David Cradick d/b/a Kidd Kraddick v.
Overseas Concepts International
Claim Number: FA0210000128643
Complainant
is David Cradick d/b/a Kidd Kraddick, Chicago, IL, USA (“Complainant”) represented by Claudia Werner, of Leydig Voit & Mayer Ltd.
Respondent is Overseas Concepts
International, Cayman Islands, BWI (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <kiddkraddick.com>,
registered with Parava Networks, Ltd.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
G.
Gervaise Davis III, Esq. as sole Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on October 17, 2002; the Forum received a hard copy of the
Complaint on October 18, 2002.
On
October 23, 2002, Parava Networks, Ltd. confirmed by e-mail to the Forum that
the domain name <kiddkraddick.com>
is registered with Parava Networks, Ltd. and that the Respondent is the current
registrant of the name. Parava
Networks, Ltd. has verified that Respondent is bound by the Parava Networks,
Ltd. 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 24, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 13, 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@kiddkraddick.com by
e-mail.
A
late Response was received and determined to be complete on November 25, 2002.
On December 9, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed G. Gervaise
Davis III, Esq. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant’s
attorney represents that David Cradick is a radio deejay whose moniker appears
to be “Kidd Kraddick” and whose radio program is known as “Kidd Kraddick in the
Morning.” Presumably, this is a
stylized name based on his formal name, although the Complaint provides no
background on this issue. Complainant
bases the Complaint on his use since 1978 of the radio deejay name “Kidd
Kraddick” and on the name of his morning radio show, “Kidd Kraddick in the
Morning,” which is broadcast around the country over various radio stations. David Cradick also uses his “Kidd Kraddick”
moniker in connection with a website at <kiddlive.com>. The Complaint has
no declaration from Cradick and relies entirely on the allegations of the
attorney and the exhibits attached, all of which were considered in reaching
this Decision. (There is a short declaration by an associate of the law firm on
other issues, not deemed by the Panel to be particularly relevant to the main
facts of this case. It would have been
helpful to the Panel to have some hard evidence in the form of a declaration
from the actual party in interest.)
Continuously
since at least as early as 1978, Complainant has used the name “Kidd Kraddick”
to distinguish his morning radio broadcasting show, “Kidd Kraddick in the
Morning”, from other morning radio shows with similar formats. Complainant has invested extensively in
creating, maintaining, and promoting goodwill associated with his “Kidd
Kraddick” deejay name as well as with his “Kidd Kraddick in the Morning” radio show. Complainant has spent considerable time and
money advertising and promoting the radio show by extensively using the mark
“Kidd Kraddick” on material, including but not limited to, jackets, long sleeve
and short sleeve t-shirts, golf shirts, boxer shorts, mugs, mousepads, hats,
bags, and its general website at <kiddlive.com>. As a three-time winner of the Billboard
Magazine, “Air Personality of the Year”, 1992 and 1997 AWRO “Air
Personality of the Year”, the distinguished Marconi Award for “Radio
Personality of the Year” and winner of the first annual 1999 WB Radio Music
Awards as the “Best Radio Personality in the Country”, and the winner of the
2001 “Radio and Records CHR/Pop Personality/Show of the Year,” he has dedicated
himself not only to a successful radio career, but also to fundraisers and to
special events.
As
a result of Complainant’s advertising and promotional efforts under his radio
deejay name “Kidd Kraddick”, as well as his charitable efforts in providing
chronically ill and/or physically challenged children with an adventure to
Disney World in Florida, Complainant’s KIDD KRADDICK and KIDD’S KIDS marks are
favorably recognized and relied upon by the relevant industry and the consuming
public as indicating high quality radio broadcasting services as well as
philanthropic services originating exclusively from Complainant and its
affiliate radio stations. Due to such
efforts, Complainant’s mark has earned very valuable goodwill and is well known
throughout the United States. In order
to protect this asset, Complainant has filed a federal trademark application
with the United States Patent and Trademark Office for the mark KIDD KRADDICK,
Serial No. 78/171,519, (but only on October 2, 2002, according to Respondent).
