Generic Top Level Domain Name (gTLD) Decisions

The Complainant is The WBEZ Alliance Inc., Chicago, IL, USA ("Complainant") represented by John Ratnaswamy, of Hopkins & Sutter. The Respondent is WBEZ.com, Gdynsk, POLAND ("Respondent").

The domain name at issue is "wbez.com" registered with Tucows.

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 a panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 4, 2001; the Forum received a hard copy of the Complaint on January 4, 2001.

On January 11, 2001, Tucows confirmed by e-mail to the Forum that the domain name "wbez.com" is registered with Tucows and that the Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 January 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 31, 2001 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@wbez.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 6, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed the Hon. James A. Carmody as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from the Respondent.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant asserts that the Respondent’s domain name, wbez.com, is identical to its common law marks WEBZ, WEBZ-FM, WBEZ 91.5 FM, WBEZ Chicago, WBEZ 91.5 FM Chicago. In addition, Respondent has no rights or legitimate interests in relation to the domain name at issue. And finally, Respondent registered and used the domain name at issue in bad faith.

B. Respondent

Respondent has not submitted a response in this matter.

Complainant, The WBEZ Alliance, Inc., is an Illinois not-for-profit corporation. Complainant has owned and operated one of the nations largest radio stations under its common law marks since 1990. From 1943 to 1990 the mark was owned and operated by the Chicago Board of Education. Currently, Complainant is the only broadcaster using the call letters "WBEZ" in the world. Complainant maintains an audience of almost a half million listeners each week.

Complainant owns the domain name registrations for wbez.org and wbez.net. Complainant did not register wbez.com because it is a not-for-profit organization and the top level domain ".com" was originally intended to be used in connection with for-profit enterprises.

Respondent, WBEZ.com, registered its domain name under the name of "Hostmaster" and listed Poland as its billing contact address. In addition to the domain name at issue, Respondent has registered a host of domain names, dozens of which have been the subject of successful domain name dispute complaints and litigation. Complainant has made numerous attempts to contact Respondent only to find that the information listed on the domain registration was incorrect or fictitious.

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

Under ICANN Policy, Complainant must show that it has rights in a mark, and that the domain name at issue is identical or confusingly similar to that mark.

Accordingly, Complainant’s rights are evidenced by its well-established common law marks WEBZ, WEBZ-FM, WBEZ 91.5 FM, WBEZ Chicago, WBEZ 91.5 FM Chicago.

See MatchNet PLC. V. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the UDRP to "unregistered trademarks and service marks").

Respondent’s domain name, wbez.com, is identical to Complainant’s mark and/or marks. The only difference between Complainant’s marks and the domain name at issue is the addition of the ".com" suffix. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that "[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY" and thus Policy 4 (a)(i) is satisfied).

In addition, Respondent’s domain name is confusingly similar because a reasonable Internet user would assume the domain name is somehow related to Complainant’s famous marks. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

The Panel finds that Respondent’s domain name is identical and confusingly similar to Complainant’s well-established mark and/or marks.

Complainant has shown the Respondent registered its domain name with fictitious information and is therefore not commonly known by the domain name, nor is Respondent using the domain name in connection with a bona fide offering of goods, services or for a legitimate noncommercial or fair use. Policy ¶ 4(c)(i)-(iii). See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and 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).

Respondent asserted no rights or legitimate interests in the domain name at issue. Accordingly, Respondent’s failure to show evidence sufficient to refute Complainant’s assertions, entitles the Panel to conclude that Respondent has no such rights or legitimate interests in relation to the domain name at issue. See Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names and no use of the domain names has been proved).

The Panel finds the Respondent has no rights or legitimate interests in the domain name at issue.

Complainant has shown Respondent registered the domain name at issue with false or misleading information. See Home Director, Inc. v. HomeDirector, D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading information in connection with the registration of the domain name is evidence of bad faith); see also 3636275 Canada, d/b/a eResolution v. eResolution.com, D2000-0110 (WIPO Apr 10, 2000) (finding that use of false registration information constitutes bad faith).

Further, Respondent’s registration of the domain name at issue demonstrates intent to create a likelihood of confusion, strictly for commercial gain, with Complainant’s marks as to the source sponsorship, affiliation, or endorsement of its web site. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).

Finally, Complainant has shown Respondent has registered numerous domain names based upon the trademarks of others. See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a pattern of conduct where Respondent has registered many domain names unrelated to the Respondent’s business which infringe on famous marks and web sites); see also Encyclopaedia Britannica Inc. v Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain name, wbez.com, be transferred from Respondent to Complainant.