Interep National Radio Sales, Inc. v. Internet Domain Names, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Interep National Radio Sales, Inc. v. Internet Domain Names, Inc.

Case No. D2000-0174

1. The Parties

1.1 Complainant is Interep National Radio Sales, Inc., New York, New York, U.S.ARespondent is Internet Domain Names, Inc., Houston, Texas, U.S.A.Complainant is represented by counsel, Salans Hertzfeld Heilbronn Christy & Viener, New York. Respondent is represented by counsel, Howrey Simon Arnold & White, Washington, D.C..

2. The Domain Name and Registrar

2.1 The domain name which is the subject of this proceeding is "eradio.com" owned by Respondent. The domain name is registered with Network Solutions, Inc., Herndon, Virginia, USA.

3. Procedural History

3.1 A Complaint was submitted to the WIPO Arbitration and Mediation Center ("WIPO") pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy") on March 17, 2000.

3.2 On March 22, 2000, a Request for Registrar Verification was sent to Network Solutions, Inc. which issued its verification on March 24, 2000.

3.3 The Notification of Complaint was sent from WIPO to Respondents by e-mail, courier, and facsimile on March 28, 2000, thus commencing this administrative proceeding.

A Response and a Supplement to Response were filed on April 17, 2000.

A Reply to the Response was filed on April 29, 2000.

An Objection to Complainant’s Reply was filed on May 10, 2000.

3.4 The Notification of Appointment of an Administrative Panel ("Panel") was sent on May 12, 2000.

4. Factual Background

4.1 Complainant owns U. S. Trademark Registration No. 2309898 for E-RADIO covering various advertising services in Class 35This registration results from an intent to use application filed on May 5, 1998, and a claimed date of first use in commerce of August 2, 1999.

4.2 Respondent’s predecessor in interest, InterCard, Inc. registered the domain

name "eradio.com" on May 3, 1996. On August 5, 1997, InterCard, Inc.

changed its name to Internet Domain Names, Inc.

4.3 Between December 21, 1999, and February 7, 2000, representatives of Complainant

communicated with representatives of Respondent concerning the possible acquisition

of the <eradio.com> domain nameOn December 21, 1999, Mr. Don Wahlig of

Complainant communicated to Mr. Ostrofsky of Respondent that Interep was willing

to purchase the <eradio.com> domain name from Respondent in lieu of pursuing

the matter through other meansThe same day, Mr. Ostrofsky responded to Interep’s

inquiries as follows: I am open to all offersIt is worth from $750 – $2 millionI

will take cash, stock or a mixture of bothIf your online plans look promising,

I’m a pretty aggressive investor… Make an offer and I’ll respond"The next

day, Mr. Wahlig indicated that Interep would be willing to pay Respondent $1,000

for the <eradio.com> domain name, to which Mr. Ostrofsky responded as

follows: "Best of Luck…you do not own www.eRadio.com…and never willI think

you might research my background the recent sales I have done before trying

to take me on in a legal battleFYI, I sold my company to NSI…if that helps you

rethink your position…good luckFYI – I have had that domain name in use for

years…

4.4 On February 7, 2000, Mr. Victor Lirio of Interep wrote a cease and desist letter to Ms. Susan Gilmore, the Administrative Contact for Respondent set forth in the <eradio.com> entry in the NSI Whois database

5. Parties’ Contentions

A. Complainant

5.1 Respondent’s <eradio.com> domain name is identical or confusingly

similar to Interep’s E-RADIO service mark, because the second-level domain name

differs from the service mark only by the absence of a hyphenFor purposes of

assessing the identity or confusing similarity between domain names and trademarks,

top-level domain extensions (the .com, in this instance), spaces, hyphens, and

punctuation are ignoredSee, e.g. Talk City, Inc. v. Michael Robertson, WIPO

Domain Name Dispute Case D2000-0009 (finding the <talk-city.com> domain

name to be identical or confusingly similar to the trademark TALK CITY).