The application has not ripened into a registration at this time.
On
June 17, 2002, Russ Martin, a competitor radio deejay, reserved the domain
name, <kiddkraddick.com>.
Accordingly, long after Complainant had been using the name as his radio
deejay personality, Russ Martin, without any authorization from Complainant,
began utilizing the domain name <kiddkraddick.com>. On September 26, 2002, Complainant’s
attorney accessed Respondent’s website located at <kiddkraddick.com>. The website displayed a page that compared
Complainant to a type of bird, namely, a Bushtit. The website listed many false and disparaging statements about
Complainant’s radio personality “Kidd Kraddick” in an attempt to ridicule
Complainant and his morning radio show.
However, consumers accessing Respondent’s website not only were led to
believe that Complainant was affiliated with this website due to use of
Complainant’s radio deejay name as the exact domain name, but they were also
confused into believing that Complainant supported the statements maligning him
and his morning radio show. In fact,
what likely led to even more confusion, was the fact that Complainant’s
likeness was pictured on Respondent’s web page, exactly as found on
Complainant’s website at <kiddkraddick.com>. Russ Martin, Complainant’s competitor, even
called attention to the disparaging website containing the “Bushtit” comparison
during his own radio show.
On
or about October 1, 2002, one of Complainant’s representatives complained to
Russ Martin’s employer about the disparaging website. Then, on October 8, 2002, Complainant’s attorney discovered that
even though the domain name registration was not even near expiration, it had
been transferred to a different Registrar and alleged owner, namely Parava
Networks, owned by “Overseas Concepts International, Registration Department,
POB1345, Georgetown, KY, BWI,” in the country “KY”, which Complainant believes
may be affiliated with Russ Martin as it also contained material which may be
viewed as tarnishing Complainant’s reputation.
The website contained revealing pictures of “Big Beautiful Women.” On October 15, 2002, one of Complainant’s
representatives talked to Russ Martin’s general manager about the new content
of the still disparaging website. By
October 16, 2002, the website was not up anymore.
Undoubtedly,
confusion is likely in that Respondent’s domain name <kiddkraddick.com>
is identical in spelling, sight, sound, and commercial impression to
Complainant’s long established radio deejay name and virtually identical to the
name of Complainant’s morning radio show.
The use of Complainant’s likeness, the same as found on Complainant’s
website, also leads to confusion.
Further, it is likely that consumers will enter the domain name when
looking for the website of Complainant.
A
side-by-side comparison of Complainant’s KIDD KRADDICK mark and the domain name
at issue shows they are identical.
Therefore, registration and use of the domain name by Respondent will
result in consumer confusion as to source and tarnishment of Complainant’s
mark.
Complainant
contends that the initial registrant of the domain name had no interest in or
right to use the name, and no permission from Complainant, citing a number of
prior decisions and the above facts.
Complainant
also alleges the necessary conclusions of law, based on the foregoing facts, to
show that the registration and the use of the domain name was in bad faith, and
suggests, without much evidence that the subsequent transfer of the domain was
also done in bad faith to avoid the transfer of the domain to Complainant and to
hide the identity of the present owner(s).
It is further alleges that Complainant believes that Respondent does not
actually exist, since there are discrepancies in the contact information of the
current registrant.
Due
to the use of this alleged false information, and the fact that the original
registrant, Russ Martin, immediately transferred the domain name upon being
contacted by Complainant, Complainant argues that Respondent and the original
registrant may be one in the same, or at the very least related. Russ Martin is a competitor of Complainant’s
and had initially posted the website at <kiddkraddick.com>, which
ridiculed and disparaged Complainant.
Nonetheless, even if Respondent is not connected to the original
registrant, and further, even if Respondent is an actual entity with correct
contact information, Complainant asserts that the use of its long-established
radio deejay name as a domain name representing no legitimate business interest
in any product or service constitutes bad faith on the part of Respondent.
