Champion Broadcasting System, Inc. v. Nokta Internet Technologies

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Champion Broadcasting System, Inc. v. Nokta Internet Technologies

Case No. D2006-0128

1. The Parties

The Complainant is Champion Broadcasting System, Inc., Boston, Massachusetts,

United States of America, represented by Wolf, Greenfield & Sacks, P.C.,

United States of America.

The Respondent is Nokta Internet Technologies, Berkeley, California, United

States of America.

2. The Domain Name and Registrar

The disputed domain name <wunr.com> (the “Disputed Domain Name”)

is registered with Moniker Online Services, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2006. On January 30, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 31, 2006, the Registrar transmitted by email to the Center its verification response. 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 February 14, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2006. The Respondent did not submit any Response. Accordingly, the Center notified Complainant of the Respondent’s default on March 7, 2006.

The Center appointed Steven Auvil as the sole panelist

in this matter on March 14, 2006. 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

Complainant is engaged in the radio broadcasting business and is the owner of a radio station with the call letters “WUNR.” Complainant’s rights in the WUNR mark date back to as early as 1976. The WUNR mark was registered on the principal register of the United States Patent and Trademark Office (Registration No. 1,398,878) on June 24, 1986. In addition, the WUNR mark is now incontestable under 15 U.S.C. § 1065. Complainant submitted a sworn declaration that the station, which was founded in 1948, and was one of the first radio stations to go on the air after World War II, began broadcasting under the call letters WUNR in 1976 and has used the WUNR mark continuously since that time.

The Disputed Domain Name was first registered with

the Registrar on June 21, 2004. Complainant submitted evidence that, on January

27, 2006, the Disputed Domain Name resolved to a web page affiliated with the

DomainPark advertising program on which various categories of services were

advertised. As of the date of this decision, the Disputed Domain Name still

resolves to a web page containing various sponsored links.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Name is confusingly similar to its WUNR mark.

In addition, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, that Respondent was not authorized by Complainant to use the WUNR name, and that Respondent is using it for commercial gain. Complainant further contends that Respondent was not using the Disputed Domain Name in connection with a bona fide offering of goods or services because Respondent’s sole use of the Disputed Domain Name has been to misdirect traffic intended for Complainant to the DomainPark web page.

Finally, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because Respondent registered and is using it in order to utilize Complainant’s WUNR trademark to attract Internet users to a web site for commercial gain.

Complainant is seeking transfer of the Disputed Domain Name to Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s

contentions.

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy Paragraph4(a). The discussion and decision will be governed by the terms of the Policy.

To obtain relief, Paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interest in the domain name registered by Respondent; and

(3) that the domain name registered by Respondent has been registered and used in bad faith.

In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of 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.

A. Identical or Confusingly Similar

Respondent does not dispute, and the Panel finds, that the Disputed Domain

Name registered by Respondent is confusingly similar to Complainant’s

federally-registered WUNR mark. Complainant’s WUNR mark was registered

on the principal register (Registration No. 1,398,878) on June 24, 1986. However,

Complainant’s rights in the WUNR mark date back to as early as November

18, 1985, when it filed for registration with the United States Patent and Trademark

Office, giving Complainant a constructive use date of November 18, 1985 and

priority over those with competing claims to the WUNR mark based upon later

use. 15 U.S.C. § 1057(c). In addition, Complainant’s federally registered

WUNR mark is now incontestable under 15 U.S.C. § 1065. Complainant’s federal

registration of the WUNR mark provided Respondent with constructive notice of

Complainant’s rights in the mark. 15 U.S.C. § 1072. Finally, the addition

of the “.com” suffix Complainant’s WUNR trademark does not

obviate confusing similarity between the Disputed Domain Name and Complainant’s

WUNR mark. See, e.g., Bradford & Bingley Plc v. Registrant ubfi@fashion

ID.com 987654321, WIPO Case No. D2002-0499

(August 16, 2002) (“When comparing a challenged domain name and a trademark,

the addition of the .com suffix is irrelevant for the purpose of determining

whether the domain name is identical or confusingly similar to the trademark.

