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Generic Top Level Domain Name (gTLD) Decisions |
Clear Channel Communications, Inc. v.
RadioAid.com. LLC
Claim Number: FA0405000273224
PARTIES
Complainant
is Clear Channel Communications, Inc. (“Complainant”),
represented by Pamela B. Huff of Cox & Smith Incorporated,
112 East Pecan, Suite 1800, San Antonio, TX 78205. Respondent is RadioAid.com,
LLC (“Respondent”), 1006 Banister Lane, Austin, TX 78704.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <clearchannelsucks.net>,
registered with Innerwise, Inc. d/b/a Itsyourdomain.com (hereinafter “Itsyourdomain.com”).
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Clive
Elliott as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 13, 2004; the Forum received
a hard copy of the Complaint
on May 17, 2004.
On
May 21, 2004, Itsyourdomain.com confirmed by e-mail to the Forum that the
domain name <clearchannelsucks.net>
is registered with Itsyourdomain.com and that the Respondent is the current
registrant of the name. Itsyourdomain.com has verified
that Respondent is bound
by the Itsyourdomain.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
May 25, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 14,
2004 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@clearchannelsucks.net by e-mail.
A
Response was received on June 15, 2004.
As the hard copy of the Response required by Paragraph 5(a) and (b) of the Rules for Uniform Domain Name Dispute
Resolution Policy (the “Rules”) was not received in a timely fashion and
the Response did not contain the certification statement required by Paragraph
5(b)(viii)
of the Rules, this Response is deficient.
Although the
Response was received past the Response deadline and did not contain the
certification statement required by the Policy
Rules, the Panel may exercise
its discretion and choose to consider the Response in reaching its decision in
this case. See Univ. of Alberta v.
Katz, D2000-0378 (WIPO
June 22, 2000) (finding that a Panel may consider a response which was one day
late, and received before a Panelist
was appointed and any consideration made);
see also Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb.
21, 2002) (ruling a Response inadmissible because of formal deficiencies would
be an extreme remedy
not consistent with the basic principles of due
process.").
While
a soft copy of the Response was received in time, a hard copy was not. Given the substantial compliance with the
Rule and on the basis that substance should, where possible and in appropriate
cases, take
precedence over form, the evidence is admitted. As to failing to properly certify the
Response, this should be done forthwith, even though it is, in effect, out of
time. However, for reasons which will
become apparent below, that is a matter for the Respondent to decide.
On June 30, 2004, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Clive Elliott
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
maintains that it has established rights in the CLEAR CHANNEL mark through
registration of the mark with the United States
Patent and Trademark Office Complainant states that Respondent
has registered the domain name <clearchannelsucks.net>,
of which the predominant part is the trademark owned by Complainant.
Complainant
asserts that Respondent redirects consumers from <clearchannelsucks.net> (a domain name confusingly similar to
Complainant's trademark) to <radioaid.com>, a site on which consumers can
purchase Respondent's
radio streaming.
Hence, it says Respondent has acquired the domain name solely for the
purpose of commercial gain by diverting potential consumers
of the mark at
issue to Respondent’s radio streaming site, which provides services in direct
competition with Complainant.
Complainant asserts that
Respondent is not making fair use of the domain name in that it is not using
the domain name as part of a
legitimate business, but is merely using the
domain name at issue in anticipation of commercial gain by diverting consumers
to its
online streaming radio site services.
Complainant says that upon discovering the domain name and confirming
that the web site associated with that domain was not a "protest"
site, it contacted Respondent and requested that Respondent abandon the domain
name. Respondent responded by refusing
to relinquish the domain name.
Respondent alleges that the domain is a vehicle for stating its stance
on Clear Channel's position in the music industry. It is the Complainant's position, however, that the Respondent
exhibits bad faith in its attempt to wrap itself in the First Amendment
typically associated with "protest" sites [through its
"sucks" domain name and through its statements regarding
its
"stance on Clear Channel's position in the music industry"] when its
site is simply directed to services offered by
Respondent.
B.