In
summation, Complainant owns common law rights in the mark KIDD KRADDICK and
KIDD KRADDICK IN THE MORNING.
Complainant has used this mark in commerce and commercial enterprises
for over 20 years. Respondent
nonetheless registered a domain name identical to Complainant’s coined name and
mark, without rights or a legitimate interest in the mark or the domain name,
and has acted in bad faith according to Policy paragraph 4(b).
B.
Respondent
A
Response was filed more than ten days late, in the form of a letter and not
electronically, by Overseas Concepts International, which Response under the
UDRP Rules need not be considered by the Panel. Nonetheless, in the interest of fairness, the Panel did consider
the allegations and statements contained in the document dated October 24,
2002, and sent to the National Arbitration Forum’s Case Manager. A short summary of the allegations and
argument in this letter is set out below.
Respondent
alleges, without explaining who this organization actually is or what
relationship it has to the proposed user, that Respondent’s interest in the
domain name is “that of a musical artist bearing the stage name Kidd
Kraddick.” It does not further identify
such artist, how the name is proposed to be used, other than for a website, and
states that it “is not our intent to tarnish the reputation of or in any way
disparage the Complainant.” It argues that it has a right to use the domain for
this purpose, yet Respondent provides no information or background on how it
came to own the domain or how or why it was transferred to the present
registrant. It also leaves hanging and
unanswered why there was, briefly, some totally irrelevant content on the
website relating to “Betsy – The Supersized BBW” and photos, which was taken
down when objections were made to agents of Russ Martin, the competitive
deejay. In the view of this Panel, such events weigh heavily against the good
faith of Respondent.
Respondent
states that the present registrant is “neither related to nor affiliated with
Russ Martin,” the competitive deejay, and denies any knowledge of his
intentions or conduct in the earlier web pages described in the Complaint. Respondent then devotes most of the rest of
the Response to a discussion of why there were errors in the registration
information and questions whether Complainant has a trademark on the name
“KiddKraddick” and how long he has actually used the name and mark.
Other
than the consideration of the trademark issues in the discussion below, the
Panel deems most of this discussion of little value in determining the outcome
of this case, and accordingly finds no need to set forth the arguments or other
facts here. Suffice it to say that
Respondent’s cursory, late response is not particularly helpful to the Panel in
determining what actually happened here.
The Response also appears evasive in that it fails to identify any
legitimate reason for the transfer other than use by the unidentified “musical
artist” with the same name. For this
reason, the Panel, while taking Respondent’s comments into consideration, must
rely almost entirely on the facts alleged by Complainant, and apply its own
conclusions and reasoning in reaching a decision.
FINDINGS
While Complainant does not do a
particularly skillful job of alleging the existence of a common law trademark
or legal right in the fanciful name of the complaining deejay, the Panel finds
that Complainant appears to have an arguable case for the equivalent of a
common law mark in this name. The Panel
accordingly finds that the radio persona established and the domain name <kiddkraddick.com>
are substantially identical.
Established decisional law ignores the “.com” extension as
irrelevant. The reasoning for this
finding is discussed below in more detail.
Since the original owner of the domain
name, Russ Martin, is not a party to this proceeding, the Panel can only infer
from the insults and poor taste of the content of the web pages while under his
control, that the original registrant had no legitimate interest in or right to
register or use the domain name at issue.
Quite clearly it was not his name and he had no legal reason to use it
in the manner that he did.
It would appear from the content of the
web pages that the purpose of registering and using the domain was to taunt
Complainant and insult him. This
establishes the requisite bad faith registration and use by Martin.
Given the late and inadequate Response
from the present apparent owner of the domain, it would also appear that it,
too, has no legitimate interest in the registration and use of the name,
although this is less certain. However,
since Respondent chose to provide the Panel with no more information than that
mentioned above, the consequence is that the Panel assumes that if Respondent
had a legitimate reason, it would have provided it to the Panel. Furthermore, since the domain is not in
present use, the Panel can only look to past use, which was clearly in bad
faith. Had Respondent explained how it
came to be the present owner of the domain and more about its future use, the
result might have been different.