Rather, one looks to the second-level domain for such a determination.”)

(citing several additional decisions with the same holding); Sporty’s

Farm v. Sportsman’s Market, 202 F.3d 489, 498 (2d Cir. 2000).

For these reasons, the Panel concludes that the Disputed Domain Name is confusingly similar to the WUNR mark, a federally-registered trademark in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy Paragraph 4(c).

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. Respondent has not submitted any arguments or evidence in rebuttal. Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Name. Respondent was not licensed by Complainant to use the mark WUNR. It appears that the only use Respondent made of the Disputed Domain Name was an arrangement with the DomainPark program whereby, according to Complainant, Respondent received revenue from sponsored links placed on the web site to which the domain name resolves. Merely using the Disputed Domain Name to collect revenue from the DomainPark program from misdirected traffic intended for Complainant, as alleged by Complainant and not disputed by Respondent, is not a bona fide offering of goods or services and is not a legitimate noncommercial or fair use of the Disputed Domain Name. Complainant has alleged that Respondent is merely intending to attract internet users for commercial gain by misleadingly diverting customers to the DomainPark sponsored link page. Respondent has not offered another explanation.

For these reasons, in accordance with Paragraph 4(a)(ii) of the Rules, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Complainant also argues that Respondent registered and used the Disputed Domain Names in bad faith. Specifically, Complainant essentially argues that Respondent’s bad faith is reflected in the fact that: (1) Respondent incorporated Complainants WUNR mark in its entirety; (2) Respondent utilized the WUNR mark to attract Internet users to a web site for commercial gain; and (3) the implausibility that there could be any legitimate reason for Respondent’s choice of a domain name that incorporates Complainant’s federally-registered trademark.

The record establishes that Complainant has a November 18, 1985 constructive

use date of the WUNR trademark. The Panel notes that both parties are located

in the USA and the principle of constructive notice can be applied in accordance

with the Rules, Paragraph 15. Thus, Respondent’s constructive knowledge

of Complainant’s rights in the mark WUNR and the use of a confusing similar

domain name is indicative evidence of bad faith. See eBay Inc. v. SGR Enterprises,

WIPO Case No. D2001-0259 (April 11, 2001)

(“Actual or constructive knowledge of the Complainant’s rights in

its trademark is a factor supporting bad faith.”); Kate Spade LLC v.

Darmstadter Designs, WIPO Case No. D2001-1384

(January 3, 2002) (applying principle of constructive notice in finding bad

faith).

In addition, according to Paragraph 4(b)(iv) of the Policy, evidence of bad

faith registration and use is shown when registration of a domain name occurs

in order to utilize another’s well-known trademark by attracting Internet

users to a web site for commercial gain. See Am. Online, Inc. v. Tencent

Commc. Corp., FA 93668 (National Arbitration Forum, March 21, 2000) (finding

bad faith where the respondent registered and used the disputed domain name

to attract users to a web site sponsored by the respondent). Here, the unrebutted

evidence demonstrates that Respondent used Complainant’s federally-registered

WUNR mark in the Disputed Domain Name to attract Internet customers to the DomainPark

web site through which Respondent received, or had an opportunity to receive,

revenue from sponsored links placed on that web site. In other words, the only

use that Respondent made of the Disputed Domain name has been to free-ride on

Complainant’s good will. Numerous other panels have found bad faith when

the registrant collects revenue from a “parked” domain, see,

e.g., Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a

Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant,

WIPO Case No. D2004-0896 (December 30,

2004); Bridgestone Corporation v. Horoshiy, Inc., WIPO

Case No. D2004-0795 (November 29, 2004); Lowen Corporation d/b/a Lowen

Sign Company v. Henry Chan WIPO Case No.

D2004-0430 (August 5, 2004); Mizuno Kabushiki Kaisha Corporation and

Mizuno USA, Inc. v. Henry Chan, WIPO Case

No. D2004-0255 (June 9, 2004), and so does this Panel.

For these reasons, the Panel concludes that the bad faith element of the Policy

is satisfied.

7. Decision

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

Steven Auvil

Sole Panelist

Dated: March 29, 2006