5.2 Respondent has no rights or legitimate interests in respect of the <eradio.com> domain nameOn information and belief, Respondent holds the <eradio.com> domain name solely for the purpose of selling the domain name to Interep or to one of Interep’s competitors for consideration in excess of Respondent’s out-of-pocket costsRespondent does not use the <eradio.com> domain name on the InternetAs of the date of this Complaint, Respondent does not maintain a single page on the world wide web that is linked through the URL http://www.eradio.comAdditionally, Respondent holds the registrations for scores of domain names, far in excess of the number of domains that Respondent could conceivably utilize for bona fide business purposes in association with the provision of goods and servicesRespondent’s sole use of the <eradio.com> domain name is to make it available for sale.

5.3 Just as was found by another WIPO Administrative Panel convened to resolve

a dispute concerning the <musicweb.com> domain name pursuant to the Rules,

Respondent’s conduct and statements to Interep representatives establish that

Respondent registered and uses the <eradio.com> domain name in bad faithSee,

Ellenbogen v. Pearson, WIPO Domain Name Dispute Case

D2000-0001 (concluding that evidence that (i) respondent’s only purpose

in registering the <musicweb.com> domain name was to sell the domain for

profit, and (ii) there was no actual or intended use of the domain name were

"sufficient evidence of registration and use in bad faith within the meaning

of paragraph 4 of the Policy and applicable legal principles")

B. Respondent

5.4 Respondent notes that Complainant’s E-RADIO mark is not arbitrary or fanciful; rather it is, at least, merely descriptiveThe prefix "e" in combination with a generic term is in widespread use by third parties to describe "electronic" and online activities or services in a shorthand manner, e.g., email/e-mail, e-commerce, ebusiness/e-business, and e-ticketTerms such as e-purchase, e-realty, erealty, emattress, e-pricing, edebit, e-pulp and equiz are all terms registered on the Supplemental Register in the United States, reflecting their descriptive natureThe word "radio" is undeniably genericThe combination of the prefix "e" and the generic term "radio," used for advertising services on an electronic site accessed through the Internet, does not create a unique composite mark such that Complainant should be given any special protection, since numerous companies use such "e" terms to promote their goods and servicesSee Continental Airlines Inc. v. United Air Lines Inc., 53 U.S.P.Q.2d 1385, 1393, 1396-97 (T.T.A.B. 2000) (discussing common use of "e" prefix in combination with a generic or descriptive term to denote goods or services delivered electronically or conducted online)Furthermore, the E-RADIO mark can not be considered famous or as having secondary meaning, and Complainant has not provided evidence as suchIn identical situations, panels have routinely favored the domain name holderCar Toys, Inc. v. Informa Unlimited, Inc., National Arbitration Forum Domain Name Dispute Case FA0093682; General Machine Products Co., Inc. v. Prime Domains, National Arbitration Forum Domain Name Dispute Case FA0092531; Shirmax Retail Ltd. v. CES Marketing Group, Inc., eResolution Domain Name Dispute Case AF-0104; Storage Technology Corp. v. Network Systems GA, Inc., National Arbitration Forum Domain Name Dispute Case FA0094188.

5.5 Respondent has rights and a legitimate interest with respect to the domain

nameBefore any notice to Respondent of the dispute, Respondent used the domain

name in connection with a bona fide offering of servicesSpecifically, Respondent

registered the descriptive domain name as part of its domain name website development

enterpriseRespondent is in the business of registering domain names that comprise

generic or descriptive terms, and developing business-oriented websites using

these domain namesRespondent did not plan to sell the <eradio.com> domain

name, but rather planned to develop a radio splash website referring people

to online radio stations, since it had successfully developed other websitesSeveral

ICANN-approved panels have held that exactly such an enterprise creates a legitimate

bona fide business interest in the generic or descriptive domain name in the

domain name owner. Allocation Network GmbH v. Steve Gregory, WIPO

Domain Name Dispute Case D2000-0016, Car Toys, Inc. v. Informa Unlimited,

Inc., National Arbitration Forum Domain Name Dispute Case FA0093682, see

Annex E; General Machine Products Co., Inc. v. Prime Domains, National

Arbitration Forum Domain Name Dispute Case FA0092531, Shirmax Retail Ltd.

