Broadcasting Board of Governors v. Voice Of America
Claim Number: FA1111001414846
Complainant is Broadcasting Board of Governors (“Complainant”), represented by David Ruddy of Department of Justice, Civil Division, Washington, D.C., USA. Respondent is Voice Of America (“Respondent”), Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thevoiceofamerica.com>, registered with Tucows, Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 9, 2011; the National Arbitration Forum received payment on November 9, 2011.
On November 10, 2011, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <thevoiceofamerica.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc.registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@thevoiceofamerica.com. Also on November 10, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 30, 2011.
Complainant’s Additional Submission was received on December 5, 2011, and was deemed to be in compliance with Supplemental Rule 7. Respondent’s Additional Submission was received on December 12, 2011.
On December 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that it is an independent establishment within the Executive branch of the Federal Government. It is responsible for managing all nonmilitary U.S. Government funded international broadcasting, including “The Voice of America”, which is the largest U.S. international broadcaster, reaches an estimated audience of 125 million weekly by radio (shortwave, FM, AM and satellite), television (satellite and cable), and Internet in 44 languages.
The Complainant states that it has used the words "Voice of America" in commerce to identify its broadcasting content since 1942 and that it owns the federally registered service mark for the words “Voice of America”.
According to the Complainant, the Respondent is using the Complainant’s mark without authorization, and is using the website at the disputed domain name to provide links to news content that competes with the news services offered by the Complainant. The Respondent is not a licensee of the Complainant and is not otherwise authorized to use the Complainant’s mark in any way. Moreover, the Respondent has no affiliation with the Complainant, its broadcasts, or its broadcasting services.
The Complainant states that, in April 2011, an attempt was made to negotiate a settlement, but this failed.
Further, says the Complainant, the Respondent’s principal and various entities that he controls, including Voice of America, Inc. have been found liable for a monetary judgment in the US courts. A receiver had been appointed to liquidate the Respondent’s assets.
According to the Complainant, that receiver is the only entity with legal authority to represent Respondent in this proceeding. The Complainant cites UDRP precedents to support its position.
The Complainant alleges that the disputed domain name is confusingly similar to its mark because it incorporates the Complainant’s mark in its entirety and without modification, while merely adding the generic prefix “the” and the generic top-level domain “.com.” The Complainant cites UDRP precedents to support its position.
According to the Complainant, the disputed domain name was initially registered in April 1998. However, search results from the “wayback machine” (http://www.archive.org/web/web.php) reflect that no content appeared on the web at the disputed domain name until sometime between February and April 2004. Since then the disputed domain name has been used to point to a website containing hyperlinks to selected news articles from various well-known commercial news and media content providers. The bottom of the webpage provides that the site’s content “[i]s the opinion of Voice of America, Inc.” The webpage also presents a border with numerous images of corporate icons comprising hyperlinks that resolve to websites providing goods and services of the respective corporations. The page explicitly solicits viewers to patronize the advertised businesses with the message “PLEASE DO BUSINESS WITH THOSE WHO DO BUSINESS WITH US – OUR ADVERTISERS.” Moreover, the site displays an express solicitation for business advertising. Such website advertisements generate profits that accrue to the benefit of the Respondent.
Further, says the Complainant, by posting links to news and media content from commercial providers and publishers, the Respondent’s website effectively markets news content and services that compete with the very services offered by the Complainant. Accordingly, the Respondent’s website constitutes a diversionary use of the Complainant’s mark that diverts Internet users to a website, for the Respondent’s own benefit, which displays links to competing news sources. This does not constitute a bona fide offering for purposes of Policy ¶ 4(c)(i) nor does it constitute a legitimate noncommercial use under Policy ¶ 4(c)(iii), nor does it constitute fair use. The Complainant cites UDRP precedents to support its position.
The Complainant alleges that there is no evidence that the Respondent is commonly known by the contested domain name and that in any case the Respondent’s use of the Complainant’s mark violates various US laws.
The Complainant states that the Respondent's use of the Complainant’s mark is unauthorized. The Respondent has not applied for a license or permission to use the mark.
Further, says the Complainant, the Respondent registered and is using the disputed domain name in bad faith by attempting to "intentionally . . . attract, for commercial gain, Internet users to [its] website", which violates Policy ¶ 4(b)(iv). And this in particular because the Complainant’s mark is famous. The Complainant cites UDRP precedents to support its position.