Respondent
Respondent
states that the domain name is not similar
to the registered trademark of Clear Channel and that the Complainant is not
known by the domain name
<clearchannelsucks.com>.
It says that its use of the
domain name is merely a tool to redirect users to Respondent's
<radioaid.com> home page.
Respondent asserts
its website has always protested against the Complainant and that RadioAid.com
has audio advertisements and links
pointing to the wrongdoings of the Complainant
with respect to dealing with unsigned and independent artists. Respondent says Complainant failed to
recognize this in their Complaint to the arbitration panel.
Respondent argues that the parties do not compete due to
different businesses and services.
Respondent says that the two companies have opposite end of the spectrum
customers. It suggests that
Complainant’s customers have no option of turning from any FM/AM/XM TERRESTRIAL
radio station towards Respondent’s
STREAMING RADIO on any type of TERRESTRIAL
radio device.
Respondent says
that its site delivers streaming radio to all listeners for free and charges
artists for webspace and bandwidth usage
on its RadioAid.com servers and that
Complainant has no such business practice.
Finally, it notes that Complainant owns the domain name
<clearchannelsucks.com>. It
argues that this has limited the ability for free speech advocates to use this
domain to establish their protest against the Complainant
and is not used at
all by the Complainant for any purposes.
FINDINGS
(1)
The domain name <clearchannelsucks.net>
is confusingly similar to the CLEAR CHANNEL trademark and name.
(2) That the Respondent has no rights or
legitimate interests in respect of the domain name <clearchannelsucks.net>; and
(3)
The said domain name was registered and is being used in bad faith.
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.”
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.
Complainant
maintains that it has established rights in the CLEAR CHANNEL mark through
registration of the mark with the United States
Patent and Trademark Office. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
(“Under U.S. trademark law, registered marks hold a presumption that they are
inherently
distinctive and have acquired secondary meaning.”).
Complainant
argues that the addition of the word “sucks” to Complainant’s registered CLEAR
CHANNEL mark results in a domain name that
is confusingly similar to its
mark. See Caixa d’Estalvis y
Pensions de Barcelona ("La Caixa") v. Namezero.com, D2001-0360
(WIPO May 3, 2001) (“The
general principle taught by precedents seems to be that, when a –SUCKS domain
name has been registered for the main purpose of
making money, it has been
registered in bad faith, while when the purpose was really to provide criticism,
political or otherwise,
a finding of bad faith would not be appropriate.”); see
also ADT Services AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion
among Panels on "sucks" domain name disputes and
concluding that use
of the "sucks" suffix does not defeat Complainant's confusing
similarity argument); see also Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO
Nov. 23, 2000) (“In domain name disputes it is critical whether the accused
domain name itself signifies parodic
or critical purposes, as opposed to
imitation of trademark.”).
An interesting analysis is made by the
Panelist Sandra Franklin, as follows:
There
is a split among the UDRP decisions regarding whether a "-sucks"
domain name is confusingly similar to the trademark
to which it is
appended. The majority of the decisions
have found confusing similarity. In a minority of decisions, and in some
dissenting opinions, Panelists
have deemed a "-sucks" addition to a
well-known trademark to be an obvious indication that the domain name is not
affiliated
with that trademark owner.
This Panel, however, concurs with the notion that every case must be
assessed on its own merits, as put forth in Cabela’s
Inc. v. Cupcake Patrol, FA 95080 (National Arbitration Forum, August 29,
2000), and therefore does not accept the per se rule, resulting in an automatic
finding of no confusing similarity.
Complainant’s arguments on the inappropriateness of the per se
rule are persuasive.
See
Wachovia Corporation v. Flanders,
Case No. D2003-0596 (WIPO September 17, 2003).
The panelist agrees with this approach
and adopts it in the present case. It is found, on the particular facts, that Complainant's confusing similarity argument succeeds and imitation
of its trademark is the likely outcome.
The
first ground is thus made out.
