Prometheus Global Media, LLC v. Billie Druer / BBRO Radio / Webstarts
Claim Number: FA1203001434285
Complainant is Prometheus Global Media, LLC (“Complainant”), represented by Gene S. Winter of St. Onge Steward Johnston & Reens LLC, Connecticut, USA. Respondent is Billie Druer / BBRO Radio / Webstarts (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue is <billboardradioonline.com>, registered with Brandon Gray Internet Services, Inc. d/b/a Namejuice.com.
The domain name at issue is <thehot100radio.com>, registered with Tucows.com Co.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 13, 2012; the National Arbitration Forum received payment on March 13, 2012.
On March 22, 2012, Brandon Gray Internet Services, Inc. d/b/a Namejuice.com confirmed by e-mail to the National Arbitration Forum that the <billboardradioonline.com> domain name is registered with Brandon Gray Internet Services, Inc. d/b/a Namejuice.com and that Respondent Billy Druer of BBRO Radio is the current registrant of the name. Brandon Gray Internet Services, Inc. d/b/a Namejuice.com has verified that Respondent is bound by the Brandon Gray Internet Services, Inc. d/b/a Namejuice.com 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 March 13, 2012, Tucows.com Co. confirmed by e-mail to the National Arbitration Forum that the <thehot100radio.com> domain name is registered with Tucows.com Co. and that Respondent Webstarts is the current registrant of the name. Tucows.com Co. has verified that Respondent is bound by the Tucows.com Co. 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 April 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2012 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@billboardradioonline.com and postmaster@thehot100radio.com. Also on April 3, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <billboardradioonline.com> and <thehot100radio.com> domain names are confusingly similar to Complainant’s BILLBOARD and HOT 100 marks.
2. Respondent does not have any rights or legitimate interests in the <billboardradioonline.com> and <thehot100radio.com>domain names.
3. Respondent registered and used the <billboardradioonline.com> and <thehot100radio.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its BILLBOARD mark (e.g., Reg. No. 986,949 registered on June 25, 1974), and its HOT 100 mark (e.g., Reg. No. 831,459 registered on July 4, 1967). Complainant also owns trademark registrations with the Canadian Intellectual Property Office (“CIPO”) for its BILLBOARD mark (e.g., Reg. No. 135,798 registered May 15, 1964).
Respondent Billy Druer of BBRO Radio is the registrant of <billboardradioonline.com>. Webstarts is the registrant of <thehot100radio.com>.
Respondent Billy Druer is engaging in passing off by using Complainant’s registered trademark to attract consumers to his website where he provides streaming audio presentations of music.
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.
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.”).
Preliminary Issue: Multiple Respondents
Complainant alleges that the entities that control the domain names at issue are effectively the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent, Billie Druer, and Respondent, Webstarts, are in fact “Shawn Lloyd,” the person listed as the Administrative Contact for the <thehot100radio.com> domain name in the WHOIS information. Complainant states that the Facebook page for “Shawn Llloyd” lists both the <billboardradioonline.com> and <thehot100radio.com> domain names, and that the content found at the websites corresponding to those domain names is similar. Complainant also states that the WHOIS report for each of the disputed domain names reflects an address in Ontario, Canada.
Complainant refers to “cooperative control” of the two disputed domain names and provides similar content at the resolving websites as evidence. However, that does not establish ownership of both domain names by the same person. Complainant does not convincingly establish a connection between Billy Druer and Webstarts, the two listed registrants. Complainant argues that Shawn Lloyd is the common element, but Shawn Lloyd is not the registrant of either domain name and that name does not appear on the resolving websites. The name Shawn Lloyd is connected to both resolving websites only via Facebook, which the Panel finds is not enough to establish the common identity of the registrants of the disputed domain names.
The Panel finds that Complainant has not presented sufficient evidence demonstrating that the listed registrants are the same person or entity. Therefore, the Panel is required to dismiss the Complaint in relation to one of the disputed domain names, pursuant to the National Arbitration Forum’s Supplemental Rule 4(f)(ii), and therefore dismisses the Complaint as it pertains to the <thehot100radio.com> domain name. The remaining analysis pertains to the <billboardradioonline.com> domain name only.
The Panel finds that Complainant has established rights in its BILLBOARD and mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations with the USPTO and CIPO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also . Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s <billboardradioonline.com> domain name is confusingly similar to Complainant’s BILLBOARD mark because it incorporates Complainant’s BILLBOARD mark in its entirety, and merely adds the descriptive and generic words “radio” and “online” and generic top-level domain (“gTLD”) “.com.” These alterations are insufficient to differentiate the disputed domain name from Complainant’s mark. Thus, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s BILLBOARD mark pursuant to Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Rights and Legitimate Interests
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent lacks rights and legitimate interests in the <billboardradioonline.com> domain name. Complainant states that Respondent is not authorized by Complainant to use Complainant’s BILLBOARD mark in a domain name, and is not commonly known by the domain name. The WHOIS information does not provide a connection between Respondent and the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”).
Complainant argues that Respondent uses the <billboardradioonline.com> to resolve to a website featuring links and advertisements to third-party websites offering services directly competing with Complainant’s. Complainant also argues that Respondent’s website advertises for “Billboard” and “Hits” and provide links to music streaming. The Panel presumes that these links are pay-per-click links generating revenue for Respondent. Complainant further contends that Respondent acquired the disputed domain name primarily for the purpose of passing off its services as Complainant’s. Complainant argues that Respondent’s resolving website displays music charts and streaming links, as well as Complainant’s trademarks, thereby attempting to appear as Complainant’s site. The Panel finds that this use does not constitute 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 Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent’s <billboardradioonline.com> domain name resolves to a website containing Complainant’s marks and offering competing services through links that divert Internet users away from Complainant, thereby disrupting Complainant’s business. The Panel finds that this use constitutes bad faith registration and use under Policy ¶4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent has created a likelihood of confusion with Complainant’s mark through its confusingly similar domain name, thereby misleading Internet users and diverting Internet traffic to the resolving website for commercial gain. Respondent is passing off the resolving website as Complainant’s by using Complainant’s mark and graphics, and offering similar services. Respondent’s resolving website also links Internet users to other sites competing with Complainant’s website to generate revenue. Therefore, the Panel finds that Respondent acted 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 BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”).
Complainant also contends that, in light of the fame and notoriety of Complainant's BILLBOARD and HOT 100 marks, it is inconceivable that Respondent could have registered the <billboardradioonline.com> domain name without actual and/or constructive knowledge of Complainant's rights in the marks. The Panel finds that, based on the fame of Complainant’s mark and the use of the domain name, Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain name, additional evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
For the foregoing reasons, the Panel concludes that relief requested on the <thehot100radio.com> domain name is DISMISSED WITHOUT PREJUDICE, and the relief requested on the <billboardradioonline.com> domain name is GRANTED.
Accordingly, it is Ordered that the <billboardradioonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: May 10, 2012
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