B. Respondent
The court-appointed receiver states that his job description was to identify and liquidate all assets of Namer, Inc., America First Communications, Inc. and Voice of America, Inc. (which are entities controlled by the Respondent’s principal), but that he did not identify any such assets in the entity Voice of America, Inc. and consequently did not take any actions regarding that entity.
The receiver states that at no point in time did he operate the website at the disputed domain name. He has no factual knowledge of the matters alleged by the Complainant, which apparently relate to the Respondent’s principal acting as an individual. Indeed the receiver is aware of the existence of a sole proprietorship, non-corporate entity, operated by the Respondent’s principal and having the same name as the Respondent. That entity may be the owner of the disputed domain name. In any case, the receiver believes that the disputed domain name is of no intrinsic value and would likely be impossible to sell.
The Respondent states that indeed he is an individual doing business as the Respondent. The court-appointed receiver has no control over his personal assets. The Respondent is a different entity from Voice of America, Inc. Therefore the court-appointed receiver has no standing in the present case.
The Respondent alleges that the Complaint is improperly and wrongfully filed, as the UDRP came into force after the Respondent acquired the disputed domain name. Thus the Forum does not have legal jurisdiction or legal standing with respect to the disputed domain name.
According to the Respondent, the Complainant first became aware of his use of the name Voice of America in connection with a radio program in February 2000, and indeed wrote a cease and desist letter stating that his use of that name was contrary to existing legislation. The letter stated that the name has been in use since 1942 and subsequent legislation had reiterated Congress’ intent that the name belongs exclusively to the broadcasting service operated by the Complainant.
The Respondent alleges that he responded to that letter and that the Complainant replied stating that the statute of limitations protected his use of the name. Since there was no further objection or action for 12 years, the Complainant has no standing to complain now.
The Respondent states that the Complainant is not “the Voice of America”. The American people are their own voice. The Respondent is an American citizen. The Complainant is the voice of the American government. The term “Voice of America” is a generic term that can be used by anyone who make the claim that they are “the Voice of America”. Trademarks do not prevent those who established and used a similar trade name or service mark prior to the trademark registration date from continuing the use of that established and used name. And indeed the Respondent has used the name Voice of America since 1968, well before the Complainant’s registration of that name.
According to the Respondent, the Complainant mischaracterizes the content of the website at the disputed domain name. There are no links to the Complainant’s website. The Complainant cannot legally claim that other websites cannot compete against it, nor can they prevent any other entity from doing exactly what they are doing, as long as they don’t claim to be the Complainant.
The Respondent alleges that he has been active under the “Voice of America” name since 1977 and that the disputed domain name resolved to a website containing information as early as 1998. News archives were published on that website as of 2000.
Further, says the Respondent, he appeared at public lectures, seminars and on many radio and television programs as “the Voice of America” since 1968. In 1991, he began broadcasting his own radio program under that name. Thus he is commonly known by that name.
The Respondent alleges that the disputed domain name is not confusingly similar to the Complainant’s mark because the mark was registered after the domain name was acquired.
Further, he states that he is making a fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s mark. There are no circumstances of facts supporting a finding of bad faith registration and use under the Policy, in particular because the disputed domain name was registered before the mark existed.
The Respondent requests that the Panel find that the Complainant has attempted to engage in reverse domain-name hijacking.
C. Additional Submissions
In its Additional Submission, the Complainant reiterates that it owns a valid trademark.
Further, it states that, although it did know in 2000 of the Respondent’s use of the name “the Voice of America”, it did not know until recently of the disputed domain name. Indeed, the 2000 letter cited by the Respondent refers only to radio programs, there is no mention of a domain name. Further, even if the Respondent invokes the doctrine of laches, that defense is not available in UDRP proceedings. The Complainant cites UDRP precedents to this effect.
The Complainant reiterates that the “wayback machine” does not show any content for the disputed domain name until 2004.
According to the Complainant, the Respondent’s statement that ownership of the subject domain name lies with him personally is directly contradicted by his own exhibits which list the Registrant as “Voice Of America”. Further, the website at the disputed domain name states that the site’s content is the opinion of “Voice of America, Inc.”
The Complainant reasserts that it first acquired its trademark rights in 1942, so the Respondent cannot claim prior use. And the Complainant reasserts that its mark is famous.
