent purportedly uses these domain names, including the disputed domain name, to lure Internet users to its website “presumably for commercial gain.” Many other Panels have found that the Respondent has engaged in the bad faith registration and use of domain names in violation of the Policy. This pattern of bad faith registration of domain names incorporating the trademarks of others is considered by the Complainant as further evidence of Respondent’s bad faith in this instance.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) have been satisfied:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

Complainant has established facts that it has acquired rights under the designation 94.7THEWAVE. This is confirmed by the fact that the Complainant with its broadcasting services in question is regularly cited under the Top 10 of Southern Californian Radio stations as ratings from the Los Angeles Times show on the Internet. It is acknowledged that the Panel can investigate websites related to the proceedings in some way on its own (see Paragraph 10(a) of the Rules; see also Globo Comunicações e Participações S.A. – Globopar, v. Artmidia Comunicação Visual Criação E Arte Ltda., WIPO Case No. D2000-0606; TV Globo Ltda. v. Burak Akgul, WIPO Case No. D2000-0353).

The domain name in dispute is confusingly similar to the service mark in which the Complainant has rights. The dot between the elements “94” and “7” is not distinctive and does not contribute to the distinctiveness of the service mark. Visual similarity is sufficient to establish similarity (see also Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548).

The Panel, therefore, considers the domain name in question to be confusingly similar to the service mark 94.7THEWAVE of the Complainant in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Respondent has no rights in the domain name in question, since Respondent is not a licensee of Complainant, nor has Complainant granted any permission or consent to Respondent to use the service mark 94.7THEWAVE or any domain name incorporating this mark or any mark confusingly similar thereto. Furthermore, Respondent has no legitimate interests in the domain name in question, since there is no indication that Respondent is commonly known by the name 94.7TheWave or <947thewave.com> nor that Respondent is using the domain name in question in a generic way in connection with a bona fide offering of related goods or services. If Respondent’s website would concentrate on goods or services connected with waves, Panel does not exclude that Respondent could claim legitimate interests in a domain name <wave.com>. The addition of “947the” in the present case, however, provides no correlation with the links on his website.

The Panel, therefore, considers that the Respondent has no legitimate interests in respect of the domain name in question in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent’s bad faith is established by the fact that Respondent has registered over 2,200 domain names where several of these domain names appear to be misspellings of, or otherwise confusingly similar to well-known trademarks of others, such as <bloomindales.com> or <uyahoo.com>. The fact that Respondent had to transfer many of his registered domain names in other WIPO and NAF proceedings in accordance with the UDRP to the Complainants in these proceedings clearly shows an ongoing violation of the Policy and a pattern of bad faith registration of domain names which incorporate the trademarks of others is an important circumstance to consider in determining whether Respondent’s registration and use of the domain name in question was in bad faith under Paragraph 4(b)(ii) of the Policy.

The Panel, therefore, considers the domain name in question to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <947thewave.com> be transferred to the Complainant.

Dietrich Beier
Sole Panelist

Dated: June 21, 2004