Kenneth Pushkin v. Lee Arnold
Claim Number: FA0507000508530
PARTIES
Complainant
is Kenneth Pushkin (“Complainant”),
represented by Lindsey S. Feldman of Berger Kahn, 4215
Glencoe Avenue, 2nd Floor, Marina del Ray, California 90292. Respondent is Lee Arnold (“Respondent”), 6944 N. Port Washington Rd., Milwaukee,
Wisconsin 53217.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <radiofreeamerica.com>,
registered with Dotster.
PANEL
The
undersigned certify that they have acted independently and impartially and that
to the best of their knowledge they have no known conflict in serving as
Panelist in this proceeding. Hon. Irving H. Perluss (Ret.), Terry F. Peppard,
Esq., and Hon. Carolyn Marks Johnson sit as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically July 5,
2005; the National Arbitration Forum received a hard copy of the Complaint July
5, 2005.
On
July 5, 2005, Dotster confirmed by e-mail to the National Arbitration Forum
that the domain name <radiofreeamerica.com>
is registered with Dotster and that the Respondent is the current registrant of
the name. Dotster verified that
Respondent is bound by the Dotster registration agreement and thereby has
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
July 8, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 28,
2005, 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@radiofreeamerica.com by e-mail.
A
timely Response was received and determined to be complete July 28, 2005.
An
additional submission was received and determined to be complete July 29,
2005.
On August 3, 2005, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed the above Panel, Hon. Irving H. Perluss (Ret.), Terry F.
Peppard, Esq., and Hon. Carolyn Marks Johnson to sit as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
1. Respondent registered a domain name that
is identical to or confusingly similar to Complainant’s protected mark.
2. Respondent has no rights to or legitimate
interests in the mark contained within the disputed domain name.
3. Respondent registered and passively held
the domain name in bad faith.
B. Respondent noted the following in
Response:
1. Complainant had abandoned the protected
mark by non-use.
2. Respondent had established rights in the
disputed domain name by plans to make use of it and by actual use.
3. Respondent did not act in bad faith.
C. Additional Submissions:
1. Complainant alleged as follows:
a. Respondent provided no proof to support use.
b. Respondent misstated the allegations
about Complainant’s cease and desist letter and attempt to resolve the dispute
prior to filing a claim.
2. Respondent responded as follows:
a. Respondent used the site for political
commentary from May 1998 until July 2002.
b. Complainant abandoned the mark by non-use
according to the law.
FINDINGS
Complainant established by extrinsic
proof that it registered the RADIO FREE AMERICA mark with the United States
Patent Office (Reg. No. 1,288,272, granted July 31, 1984; and Reg. No.
1,283,118, granted June 26, 1984).
Respondent registered the
RADIOFREEAMERICA.COM domain name March 24, 1998, some fourteen years after
Complainant perfected his rights in the mark.
The issue of abandonment of a trademark
is beyond the jurisdiction and discretion of the ICANN panel.
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 Complainant to 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)
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
established rights in the RADIO FREE AMERICA mark through registration with the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,288,272 issued
July 31,1984). See Vivendi Universal
Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”); see also Innomed Techs.,
Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's
rights in the mark.”).
The
domain name that Respondent registered, <radiofreeamerica.com>, is
identical to Complainant’s RADIO FREE AMERICA mark pursuant to Policy ¶
4(a)(i), as the domain name fully incorporates the mark and merely adds the
generic top-level domain “.com.” See
Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar).
Respondent’s
challenge of Complainant's rights in the RADIO FREE AMERICA mark is based
on surrender of rights by nonuse of the mark for twenty years. In fact,
Complainant has maintained a valid registration for the RADIO FREE
AMERICA mark with the USPTO since 1984, and it is not within this Panel's authority
or discretion to consider a challenge of the validity of this registered
mark. See U.S. Office of
Pers. Mgmt. v. MS Tech. Inc., FA 198898
(Nat. Arb. Forum Dec. 9, 2003) ("[O]nce the USPTO has made a determination
that a mark is registrable, by so issuing a registration, as indeed was the
case here, an ICANN panel is not empowered to nor should it disturb that
determination.").
Furthermore,
Respondent's addition of the top-level domain ".com" does not
distinguish the <radiofreeamerica.com> domain name from
Complainant's RADIO FREE AMERICA mark. Although Respondent's failure
to prove 4(a)(i) is not fatal, Respondent still must prove rights under one of
the other two elements of the policy to defeat Complainant's claim. Respondent
has not done so. See VeriSign
Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) ("Complainant
still must establish a prima facie case showing that under the Uniform Domain
Name Dispute Resolution Policy it is entitled to a transfer of the domain
name.").
The
Panel finds that Complainant satisfied the requirements of ICANN
Policy ¶ 4(a)(i) to show “confusing similarity.”
Complainant
established its rights to and legitimate interests in the mark using extrinsic
proof in this proceeding. Complainant
alleges that Respondent lacks such rights and interests. Where Complainant makes this prima facie
showing, the burden shifts to Respondent to come forward with proof of rights
and interests. On the face of the
documents, the Panel finds that Complainant established rights and interests in
the mark and that Respondent has not done so.
Respondent is not commonly known by the <radiofreeamerica.com> domain
name and Respondent has not established to the Panel’s satisfaction that it has
interests in the mark that is contained in its entirety within the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where respondent was not commonly known by the mark and
never applied for a license or permission from complainant to use the
trademarked name); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb.
Forum Aug. 29, 2000) (finding that the respondent has no rights or legitimate
interests in domain names because it is not commonly known by the complainant’s
marks and the respondent has not used the domain names in connection with a bona
fide offering of goods and services or for a legitimate noncommercial or
fair use).