The Complainant alleges that the exhibits provided by the Respondent do not demonstrate that he is commonly known by the disputed domain name, since they clearly reference the Respondent’s now defunct radio program “the Voice of America”, and not the disputed domain name or the Respondent. Further, the Respondent’s use of the Complainant’s mark was and continues to be unauthorized.
The Complainant reiterates that the website at the disputed domain name contains links to competitors of the Complainant and advertising that generates profits for the Respondent.
In his Additional Submission, the Respondent states that the Complainant did not prove any of the required elements of the Policy. The Respondent has proven that he used the name “the Voice of America” openly for over 40 years without objection. Thus he has the right to use this name and the disputed domain name.
The Respondent states that the Forum does not have the legal authority to determine the validity of the Complainant’s mark. Further, he invokes the doctrine of laches.
The Respondent reiterates that he, and not Voice of America, Inc., is the owner of the disputed domain name. In particular, the disclaimer at the bottom of the website at the disputed domain name reads “the opinion of Voice of America”, without “Inc.” at the end.
The Respondent reiterates that the domain name was registered before the establishment of the Complainant’s mark.
According to the Respondent, he has provided evidence that he is commonly known by the disputed domain name. Further, it is perfectly legitimate to provide news content using that domain name.
The Complainant owns a registered mark for the term “Voice of America”. That mark has been used since 1942 and it is famous.
The Respondent has used the name “Voice of America” since 1968, but he was never authorized to use that name nor does he have any license to use the Complainant’s mark.
In 2000, the Complainant requested that the Respondent cease and desist using the name “Voice of America” for his radio broadcasts, stating that such use violated US law. The Respondent did not comply with this request.
The disputed domain name was registered in 1998 and is used to point to a web site containing links to competitors of the Complainant. The web site also contains commercial advertising.
The website at the disputed domain name contains a disclaimer stating that it is “the opinion of Voice of America, Inc.”
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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
Before dealing with those elements, the Panel will first resolve the matter of who is the Respondent in the present case and whether the Respondent is bound by the Policy.
The Complainant argues that the court-appointed receiver should be the Respondent, because the disputed domain name is an asset of Voice of America, Inc., and the receiver has seized all assets of that entity.
The court-appointed receiver states that he did not find any assets belonging to Voice of America, Inc., and that he is aware of the existence of a sole proprietorship, non-corporate entity, operated by the Respondent’s principal and having the same name as the Respondent. That entity may be the owner of the disputed domain name.
The Respondent states that indeed he acquired the disputed domain name as an individual doing business as the Respondent, and he produces a certificate of operation under Assumed Name issued in Texas. That certificate indeed supports the Respondent’s statement, as does the fact that the registrant of the disputed domain name is “Voice of America” and not “Voice of America, Inc.”.
The two entities are not the same, and the owner of the disputed domain name is not the corporation Voice of America, Inc., but rather its principal. It is not disputed that the personal assets of the principal of Voice of America, Inc. were not placed under the control of the court-appointed receiver.
Therefore, the Panel holds that the court-appointed receiver has no standing in the present proceedings and that the Respondent is indeed the principal of Voice of America, Inc., doing business as the Respondent.
The Panel notes that, contrary to what the Respondent states, the disclaimer on the website at the disputed domain name indeed refers to “Voice of America, Inc.”, but it holds that that single element is not sufficient to outweigh the elements outlined above.
The Respondent argues this Panel has no standing to hear the case because the UDRP came into force after the Respondent acquired the disputed domain name.
That argument has already been dismissed by other panels, see for example London Marathon Ltd. v. Websitebrokers Ltd., D2001-0157 (WIPO, April 5, 2001), in which the Panel stated:
The ICANN Uniform Domain Name Dispute Resolution Policy was incorporated by ICANN on October 24, 1999 into the terms on which certain registrations of Internet domain names are effected and held. The Policy, which took effect on January 1, 2000, was intended to affect domain names already registered when the Policy was introduced. As numerous decisions of panels applying the Policy have already held, it achieved that result thanks to the terms in which it had from the outset been couched. The objections to the legal effectiveness of the Policy as regards this complaint are accordingly not sustained.
Consequently, the Panel holds that the Respondent is indeed bound by the Policy and it holds that it does have standing to consider the present case.
On the basis of the evidence presented by the Complainant, the Panel may finds that the Complainant’s rights in the “Voice of America” mark date to its original use of the mark in 1942. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years).
