DECISION

Clear Channel Communications, Inc. v. Traffic Secret LLC c/o Aaron Scovel

Claim Number: FA0304000155460

PARTIES

Complainant is Clear Channel Communications, Inc., San Antonio, TX (“Complainant”) represented by Pamela B. Huff, of Cox & Smith Incorporated.  Respondent is Traffic Secret LLC c/o Aaron Scovel, Nehalem, OR (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <<waws.com>>, registered with Enom, Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 23, 2003; the Forum received a hard copy of the Complaint on April 25, 2003.

On April 30, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <<waws.com>> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 May 1, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 21, 2003 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@waws.com by e-mail.

A timely Response was received and determined to be complete on May 7, 2003.

On May 14, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant is the owner of a commercial television station with the call letters, WAWS.  The call letters were granted to Complainant by the Federal Communications Commission.

Complainant has operated the television station under the call sign, WAWS, since July 1981 thereby establishing substantial common law rights to the mark.  Complainant has used the mark on signs, in advertisements, on brochures describing the company and its services, on promotional materials associated with the company and its services, on the Internet, and in other ways customary in the trade throughout the world.  Complainant has expended significant time, money, and effort to establish public recognition of its mark as identifying it as the source of high quality television broadcasting services.

As a result of these efforts, Complainant has established substantial customer recognition of the WAWS mark, and it has become a part of Complainant’s valuable assets.

The Respondent has registered the domain name <waws.com>, utilizing the mark owned by Complainant.

Respondent’s use of the domain name is not in connection with a bona fide offering of goods and services.

Respondent is not commonly known by the domain name.

Respondent is not making fair use of the domain name.  Respondent uses the domain name to link to a site containing sexually explicit material.

Respondent registered the domain name in bad faith because Respondent is not making fair use of the domain name and because Respondent acquired the domain name solely for the purpose of commercial gain by misleadingly capturing consumers of the mark at issue and diverting unsuspecting consumers of Complainant’s services to Respondent’s pornography site.

B. Respondent

Respondent is an individual residing in the State of Oregon.  Respondent registered the domain name <waws.com> several years ago while a high school student. Respondent registered the domain name under the name, Traffic Secret, LLC, but Traffic Secret, LLC is no longer a business.

Respondent is a good person.  Respondent never once heard that there were any conflicts with another business.  A couple of months ago, Respondent was on the net and saw a site called Adultcash.com.  He went there and redirected his domains, including <waws.com> to that site.  Respondent had no clue that there would be any legal conflicts.

Respondent believed that he had freedom to do what he wished to do with the domain name since he was the registered owner of it.  He has now learned that there are limits.  Respondent is sorry for what he has done and will never do it again without fully researching the domain.

Respondent would like to retain the domain name for use in the future to direct the domain to a poetry website.

           

C. Additional Submissions

None

FINDINGS

1. Complainant is owner of a commercial television station doing business in Jacksonville, Florida, under the call sign, WAWS. 

2. Complainant has operated the television station since 1981 and has established common law rights to the mark WAWS.

3. Respondent registered the domain name <waws.com> on April 11, 1999.

4. The inference is made that Respondent made no use of the domain name until several months ago when he went to AdultCash.com and directed <waws.com> to the link supplied by AdultCash.com.  Thereafter, <waws.com> directed users to a site showing sexually explicit material.

5. Complainant’s mark, WAWS, is identical to the domain name <waws.com>.

6. Respondent has no rights or legitimate interests in the domain name <waws.com>.

7. Respondent registered the domain name in bad faith.

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 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.

Identical and/or Confusingly Similar

A domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights, in order for the Complainant to prevail in a domain name dispute.  See Policy ¶ 4(a)(i).

The fact that Complainant has operated the television station under the call sign WAWS since 1981 supplies the rights necessary to satisfy the requirement of Policy ¶ 4(a)(i).

WAWS is identical to the domain name <waws.com>.  The only difference between the two is the addition to the domain name of the generic top-level domain (gTLD) “com” after the letters waws.  The top level of the domain name such as “com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Pomellato S. p. A v. Tonetti, D2000-0493 (WIPO July 7, 2000); Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000).

Complainant prevails under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has the burden of proving that Respondent has no rights or legitimate interests in respect to the domain name, <waws.com>. See Policy ¶ 4(a)(ii).  However, both the Policy and the decision of domain dispute panels recognize the difficulty a complainant may have in presenting proof on this issue.  The Policy offers to Respondent methods by which the Respondent can demonstrate his rights to and legitimate interests in the domain name in responding to a complaint. See Policy ¶ 4(c). 

Policy ¶ 4(c) does not shift the burden of proof to respondent.  It shifts the burden of going forward with the evidence to respondent.  Respondent is given the responsibility of going forward with the evidence or if he does not, to suffer any adverse inferences which may legitimately be drawn from such failure to go forward under the provisions of Policy ¶ 4(c).