Complainant contends that Respondent made
no use of the disputed domain name that contains Complainant’s protected mark
and that the domain name <radiofreeamerica.com> does not currently
resolve to an active website. Complainant
also urges that the website has been under construction for at least three
years. Respondent asserted in its
additional submission that it has made such use and offered the statements of
others to support that contention. The
Panel finds that Respondent did not prove use to the Panel’s satisfaction. Respondent did not show use in connection
with a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and did not show a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000)
(finding no rights or legitimate interests in the domain name where there is no
proof that the respondent made preparations to use the domain name or one like
it in connection with a bona fide offering of goods and services before
notice of the domain name dispute, the domain name did not resolve to a
website, and the respondent is not commonly known by the domain name); see
also Hewlett-Packard Co. v. Rayne, FA 101465 (Nat. Arb. Forum Dec. 17, 2001) (finding the
“under construction” page, hosted at the disputed domain name, did not support
a claim of right or legitimate interest under Policy ¶ 4(a)(ii)).
Respondent
contends that Complainant failed to meet its burden in proving that Respondent
lacks rights and legitimate interests because Complainant failed to point to
particular facts and circumstances supporting its allegations. There are cases supporting this
contention. See Lush LTD v. Lush
Environs, FA 96217 (Nat. Arb. Forum Jan. 13, 2001) (finding that even when
the respondent does file a response, the complainant must allege facts, which
if true, would establish that the respondent does not have any rights or
legitimate interests in the disputed domain name); see also Graman USA Inc.
v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003)
(finding that absent a showing of any facts by the complainant that establish
the respondent lacks rights or legitimate interests in the disputed domain
name, the panel may decline to transfer the disputed domain name). Complainant proved its rights to and
legitimate interests in the mark that Respondent wrongfully registered in a
domain name; Respondent has not made a showing or right or any bona fide
or legitimate use that would justify that appropriation of Complainant’s mark.
Respondent
also argues that it has rights and legitimate interests in the <radiofreeamerica.com>
domain name pursuant to Policy ¶ 4(c)(iii) because it previously used the
domain name in connection with a legitimate noncommercial or fair use. See Lockheed
Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that
the respondent has rights in the <missionsuccess.net> domain name where
she was using the domain name in connection with a noncommercial purpose); see
also Baja Marine Corp. v. Wheeler
Techs., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that the
respondent has rights and legitimate interests in the domain name where the
respondent made a non-commercial use of <bajaboats.com> and received no
funds from users of the site connected to the domain name). The only evidence to support Respondent’s
contention that Respondent has rights and legitimate interests in the <radiofreeamerica.com>
domain name pursuant to Policy ¶ 4(a)(ii) is Respondent’s argument that
Respondent has been seeking to develop a cost effective way of returning to
radio airways during this three years and that after it does so, Respondent
will establish a functioning website. See
SFX Entm’t., Inc. v. Cushway,
D2000-0356 (WIPO July 10, 2000) (finding that the respondent had rights and
legitimate interests in the domain name where he began demonstrable
preparations to use the domain name in connection with a bona fide
offering of goods or services); see also Genting Berhad v. Tan Kim Sin, FA 94735 (Nat. Arb. Forum June 28,
2000) (finding that the respondent had legitimate interests in the domain name
where the respondent had made preparations to use the domain for his newly
formed business). This contention
constitutes an admission by Respondent that supports Complainant’s allegation
of nonuse. Respondent offered no proof
to support any work done or monies expended in the effort to develop the site.
The Panel finds that Complainant satisfied the
requirement of ICANN Policy ¶ 4(a)(ii) to show that it has rights and
legitimate interests in the registered mark used by Respondent in filing a
domain name and that Respondent has no such “rights or legitimate interests.”
Complainant
contends that Respondent registered and used the <radiofreeamerica.com> domain
name in bad faith pursuant to Policy ¶ 4(b)(iii) and that Respondent registered
the disputed domain name to disrupt Complainant’s business. See S. Exposure v. S. Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that Respondent registered
the domain name in question to disrupt the business of the complainant, a
competitor of the respondent); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding domain names are registered and used in bad
faith where Respondent and Complainant are in the same line of business in the
same market area).
Complainant
also alleges that Respondent registered and used the disputed domain name in
bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has passively held
the disputed domain name for at least three years. See Mondich v. Brown,
D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to
develop its website in a two year period raises the inference of registration
in bad faith); see also Google Inc. v. Jon G., FA 106084 (Nat. Arb.
Forum Apr. 26, 2002) ("Respondent's unsupported statement that a
potentially legitimate [genealogy] website will be coming soon will not suffice
to demonstrate rights or interests under Policy ¶ 4(a)(ii)" where the
respondent provided no evidence that it actually planned to host a genealogy
site and misspelled the only instance of the word "genealogy" on its
website).
The
Panel finds that Respondent registered the disputed domain name with actual or
constructive knowledge of Complainant’s rights in the RADIO FREE AMERICA mark
due to Complainant’s registration of the mark with the USPTO. Registration of a domain name identical to a
mark despite actual or constructive knowledge of another’s rights in the mark
is evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively.”); see also
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) ("Where an alleged infringer chooses a mark he knows to be similar
to another, one can infer an intent to confuse."); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
Since
the Panel has found that Respondent lacks rights to or legitimate interests in
the disputed <radiofreeamerica.com> domain name pursuant to Policy
¶ 4(a)(ii) and that Respondent knowingly registered the mark of another, the
Panel does not accept Respondent’s arguments that it did not register or use
the domain name in bad faith.
The Panel finds that Complainant satisfied the
requirements of ICANN Policy ¶ 4(a)
(iii) to show “bad faith registration and use.”
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 <radiofreeamerica.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panel Chair
Hon. Irving H. Perluss (Ret.) & Terry F. Peppard,
Esq., Panelists
Dated: August 12, 2005
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