Radio & Records, Inc. v. National Voiceover c/o Jeff Bordner
Claim Number: FA0603000665235
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 National Voiceover c/o Jeff Bordner (“Respondent”), 1789 E, Sandy, UT 84092.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <radioandrecordsmagazine.com>, registered with Go Daddy Software, 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.
Honorable Paul A. Dorf (Ret.) 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 24, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <radioandrecordsmagazine.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 17, 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@radioandrecordsmagazine.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 24, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <radioandrecordsmagazine.com> domain name is confusingly similar to Complainant’s RADIO & RECORDS mark.
2. Respondent does not have any rights or legitimate interests in the <radioandrecordsmagazine.com> domain name.
3. Respondent registered and used the <radioandrecordsmagazine.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 <radioandrecordsmagazine.com> domain name on March 16, 2005. Internet users who access this domain name are directed to a commercial website offering professional voiceover services for radio and television commercials and motion picture trailers.
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 has established rights in the RADIO & RECORDS mark, pursuant to Policy ¶ 4(a)(i), through registration of the mark with the USPTO. See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <radioandrecordsmagazine.com> domain name incorporates Complainant’s RADIO & RECORDS mark without the ampersand and the spaces between the terms, and with the additions of the terms “and” and “magazine” 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 <radioandrecordsmagazine.com> domain name is confusingly similar to Complainant’s RADIO & RECORDS mark pursuant to Policy ¶ 4(a)(i). See Planned Parenthood Fed’n of Am. v. Bucci, 42 U.S.P.Q. 2d 1430 (S.D.N.Y. 1997), cert. denied 525 U.S. 834 (1998) (finding plaintiff’s PLANNED PARENTHOOD mark and defendant’s <plannedparenthood.com> domain name nearly identical). 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 Panel notes that the term “magazine” bears an obvious and direct relationship to Complainant, a magazine publisher. Therefore, the addition of the term “magazine” does not negate the confusing similarity of Respondent’s domain name to Complainant’s mark. See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain name <marriott-hotel.com> is confusingly similar to the complainant’s MARRIOTT mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), the burden shifts to Respondent to prove that it has rights or legitimate interests in the <radioandrecordsmagazine.com> domain name once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in it. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Because Complainant has presented a prima facie case, and Respondent has failed to respond to the Complaint, the Panel will consider whether the evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent uses the <radioandrecordsmagazine.com> domain name, which is confusingly similar to Complainant’s RADIO & RECORDS mark, to redirect Internet users to a website offering commercial voiceover services to the television, radio, and movie industries. Such use of the <radioandrecordsmagazine.com> domain name to market Respondent’s services is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The WHOIS database entry for the <radioandrecordsmagazine.com> domain name shows that Respondent registered this domain name under the name “Jeff Bordner”, and there is no evidence that Respondent has ever been commonly known by the <radioandrecordsmagazine.com> domain name. Complainant states that there is no relationship between it and Respondent, and that Complainant has not authorized Respondent to register the disputed domain name. Thus, the Panel finds that Respondent has no rights or legitimate interests in this domain name under 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 <radioandrecordsmagazine.com> domain name, which is confusingly similar to Complainant’s RADIO & RECORDS mark, redirects Internet users to a commercial website offering services unrelated to Complainant’s magazine. The Panel infers that Respondent benefits from misleading Internet users in this fashion by diverting Internet users seeking Complainant’s website to Respondent’s own website, presumably in order to generate more business from the increased Internet traffic. Use of the disputed domain name for this purpose constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
The Panel determines that, because Respondent is in the U.S., Respondent had constructive notice of Complainant’s rights in the RADIO & RECORDS mark by virtue of Complainant’s registration of the mark with the USPTO. See 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.”). The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well. Complainant’s Radio & Records Magazine is a leading business journal covering an industry towards which Respondent’s services are marketed. Moreover, Respondent’s inclusion of the term “magazine” in its domain name, despite the fact that Respondent does not appear to be involved in the publication or sale of magazines, further implies that Respondent was capitalizing on Complainant’s mark, which is used in the title of a magazine. Therefore, the Panel finds that Respondent registered the <radioandrecordsmagazine.com> domain name despite having constructive and actual notice of Complainant’s rights in the RADIO & RECORDS mark. 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 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 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 <radioandrecordsmagazine.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf ,(Ret.), Panelist
Dated: May 9, 2006
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