In deciding the case of Do The Hustle, LLC v. Tropic Web, the Panel considered the meaning and requirements of Policy ¶ 4(a)(ii) and Policy ¶ 4(c).  That Panel developed the following rule:  “When a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion.  This information is uniquely within the knowledge and control of the respondent.  Failure of a respondent to come forward with such evidence is tantamount to admitting the truth of complainant’s assertions in this regard.”  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). 

 

Respondent in this dispute comes forward with no evidence of any sort that might illustrate his rights and legitimate interests in the domain name, <waws.com>. 

It cannot be inferred that linking the domain name <waws.com> to a website showing explicit sexual materials is a bona fide offering of services to satisfy Policy ¶ 4(c)(i). See MatchNet plc. V. MAC Trading, D2000-0205 (WIPO May 11, 2000).  Nor can it be inferred that such circumstances constitute a noncommercial or fair use of the domain name to satisfy Policy ¶ 4(c)(iii). See Brown & Bigelow, Inc. v. Rodela, FA96466 (Nat. Arb. Forum Mar. 5, 2001).

No evidence is presented to suggest that Respondent has ever been commonly known by the domain name so as to satisfy Policy ¶ (4)(c)(ii).  No inference can be made except that Respondent has been known as Aaron Scovil or Traffic Secret LLC.  Respondent cannot prevail under Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA96949 (Nat. Arb. Forum May 16, 2001), which establishes a requirement that a showing be made that one has been commonly known by the domain name prior to registration of the domain name in order for respondent to prevail.

 Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The burden is placed upon Complainant to prove that the domain name has been registered and is being used in bad faith. See Policy ¶ 4(a)(iii).  Complainant may proceed to show bad faith by any of the means specifically set out in Policy ¶ 4(b) or any other method that will show the Panel proof of circumstances deemed sufficient to establish Respondent’s bad faith.

Complainant contends that Respondent is not making fair use of the domain name in that it is not using the domain name as part of a legitimate business and that Respondent has acquired the domain name solely for the purpose of commercial gain by misleadingly capturing consumers of the mark at issue and diverting unsuspecting consumers of Complainant’s services to Respondent’s pornography site.

The manner in which a domain name is used from the date of registration until the commencement of a domain name dispute is a matter open to proof.  Whether a domain name is being used or has been used in bad faith is a matter that is open to examination.  Whether a domain name was registered in bad faith can, under certain circumstances, be a difficult issue upon which to present proof.  It relates to the mental state of the registrant.  When a registrant can be shown to know of a complainant’s mark, or admits that he knew of complainant’s mark at the time of registration, the registrant’s intention could be ascertained. See Hunton & Williams v. American Distribution Systems, Inc. D2000-0501 (WIPO Aug. 1, 2000); Lord, Bissell & Brook v. DefaultDate.com, FA108064 (Nat. Arb. Forum May 23, 2002); The New York Times Company v. New York Internet Services, D2000-1072 (WIPO Dec. 3, 2000).  Where a complainant’s mark is so famous that a respondent cannot be permitted to claim ignorance of its existence, the registrant’s intention can be inferred from the circumstances. See Exxon Mobil Corporation v. Stephen Nurwono, FA112532 (Nat. Arb. Forum June 20, 2002); Samsonite Corp. v. Colony Holdings, FA94313 (Nat. Arb. Forum Apr. 17, 2000); Victoria’s Secret v. Hardin, FA96694 (Nat. Arb. Forum Mar. 31, 2001).

But in a factual situation such as the present case where the trademark is not proved to be so famous as to raise an inference that Respondent must have known of its existence, Complainant can show no proof of Respondent’s actual knowledge of the mark, and Respondent denies knowledge of the mark, the question is presented as to how bad faith registration is to be proved.  Is a simple denial of bad faith at the time of registration adequate to defeat Complainant’s case?

 

There is no doubt that the domain name <waws.com> is presently being used to direct Internet users to a website displaying explicit sexual content.  That is clear evidence of bad faith use of the domain name. See Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000); MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000).

By using the domain name, Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website. That use is proscribed by Policy ¶ 4(b)(iv). 

Respondent could have stated how he came to choose the domain name.  He could have explained what his initial intention was for the use of the domain name.  This information is uniquely within the knowledge of Respondent and unavailable to Complainant in a proceeding such as this one.  The only use of the domain name shown by the evidence is bad faith use.  Under the circumstances, the Panel must assume, without some evidence to the contrary, that Respondent registered the domain name for the purpose of using it in bad faith.  That intention constitutes bad faith registration.

The Panel does not find that the registration in bad faith policy set out in Paragraph 4(a)(iii) necessarily requires bad faith to be directed to any particular person or organization. To find otherwise would permit the continued exposure of Internet users seeking Complainant’s call letters to be subjected to explicit sexual displays, thus tarnishing Complainant’s reputation.  The Policy is designed to avoid such conditions.

The existing situation prevents Complainant from reflecting the mark in a corresponding domain name. See Policy ¶ 4(b)(ii). 

 

Complainant prevails under Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <waws.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr. Panelist
Dated: May 23, 2003

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