Radio & Records, Inc. v. Jucco Holdings c/o Admin
Claim Number: FA0603000665108
Complainant is Radio & Records, Inc. (“Complainant”), represented by Stephen J. Strauss, of Fulwider Patton LLP, 6060 Center Drive, Tenth Floor, Los Angeles, CA 90045. Respondent is Jucco Holdings c/o Admin (“Respondent”), 655 Flower St. #337, Los Angeles, CA 90017.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <radioandrecord.com>, registered with Nameking.com, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2006.
On March 28, 2006, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <radioandrecord.com> domain name is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, Inc. 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 March 31, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 20, 2006 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@radioandrecord.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <radioandrecord.com> domain name is confusingly similar to Complainant’s RADIO & RECORDS mark.
2. Respondent does not have any rights or legitimate interests in the <radioandrecord.com> domain name.
3. Respondent registered and used the <radioandrecord.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Radio & Records, Inc., is the publisher of Radio & Records Magazine. Since its first issue in 1973, Radio & Records Magazine has become one of the leading business journals covering the radio, music and entertainment industries in the United States and the world. Complainant has registered the RADIO & RECORDS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,149,767 issued March 31, 1981) and operates a website in connection with its magazine at the <radioandrecords.com> domain name, which it registered on May 17, 1998.
Respondent registered the <radioandrecord.com> domain name on November 6, 2002. Since Respondent acquired the registration of the <radioandrecord.com> domain name, the domain name has been linked to an inactive website.
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."
In view of Respondent's failure to submit a response, the Panel shall 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant, by registering the RADIO & RECORDS mark with the USPTO, has established rights in this mark pursuant to Policy ¶ 4(a)(i). 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 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.”).
Respondent’s <radioandrecord.com> domain name
incorporates Complainant’s RADIO & RECORDS mark without the ampersand, the
letter “s” and the spaces between the terms, and with the additions of the term
“and” and the top-level domain “.com.”
The removal of spaces from Complainant’s mark and the addition of a
top-level domain to Complainant’s mark do not negate the fact that Respondent’s
<radioandrecord.com> domain name is confusingly similar to
Complainant’s RADIO & RECORDS mark pursuant to Policy ¶ 4(a)(i). See Hannover Ruckversicherungs-AG
v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding
<hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
Similarly, because ampersands are not permissible characters in Internet
domain names, the removal of the ampersand from Complainant’s mark, and the
addition of the term “and” in its place, do not distinguish the disputed domain
name from Complainant’s mark. See
Wright & Lato, Inc. v. Epstein, D2000-0621 (WIPO Sept. 2, 2000) (finding that
the <wrightandlato.com> domain name is identical to the complainant’s
WRIGHT & LATO mark, because the ampersand symbol (&) is not
reproducible in a URL). Finally, the
omission of a single letter from Complainant’s mark also fails to adequately
distinguish Respondent’s domain name from the mark. See Victoria's Secret v. Internet Inv. Firm
Trust, FA 94344 (Nat. Arb. Forum May 9, 2000)
(finding the domain name <victoriasecret.com> to be confusingly similar
to the complainant’s trademark, VICTORIA’S SECRET).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and will consider whether the evaluation of the evidence presented demonstrates rights or legitimate interests under Policy ¶ 4(c).
The <radioandrecord.com> domain name is not currently linked to an active website, and Complainant asserts that Respondent has made no demonstrable preparations to use the domain name. Respondent’s nonuse of the disputed domain name for over three years does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). 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 Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
Complainant states that it has no relationship with Respondent. Furthermore, there is no evidence on record that Respondent is commonly known by the <radioandrecord.com> domain name or licensed to use the RADIO & RECORDS mark. Thus, Respondent has not established rights or legitimate interests in the <radioandrecord.com> name pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <radioandrecord.com> domain name, which is confusingly similar to Complainant’s well-known RADIO & RECORDS mark, directs Internet users to an inactive website. The panel interprets Respondent’s passive holding of the disputed domain name as evidence that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) the respondent knew or should have known of the complainant’s famous GALLO marks and (2) the respondent made no use of the domain name <winegallo.com>); see also TV Globo Ltda. v. Globoesportes.com, D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith where (1) the domain name in dispute is obviously connected with a well-known mark, (2) the respondent deliberately chose a domain name which is the mark of the largest TV operator in the world’s largest Portuguese speaking country, and (3) the respondent failed to develop the site).
While the circumstances listed under Policy ¶ 4(b) are examples of bad faith registration and use, the Panel is permitted to consider other factors in determining whether Respondent registered and used the disputed domain name in bad faith. See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith). The Panel determines that, because both Complainant and Respondent are in the United States, Respondent had constructive notice of Complainant’s rights in the RADIO & RECORDS mark through Complainant’s registration of the mark with the USPTO at the time Respondent registered the disputed domain name. See Victoria’s Cyber Secret Ltd. v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072). Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is further evidence of bad faith registration and use under 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).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <radioandrecord.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 9, 2006
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