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
As stated in the Findings, the name of
Complainant’s persona and his radio show and the domain are substantially
similar. There is little point in
discussing this further, except as to the need for a registered or common law
mark for Complainant to prevail.
Complainant fails to explain why if this
were such a valuable mark that no registration was ever made over more than 25
years until a few days before the filing this Complaint. Moreover, as
Respondent argues, an application for a trademark registration is not
conclusive evidence that the applicant is the owner of the mark. However, Complainant correctly points out
that there is a line of cases, which hold that famous or well known performers
or actors and actresses may have a sufficiently legitimate claim to a screen
name that it constitutes the equivalent of a common law mark. In the judgment of the Panel what saves
Complainant on this critical issue is that the moniker used by the deejay is
not precisely the same spelling of his name, and it is therefore clearly a
public persona and thereby protectible under these cases. See, for example, Julia Fiona Roberts v.
Russell Boyd, (WIPO Case No. D2000-0210, May 29, 2000) (Panel found that
actress, Julia Roberts, had common law trademark rights in her name and ordered
transfer of domain <juliaroberts.com>).
There are many cases to the contrary where the name is merely that of a
person in the public eye, and has not reached the level of a property
right. See Friends of Kathleen
Kennedy-Townsend v. B.G. Birt, D2002-0451 (WIPO July 31, 2002); see also
Kennedy-Townsend v. B.G. Birt, D2002-0030 (WIPO April 11, 2002). Furthermore, WIPO Reports make clear that
the UDRP is not normally directed at protecting personal names, as such, and
that normally a trademark must be established. The Panel, however, believes
that Complainant here meets the Roberts test.
Rights or Legitimate Interests
On the facts asserted and shown by
exhibits to the Complaint, Russ Martin, the competitor did not have any right
or legitimate interest in this domain name. The evidence conclusively
establishes both a lack of legitimate interest and bad faith registration and
use by an apparent competitor. This is
a specified basis for ruling for transfer in the UDRP.
Moreover, Respondent is the transferee of
Martin and has chosen not to explain how it happens to be the present owner of
the domain name by transfer. For this reason, the Panel feels that the only
equitable manner of dealing with this situation is to rule that as Respondent
failed to provide any reasonable explanation of what actually happened, it must
bear the brunt of its failure of proof.
For purposes of this decision only, the Panel concludes that Respondent
transferee has not established any legitimate interest in the domain. Had it provided any identification or other
facts concerning the illusory musical artist for whom it acquired the domain,
the conclusion might be different.
However, the Panel wants to make certain
that this is decision is not considered a finding or conclusion that all
transferees are necessarily bound by the conduct and facts of their
predecessor(s). It is only that in this
case, since the transferee chose not to disclose the facts of the transfer, we
simply have to assume that the actual facts would have been adverse to its
position. The Panel recognizes that in many
cases, a complainant might not prevail if the transferee could establish that
it was truly not associated with the prior registrant and had a legitimate
reason for acquiring the domain. This
Panel is unwilling to accept a casual statement, unaccompanied by a declaration
by the true party in interest or more facts, as was the case here, as evidence
of legitimacy and good faith.
Registration and Use in Bad Faith
As noted in the prior section, there is
ample evidence of bad faith registration and use of the domain name by Russ
Martin, the competitor, sufficient to find for Complainant on this issue. The failure of the successor registrant to
explain its relationship is also sufficiently tainted, by its lack of candor,
for the Panel to conclude that it, too, was acting in bad faith in this matter,
both in acquiring it and in its use or lack of use of the domain.
DECISION
Based on the foregoing discussion and
facts, the Registrar is directed to TRANSFER the domain name <kiddkraddick.com>
to Complainant, forthwith, in accordance with the UDRP Rules and Policy.
G. Gervaise Davis III, Esq., Panelist
Dated: December 31, 2002
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