v. CES Marketing Group, Inc., eResolution Domain Name Dispute Case AF-0104,

It has been held that a legitimate interest in a domain name does not become

illegitimate once another party offers to purchase the domain nameCar Toys,

Inc. v. Informa Unlimited, Inc., National Arbitration Forum Domain Name

Dispute Case FA0093682; General Machine Products Co., Inc. v. Prime Domains,

National Arbitration Forum Domain Name Dispute Case FA0092531Thus, Respondent’s

right and interest in the domain name remained legitimate even after Complainant

approached Respondent with its offer to purchase the domain name from RespondentFurthermore,

even after being approached by Complainant to sell the domain name, Respondent

did not attempt to capitalize on whatever alleged trademark rights Complainant

established in the term E-RADIO or to profit from Complainant’s business, and

Complainant can provide no evidence of such.

5.6 Respondent has not registered or used the domain name in bad faithThe Uniform

Domain Name Dispute Resolution Policy established by ICANN clearly requires

a domain name to be (1) registered and (2) used by the respondent in

bad faithSee Policy 4(a)(iii)Complainant fails to provide evidence of

eitherBad faith registration is negated by a finding that the domain name owner

registered the domain name prior to the development of trademark rights by another

party, and/or that the domain name owner did not know of or could not have known

of the complainant and/or the complainant’s trademark rights at the time of

registrationAllocation Network GmbH v. Steve Gregory, WIPO

Domain Name Dispute Case D2000-0016; General Machine Products Co., Inc.

v. Prime Domains, National Arbitration Forum Domain Name Dispute Case FA0092531;

Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, WIPO

Domain Name Dispute Case D2000-0040, see Annex G; Telaxis Communications

Corp. v. William E. Minkle, WIPO Domain Name Dispute

Case D2000-0005, see Annex J; Unitil Resources, Inc. v. Robert Ampe,

National Arbitration Forum Domain Name Dispute Case FA0093553, see Annex K;

Shirmax Retail Ltd. v. CES Marketing Group, Inc., eResolution Domain

Name Dispute Case AF-0104.

5.7 Respondent is not using the <eradio.com> domain name as yet for an active website and therefore there is no use of it in an intentional attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or locationAs stated previously, Respondent has in no way attempted to capitalize on whatever trademark rights Complainant owns, or to profit from Complainant’s business, and Complainant can provide no evidence of such.

5.8 Respondent registered the descriptive domain name <eradio.com> in good faith two years before Complainant filed its intent-to-use trademark application for the alleged service mark E-RADIO, and more than three years before Respondent began using the E-RADIO markThus, Respondent registered the domain name long before Complainant established any kind of trademark rights in the termFurthermore, Respondent was not aware of Complainant or of any other entity using ERADIO or any mark similar thereto at the time of its domain name registration.

5.9 Respondent did not register or acquire the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, since Complainant did not have rights in the E-RADIO mark at the time of registration, and since Respondent was unaware of the existence of Complainant at the time of registration.

5.10 Respondent did not register the descriptive <eradio.com> domain name in an attempt to secure valuable consideration from Complainant in excess of its out-of-pocket costs directly related to the domain nameRespondent notes that it did not initiate contact with Complainant and offer to sell the domain name; rather, Complainant approached Respondent offering to buy the domain nameSuch conduct is indicative of the domain name owner’s good faith, not bad faithCar Toys, Inc. v. Informa Unlimited, Inc., National Arbitration Forum Domain Name Dispute Case FA0093682; General Machine Products Co., Inc. v. Prime Domains, National Arbitration Forum Domain Name Dispute Case FA0092531

5.11 Respondent did not register the domain name <eradio.com> in order to prevent Complainant from reflecting the E-RADIO mark in a corresponding domain name, and has not engaged, as Complainant asserts, in a pattern of such conductAs stated previously, Respondent was not aware of Complainant’s existence at the time it registered the domain name, Complainant was not using the alleged E-RADIO mark at the time Respondent registered the domain name, and Complainant did not commence using the mark for more than three years after Respondent registered the domain nameFurthermore, Respondent registers descriptive or generic terms as domain names for planned use in a legitimate commercial enterprise, and does not engage in a pattern of cybersquatting conduct.