As the Complainant correctly points out, the disputed domain name incorporates its entire mark while removing the spaces, adding the prefix “the,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that such omissions and additions to the Complainant’s mark are not sufficient to render the domain name distinct from Complainant’s mark under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum May 28, 2002) (“[T]he addition of the [article] ‘the’ to the beginning of the domain names fails to make them separate and distinct, as distinguishable from Complainant’s marks.”).
While the Respondent contends that the disputed domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Similarly, it is irrelevant under this element of the Policy whether or not the Respondent has rights in the term “the Voice of America”. That question will be considered below.
The Respondent invokes the doctrine of laches to argue that the Complainant cannot invoke its trademark rights in the present proceedings. As the Complainant correctly points out, laches, being an equitable rather than a contractual remedy, is simply not available under the Policy. Once a Complainant makes a prima facie showing of each of the elements set forth in the Policy, it is entitled to the relief requested under the Policy. See e.g. Office of Personnel Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9 2003) ; see also Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616, (WIPO, Oct. 7, 2002) (the UDRP determination is pursuant to an agreement and is not equitable: "Accordingly, the defense of laches has no application."); see also E.W. Scripps Co. v. Sinologic Indus., D2003-0447, (WIPO, July 1, 2003) ("If the requirements of a valid complaint under the Policy are established, the Policy does not provide any defense of laches.").
Consequently, the Panel finds that the Complainant has satisfied its burden of proof with respect to this element of the Policy.
The Respondent argues that he has rights and a legitimate interest in the disputed domain name because he has been commonly known by the name “Voice of America” for many years, which would satisfy 4(c)(ii) of the Policy.
The Complainant argues that 4(c)(ii) of the Policy refers to having been commonly known by the domain name. The Respondent has indeed been known by the name “Voice of America”, but not by the disputed domain name.
The Panel finds that the Complainant’s interpretation of 4(c)(ii) of the Policy is excessively restrictive. UDRP precedents support the view that, under 4(c)(ii) it may suffice to have been known by a name similar to the disputed domain name, and that it is not necessary to have been known by the domain name per se. See e.g., Fuji Photo Film Co. Ltd. v. Fuji Publ’g Group LLC, D2000-0409 (WIPO, July 2, 2000); see also Penguin Books Ltd. v. Katz Family, D2000-0204 (WIPO, May 20, 2000).
However, those cases must be distinguished from the present case, because in those cases the disputed domain name was used for a purpose that was unrelated to the business of the Complainant.
Such is not the case here. In the present case, the Respondent is using the Complainant’s famous mark for business activities that compete directly with the Respondent. As the Complainant states, such activities no doubt violate various laws and cannot be held to create rights or legitimate interests in the disputed domain name.
Indeed, it is not disputed that the Respondent has used the domain name to host a page that features hyperlinks to selected new articles from various commercial news and media content providers that compete with the Complainant. Further, the Respondent derives advertising revenue from his website, that is, the Respondent is using the domain name to commercially profit from such use, which does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i). Thus the Panel finds that the Respondent’s use of the domain name to host competing news articles and links to news sources in competition with Complainant is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine in competition with the complainant was not a bona fide offering of goods or services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
Consequently, the Panel finds that the Complainant has satisfied its burden of proof with respect to this element of the Policy.
As noted above, the Respondent is using the domain name to provide links to competitors of the Complainant. Therefore, the Panel finds that the Respondent has registered and used the domain name in bad faith under Policy ¶ 4(b)(iii) since it is using the domain name to divert Internet users to competing websites, which disrupts Complainant’s business. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Also as noted above, the Respondent registered and is using the disputed domain name to profit from advertising offered on his web site and thus to profit from Internet users’ confusion as to Complainant’s sponsorship or affiliation with the resolving website. The Panel finds that the Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, the Panel notes that the Respondent has acted in bad faith in the present proceeding by stating that the disclaimer on his web site refers to “Voice of America” when in fact it refers to “Voice of America, Inc.” as stated by the Complainant.
For all these reasons, the Panel finds that the Complainant has satisfied its burden of proof with respect to this element of the Policy.
Reverse Domain Name Hijacking
Since the Panel finds that Complainant has satisfied the elements of the Policy it finds that the Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
The request for a finding of Reverse Domain Name Hijacking is DENIED.
Accordingly, it is Ordered that the <thevoiceofamerica.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 21, 2011
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