Complainant contends that Respondent’s
use of the disputed domain name to merely redirect users to Respondent’s
commercial website
at the <radioaid.com> domain name does not constitute
protected speech, but is rather an attempt to capitalize on Complainant’s
mark
to attract Internet users to Respondent’s website. The Panel may find that this is evidence that Respondent lacks
rights or legitimate interests in the disputed domain name. See Name.Space Inc. v. Network Solutions,
[2000] USCA2 17; 202 F.3d 573, 585 (2d Cir. 2000) (although the content of Respondent’s site may
be entitled to First Amendment protection, Respondent’s use of
Complainant’s
trademark in the domain name of its site is not protected. Since Respondent’s
domain name merely incorporates Complainant’s
trademark, it does not constitute
a protectable, communicative message); see generally Vivendi
Universal v. Sallen, D2001-1121 (WIPO Nov. 7, 2001) (finding no
rights or legitimate interests from Respondent's alleged "free
speech" use
of the domain name <vivendiuniversalsucks.com>, which
fully incorporated Complainant's VIVENDI UNIVERSAL mark, because the
domain
name was passively held).
Complainant stresses that Respondent only
uses the domain name to redirect users to the <radioaid.com> website,
which is not
a forum for free speech against Complainant but is actually a
commercial website. The Panel may find
that Respondent’s use of the disputed domain name for these purposes is
illegitimate. Compare Legal &
Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) (finding that
“the goals of the Policy are limited and do not extend to insulating trademark
holders
from contrary and critical views when such views are legitimately
expressed without an intention for commercial gain”); Britannia Bldg. Soc'y v.
Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001) (finding that
Respondent has legitimate interests in the <britanniabuildingsociety.org>
domain
name because the low level of confusion was negligible due to its use in
connection with a "genuine criticism site," which
displayed a
disclaimer and link to Complainant's official website).
Respondent invited the panelist to visit
its website (at RadioAid.com) to verify that its site is a vehicle for protest and
criticism against “Clear Channel”. To some extent it is. The panelist noted
for
example the following reference at a linked site:
<http://www.salon.com/ent/clear_channel>:
“Radio's big
bully” - A complete guide to Salon's reporting on Clear Channel, the most
powerful -- and some would say pernicious --
force in the music industry.
That, however, is but a small part of the
site. Indeed, the site is directed
very much to radio streaming services, with the protest theme very much a
secondary consideration. This suggests that
there is merit in Complainant’s
argument that Respondent’s efforts to wrap
itself in the First Amendment typically associated with "protest"
sites when its site is simply directed to services
offered by Respondent should
not be accepted.
It seems, again on the facts of this
particular case, that this type of activity is not the sort to support a claim
to a legitimate
interest which should be recognized in this forum. The ground is thus made out.
Complainant
contends that Respondent is using the CLEAR CHANNEL mark without permission to
attract users to its commercial website
at the <radioaid.com> domain
name. The Panel may find that this is evidence that the disputed domain name
was registered and
used in bad faith. See Jenner & Block LLC v.
Defaultdata.com, FA 117310 (Nat. Arb. Forum Sept. 27, 2002) (“Respondent’s
argument that there is an inherent conflict between the Internet and the
Constitutional
right to free speech at the address to a business sounds impressive but is no
more correct that than the argument
that there is a Constitutional right to
intercept telephone calls to a business in order to speak to customers.
Respondent’s conduct
is not the equivalent of exercising the right of free
speech outside Complainant’s business street address but of impermissibly
blocking
traffic to that street address.”).
Reference
is also made to Wal-Mart Stores,
Inc. v. Walsucks and Walmarket Puerto Rico, D2000-0477 (WIPO July 20, 2000)
(finding bad faith where Respondent is intentionally using
<walmartcanadasucks.com>, <wal-martcanadasucks.com>,
<walmartuksucks.com>, <walmartpuertorico.com> and
<walmartpuertoricosucks.com> domain names to attract Internet
users to
his websites).
Again, for the reasons advanced above, it
is found that the ground is made out.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <clearchannelsucks.net>
domain name be TRANSFERRED from Respondent to Complainant.
Panelist Clive Elliott
Dated: July 13, 2004
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