5.12 Respondent did not register the <eradio.com> domain name primarily for the purpose of disrupting the business of ComplainantComplainant’s activities associated with the mark did not begin until more than three years after Respondent registered the domain name in good faithFurthermore, as stated previously, Respondent was not aware of Complainant’s existence at the time it registered the domain nameThus, Respondent could not have registered the mark to disrupt Complainant’s business.

5.13 Complainant is guilty of reverse domain name hijackingThe fact that Respondent registered the descriptive <eradio.com> domain name more than three years before Complainant began use of the E-RADIO mark should have indicated to Complainant that Respondent was not a cybersquatter of the markFurthermore, Complainant has provided no credible arguments that Respondent registered the domain name in bad faithThe complaint is a blatant bad faith attempt to hijack Respondent’s domain name for Complainant’s benefitComplainant merely wants the descriptive domain name that Respondent happened to register years before the Complainant even thought to adopt the term "E-RADIO." The complaint was brought in bad faith and primarily to harass Respondent, and as such constitutes an abuse of the administrative process.

6. Discussion and Findings

6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faithThe Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.

6.2 The Panel finds that the Complainant has established valid trademark rights pursuant to Rule 4(a)(i)E-RADIO is a registered service mark in the U.S. Patent and Trademark Office and is allegedly in use. The Panel will not evaluate the relative "descriptiveness" of E-RADIO as a service mark and is satisfied that the service mark is registered and apparently fulfills its function as a service mark in the marketplaceAdditionally, the deletion of the hyphen in the domain name "eradio.com" does not affect the identity or confusing similarity with the service mark.

6.3 The panel finds that the record does not indicate any rights or legitimate interests to the domain name by Respondent pursuant to paragraph 4(a)(i)Since Respondent admittedly has not used the domain name, Policy 4(c)(ii) and 4(c)(iii) are inapplicableIn Policy 4(c)(i), Respondent could have proven a "demonstrable preparation to use", but has not done soThe mere allegation that "eradio.com" may be useful in a website development enterprise for generic or descriptive terms is insufficientMoreover, the Panel has indicated that E-RADIO is a registered service mark thus casting further doubt on this allegation.

6.4 Although the Panel has found that Complainant has satisfied Policy 4(a)(i) and 4(a)(ii), it cannot find bad faith use and registration pursuant to Policy 4(a)(iii) on this recordThe fact that Respondent registered its domain name two (2) years before the intent to use application of Complainant was filed and three (3) years before Complainant started using the mark is persuasive to the Panel that none of the bad faith factors in Policy 4(b) apply.

6.5 The final issue before the Panel is Reverse Domain Name Hijacking pursuant to Policy 15(e)On the record before the Panel, the Panel cannot find that the Complaint was brought in bad faithThe Complainant owns a trademark registration and is pursuing a dispute resolution proceeding against an identical domain nameAlthough the Panel finds that Complainant has not proven its case, it also does not find any Reverse Domain Name Hijacking on the evidence and pleadings submitted

7. Decision

7.1 The Panel decides that the domain name "eradio.com" is identical or confusingly similar to the service mark of Complainant, that Respondent does not have any rights or legitimate interests in such domain name, and that Respondent has not registered or been using the domain name in bad faith. Moreover, the Panel decides that Respondent has not proven that Complainant engaged in Reverse Domain Name Hijacking in violation of Rule 15 (e).

7.2 The Panel hereby denies the Complaint.

Clark W. Lackert

Presiding Panelist

Dated: May 26, 2000

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